Making Section 2(f) Claims: Demonstrating Acquired Distinctiveness

Leveraging Declarations, Establishing Use and Evidence of Secondary Meaning

Recording of a 90-minute CLE webinar with Q&A

Conducted on Wednesday, May 31, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to trademark counsel in understanding how the courts and USPTO view the issue of acquired distinctiveness in support of a trademark application. The panel will outline approaches that work—and those that don’t work—in demonstrating acquired distinctiveness.


To obtain protection, a trademark must either be inherently distinctive or have acquired a secondary meaning that distinguishes the goods. For marks that are determined to lack inherent distinctiveness, a showing of acquired distinctiveness can mean the difference between registration or abandonment of a federal application. Such showings are needed with descriptive and geographically descriptive marks, among others.

If the trademark applicant can demonstrate that its mark has acquired distinctiveness in the marketplace, the USPTO may register the mark despite the absence of inherent distinctiveness. To claim acquired distinctiveness under Section 2(f), counsel must submit evidence of use and promotion, such as consumer statements and advertising materials. Further, it is important to understand how the courts and the USPTO have treated evidence of acquired distinctiveness to navigate the uncertainty of showing acquired distinctiveness and increase the likelihood of registration.

A recent TTAB decision demonstrates that trademark applicants trying to register a descriptive mark based on acquired distinctiveness that more than mere advertising and evidence of sales may be needed. Applicants should provide evidence of their efforts to establish consumer awareness. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464 (TTAB 2016)

Listen as our authoritative panel of IP attorneys examines acquired distinctiveness and how the courts and the USPTO are treating it. The panel will discuss what works and what does not to demonstrate acquired distinctiveness.



  1. What works and what doesn’t to demonstrate acquired distinctiveness
  2. Acquired distinctiveness
    1. How the courts are treating it
    2. How the TTAB is treating it
  3. Emerging issues related to genericness
  4. Best practices


The panel will review these and other key issues:

  • What strategies have trademark applicants used to show acquired distinctiveness?
  • How are the USPTO and the courts treating proffered evidence of acquired distinctiveness?
  • What best practices should counsel employ to demonstrate acquired distinctiveness and obtain trademark protection?


Asbell, Matthew
Matthew D. Asbell

Ladas & Parry

Mr. Asbell assists clients in clearing, obtaining, enforcing, and defending trademark rights in the U.S. and throughout...  |  Read More

Matthew Frisbee, Esq.
Matthew Frisbee, Esq.

Fross Zelnick Lehrman & Zissu

Mr. Frisbee assists clients with a variety of trademark matters, with an emphasis on U.S. trademark prosecution and...  |  Read More

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