Making Section 2(f) Claims: 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 found to lack inherent distinctiveness--particularly descriptive and geographically descriptive marks, among others--a showing of acquired distinctiveness can mean the difference between registration or abandonment of a federal application.

If the trademark applicant can demonstrate that its mark acquired distinctiveness in the marketplace, the USPTO may register the mark despite a lack 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. To navigate the uncertainty of showing acquired distinctiveness, counsel must understand how the courts and the USPTO treat proof of acquired distinctiveness.

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d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School L.L.C., Opposition No. 91220843 (TTAB 2017) (not precedential).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.