Applicants often wonder what Section 2(f) Acquired Distinctiveness means. 

Some people even receive an Advisory regarding Section 2(f) Acquired Distinctiveness in their Office Actions. 

Well, let’s begin with a brief review of the two different Registers.

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First, there is the Supplemental Register, which is for non-distinctive trademarks.

In other words, the trademarks will be descriptive in relation to the goods and services, so are not sufficiently distinctive for the Principal Register.

The Supplemental Register provides some, but not all, of the protections afforded by the Principal Register.

Note that Generic marks will not be eligible for either the Supplemental Register or the Principal Register.  For instance, the trademark TOWELS for selling towels would not be eligible for either Register, because it is simply the generic name for the goods.

You can look at the Supplemental Register video in the Trademarks Classroom for more information on this Register.

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Second, there is the Principal Register, which is for distinctive trademarks, and provides broader legal protections.

In addition, the Principal Register is for trademarks that have acquired distinctiveness.

What does “acquired distinctiveness mean?”

Well, it means that the trademark itself is not inherently distinctive enough for the Principal Register.  But there is convincing proof that the trademark has acquired secondary meaning.  

In other words, over time, consumers have gotten to know the trademark beyond just the literal descriptive meaning of the trademark.  In that way, consumers will associate that trademark as a source indicator of the goods and services, even if the wording of the trademark is descriptive and therefore not immediately distinctive.

Once you prove that your trademark has acquired distinctiveness, your trademark can be approved for the Principal Register under Section 2(f) of the Trademark Act.

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‍So, how do you show proof that your trademark has acquired distinctiveness?

One way is if you have prior registrations with the same trademark for similar goods and services.  So let’s say my trademark is ZUZU for t-shirts, and I already have a registered trademark of ZULU for sweaters. I could use that as an argument that my trademark has acquired distinctiveness.

The second way is to verify that you’ve used your trademark for five years in commerce.

The third way is to provide actual evidence.

Evidence can take many forms.  Some examples include:

• Providing information on how much you’ve spent advertising and promoting your goods and services under your trademark
• Providing Survey evidence, market research, and consumer reaction studies, and
• Providing declarations from consumers or others in the industry

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Here are three final thoughts:

First, you can respond with more than one approach.  For instance, you could certify five years’ usage AND provide actual evidence.

Second, depending on your trademark, you might initially respond with one of the above approaches, such responding with Five Years Use.  The USPTO might then respond by asking you to provide additional evidence.  That just means you’ll provide additional evidence at a later time.

Third, Section 2(f) Acquired Distinctiveness and the Supplemental Register is a common response for when you receive certain Refusals, such as if your trademark is Merely Descriptive, Primarily Geographically Descriptive, or Primarily a Surname.

In such cases, you might consider stating that your trademark has acquired distinctiveness under Section 2(f), if you believe your trademark meets that criteria, or you can respond by amending to the Supplemental Register.

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