Making Section 2(f) Claims: Demonstrating Acquired Distinctiveness

Leveraging Declarations, Establishing Use and Evidence of Secondary Meaning

A live 90-minute CLE webinar with interactive Q&A


Thursday, November 29, 2018 (in 12 days)

1:00pm-2:30pm EST, 10:00am-11:30am PST

or call 1-800-926-7926

This CLE webinar will guide 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.

Description

A trademark must either be inherently distinctive or have acquired a secondary meaning that distinguishes the goods to obtain protection. 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, particularly 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 essential to understand how the courts and the USPTO have treated proof of acquired distinctiveness to navigate the uncertainty of showing acquired distinctiveness and increase the likelihood of registration.

In a recent TTAB decision, the Board held that when claiming acquired distinctiveness based on use, the applicant must be able to demonstrate that such use was continuous. The Board found there was interrupted use of the mark for over a year and held it had not acquired distinctiveness. John Edward Guzman d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School LLC, Opposition No. 91220843 (TTAB 2017) (not precedential).

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.

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Outline

  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

Benefits

The panel will review these and other relevant 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?

Faculty

Asbell, Matthew
Matthew D. Asbell

Partner
Ladas & Parry

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

Frisbee, Matthew
Matthew L. Frisbee

Atty
Leason Ellis

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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