In the realm of trademark law, the concept of acquired distinctiveness (also known as secondary meaning) stands as a pivotal doctrine that enables descriptive trademarks, which are ordinarily not registrable on the Principal Register, to achieve registration and legal protection. This principle recognizes that through extensive use, advertising, and consumer recognition, a descriptive mark can transcend its generic qualities to denote a specific source of goods or services in the minds of the consuming public.

The history of acquired distinctiveness can be traced back to the case of General Motors Co. v. Urban Gorilla, LLC, where the court stated that the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction. The court also noted that the plain language of the statute in this case is far from unambiguous. Although the statute essentially defines "famous" by providing a list of factors for consideration, it does not define "inherent" or "acquired distinctiveness" General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711.

Examples of marks that have acquired distinctiveness

Examples of descriptive trademarks that have registered as a result of acquired distinctiveness are:

Coca-Cola (originally made with coca leaves and cola leaves)

American Airlines (airlines in America)

International Business Machines (machines for business internationally)

In branding, there is almost always a tension between marketing departments, which want the most descriptive name so customers know what the product or service is, and uniqueness, which the trademark attorneys are advocating for so the mark is registrable as a trademark. Acquired distinctiveness is one solution to resolve this. 

Understanding the intricacies of acquired distinctiveness, the processes involved in proving it, and its potential to rescue a descriptive trademark application from abandonment is important for companies trying to protect descriptive marks through their branding strategies.

The Challenge of Descriptive Trademarks

Trademark law is built on the premise of distinguishing one entity's goods or services from another's, ensuring that consumers can make informed choices. Descriptive trademarks—those that merely describe the qualities, features, function, or intended purpose of a product or service—are generally not registrable because they should be available for all in the industry to use.

The statute 15 USCS § 1052 provides that nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.

When a descriptive mark acquires distinctiveness, it transcends its genericness or descriptiveness to become identifiable with a single source by the consuming public, qualifying it for trademark protection. Other examples of now-famous distinctive trademarks under 2f acquired distinctiveness are Bank of America and UPS United Parcel Service.

Understanding Acquired Distinctiveness

Acquired distinctiveness occurs when a descriptive mark has been used so extensively and consistently that the primary significance of the term in the minds of the consuming public is not the product but the producer. This transformation allows the mark to function as a symbol of origin rather than a mere description. The legal recognition of acquired distinctiveness serves as an acknowledgment that the mark has acquired a unique status that merits protection.

The legal basis of acquired distinctiveness is a principle that a trademark can acquire distinctiveness, even overnight, and therefore, it depends on a case-to-case basis. There is no fixed time frame for a trademark to have acquired distinctiveness. This principle has been well stated in the Proviso to Section 9(1)(b) of the Act, and has further been widely accepted by the courts § 14.31 Absolute grounds for refusal of registration.

Acquired distinctiveness can be claimed through i) over five years of use in the US marketplace, ii) showing distinctiveness by actual evidence, or iii) prior registrations. The claim can be made to the whole mark or just a part. In the early days of a trademark, if you are unable to show use for five years, practically speaking the descriptive name may be protected through registration of a unique logo.

Proving Acquired Distinctiveness

The burden of proving acquired distinctiveness lies with the trademark applicant. This is typically accomplished through evidence such as consumer surveys demonstrating recognition of the mark as a brand identifier, extensive and exclusive use of the mark in commerce over a significant period, advertising expenditures, media coverage, and affidavits from industry experts or consumers.

The examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness. The applicant may then submit actual evidence of acquired distinctiveness. The burden of proving that a mark has acquired distinctiveness is on the applicant. The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered § 10.02 Trademarks.

The goal is to demonstrate that, in the minds of consumers, the mark has come to identify the source of the goods or services rather than the goods or services themselves. A licensed trademark attorney can assemble the materials necessary to make a compelling case for your 2f acquired distinctiveness claim.

Section 2(f) of the Lanham Act

In the United States, Section 2(f) of the Lanham Act (the Trademark Law) explicitly provides for the registration of descriptive marks that have acquired distinctiveness. Under this provision, an applicant can claim acquired distinctiveness by showing substantial. supported evidence of the mark's ability to signify a unique source to consumers. The amount of evidence to make the depends on how descriptive or generic the mark is, on a spectrum. The more generic or descriptive, the more evidence is required. Section 2(f) serves as a legal avenue for deserving marks to achieve the benefits of trademark registration, including the exclusive right to use the mark in connection with the goods or services listed in the registration.

The applicant may show acquired distinctiveness by submitting an affidavit or declaration that it has used the registered mark in commerce for at least five years and that such use has been substantially exclusive and continuous. The defendant may also attempt to show acquired distinctiveness via the following types of evidence:
- Evidence showing the duration, extent, and nature of use of the mark in commerce
- Expenditures for advertising using or highlighting the mark at issue
- Letters or statements from the trade or public
- Copying
- Unsolicited media coverage
- Consumer surveys

Acquired Distinctiveness as a Salvage Operation

For descriptive trademark applications facing the threat of abandonment due to their descriptive nature with a 2e descriptiveness objection, a claim of acquired distinctiveness can be a lifeline. By successfully proving that the mark has acquired a secondary meaning with supporting evidence, or after 5 years of use, the application can overcome the initial refusal based on descriptiveness. This not only saves the application from abandonment but also grants the mark legal protection against unauthorized use by competitors, thereby safeguarding the brand identity that the business has worked diligently to build.

Practical Considerations and Challenges

While the route to registration through acquired distinctiveness is invaluable, it is fraught with challenges. Proving secondary meaning requires a substantial investment of time, effort, and resources. Consumer surveys, for example, must be carefully designed to yield credible results and may require significant financial investment. Moreover, the USPTO's examination of the evidence is rigorous, and not all attempts to demonstrate acquired distinctiveness succeed.

Strategic Planning and Long-term View

Businesses considering leveraging acquired distinctiveness to protect a descriptive mark must adopt a strategic, long-term view. This includes planning for extensive use of the mark in a consistent manner, investing in advertising and marketing to build consumer association between the mark and the business, and meticulously documenting all efforts to establish the mark's secondary meaning. A proactive approach can significantly enhance the likelihood of overcoming descriptiveness refusals and securing trademark registration.

A recommended approach is to register the trademark on the Supplemental Register before the requirements for a 2f acquired distinctiveness claim have been met, to give some protection for the mark and some notice to other parties who hope to adopt the name themselves.

The Value of Legal Expertise

Given the complexities involved in proving acquired distinctiveness, engaging with legal professionals who specialize in trademark law is advisable. Experienced attorneys can guide businesses through the process, from the initial assessment of the mark's registrability to the preparation and submission of evidence to the USPTO. Legal expertise is invaluable in navigating the nuances of trademark law and in crafting a persuasive argument for acquired distinctiveness, particularly as the rejection rate is fairly high and becomes higher as the marks are more descriptive or generic.

Conclusion

A claim of acquired distinctiveness offers a powerful tool for businesses to rescue descriptive trademark applications from abandonment and secure legal protection for their brands. This principle acknowledges the notion that descriptive marks, through widespread and exclusive use, can evolve to signify a unique source in the eyes of consumers.

Successfully proving acquired distinctiveness requires a strategic approach, substantial evidence, and often, the guidance of experienced legal professionals. Consistent, widespread and documented use of the trademark will go a long way to supporting the 2f acquired distinctiveness claim. 

While challenging, the pursuit of trademark registration through acquired distinctiveness is a testament to a brand's strength, recognizability, and the value it brings to the marketplace. For businesses committed to building a distinctive brand identity, navigating the path to acquired distinctiveness can be a rewarding endeavor, ensuring that their marks are protected and that their brand equity is preserved.