How To Show Acquired Distinctiveness Under 2(f):

Conclusive and Persuasive (and not Biased) Evidence


Affidavits or declarations may be relevant but not necessarily conclusive in showing acquired distinctiveness, the identity of the person making the declaration or affidavit matters as well as the actual evidence being produced. Conclusionary statements without factual basis for those statements are not persuasive or conclusive. Note that the cases cited within these sections of the TMEP are ex parte appeals (‘In re’) of descriptiveness (final) refusals (Section 2(e)(1)).


TMEP 1212.06(a)   Long Use of the Mark in Commerce

Long use of the mark in commerce is one relevant factor to consider in determining whether a mark has acquired distinctiveness. See In re Uncle Sam Chem. Co., 229 USPQ 233, 235 (TTAB 1986) (finding §2(f) claim of acquired distinctiveness of SPRAYZON for “cleaning preparations and degreasers for industrial and institutional use” persuasive where applicant had submitted declaration of its president supporting sales figures and attesting to over eighteen years of substantially exclusive and continuous use); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984) (finding evidence submitted by applicant insufficient to establish acquired distinctiveness of PACKAGING SPECIALISTS, INC., for contract packaging services, notwithstanding, inter alia, continuous and substantially exclusive use for sixteen years, deemed “a substantial period but not necessarily conclusive or persuasive”).

To support a §2(f) claim, use of the mark must be use in commerce, as defined in 15 U.S.C. §1127.


TMEP 1212.06(c)   Affidavits or Declarations Asserting Recognition of Mark as Source Indicator

Affidavits or declarations that assert recognition of the mark as a source indicator are relevant in establishing acquired distinctiveness. However, the value of the affidavits or declarations depends on the statements made and the identity of the affiant or declarant. See In re Chem. Dynamics Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (finding conclusionary declaration from applicant’s vice-president insufficient without the factual basis for the declarant’s belief that the design had become distinctive). Proof of distinctiveness also requires more than proof of the existence of a relatively small number of people who associate a mark with the applicant. See In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (“Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words ‘PAINT PRODUCTS CO.’ in conjunction with paints and coatings.”); see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding sixteen declarations of little persuasive value, as they were nearly identical in wording and only one of the declarants was described as an end consumer); In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB 1987) (finding affidavit of applicant’s counsel expressing his belief that the mark has acquired secondary meaning of “no probative value whatsoever” because, among other reasons, the statement is subject to bias); In re Petersen Mfg. Co., 2 USPQ2d 2032, 2035 (TTAB 1987) (finding declarations from customers which stated that designs used by applicant indicate to the declarant that the applicant is the source of the goods, but which did not refer to or identify the designs with any specificity, not persuasive); In re Bose Corp., 216 USPQ 1001, 1005 (TTAB 1983), aff’d, 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (deeming retailer’s statement that he has been in contact with many purchasers of loudspeaker systems of whom a substantial number would recognize the depicted design as originating with applicant competent evidence of secondary meaning); In re Flex-O-Glass, Inc., 194 USPQ 203, 206 (TTAB 1977) (“[T]he fact that the affidavits may be similar in format and expression is of no particular significance ... since the affiants have sworn to the statements contained therein.”).


TMEP 1212.05(c)   Use “as a Mark”

The substantially exclusive and continuous use must be “as a mark.” 15 U.S.C. §1052(f). See In re Craigmyle, 224 USPQ 791, 793 (TTAB 1984) (finding registrability under §2(f) not established by sales over a long period of time where there was no evidence that the subject matter had been used as a mark); In re Kwik Lok Corp., 217 USPQ 1245, 1248 (TTAB 1983) (holding declarations as to sales volume and advertising expenditures insufficient to establish acquired distinctiveness. “The significant missing element in appellant’s case is evidence persuasive of the fact that the subject matter has been used as a mark.”).




Not Just Patents can develop a declaration or affidavit of acquired distinctiveness for use with your trademark application (if the facts will support it). Each case before the trademark examiner and/or the TTAB on appeal is dependent on the facts of the particular mark and there is no guarantee that a mark that is refused for being descriptive under Section 2(e)(1) can be registered on the Principal Register. Call us or email us with questions, the sooner the better since trademarks are only guaranteed one nonfinal refusal, answering a final refusal requires requesting reconsideration and may require filing an appeal in order to be heard.



Sources of Evidence for USPTO Merely Descriptive Refusals

 (extracted from USPTO Office Actions)

Internet: Material obtained from the Internet is generally accepted as competent evidence in examination and ex parte proceedings.  See In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (Internet evidence accepted by the Board to show genericness); In re White, 80 USPQ2d 1654, 1662 (TTAB 2006) (Internet evidence accepted by the Board to show false connection); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (Internet evidence accepted by the Board to show geographic significance); Fram Trak Indus. v. WireTracks LLC, 77 USPQ2d 2000, 2006 (TTAB 2006) (Internet evidence accepted by the Board to show relatedness of goods); In re Consol. Specialty Rest. Inc., 71 USPQ2d 1921, 1927-29 (TTAB 2004) (Internet evidence accepted by the Board to show that geographic location is well-known for particular goods); In re Gregory, 70 USPQ2d 1792, 1793 (TTAB 2004) (Internet evidence accepted by the Board to show surname significance); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (Internet evidence accepted by the Board to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).

 

Text-search databases: Material obtained from computerized text-search databases, such as LEXISNEXIS®, is generally accepted as competent evidence in examination and ex parte proceedings.  See In re Boulevard Entm’t Inc., 334 F.3d 1336, 1342-43, 67 USPQ2d 1475, 1479 (Fed. Cir. 2003) (LEXISNEXIS® evidence accepted by the Court to show the offensive nature of a term); In re Giger, 78 USPQ2d 1405, 1407 (TTAB 2006) (LEXISNEXIS® evidence accepted by the Board to show surname significance); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (LEXISNEXIS® evidence accepted by the Board to show descriptiveness); In re Wada, 48 USPQ2d 1689, 1690 (TTAB 1998) (LEXISNEXIS® evidence accepted by the Board to show that geographic location is well-known for particular goods); In re Decombe, 9 USPQ2d 1812, 1815 (TTAB 1988) (LEXISNEXIS® evidence accepted by the Board to show relatedness of goods in a likelihood of confusion determination); TBMP §1208.01; TMEP §710.01(a).


Third-party registrations: Third-party registrations featuring the same or similar goods and/or services as applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on a showing of acquired distinctiveness, or registered on the Supplemental Register.  See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).  


Examples of Merely Descriptive Trademarks

Trademark or Service Mark found to be Merely Descriptive

Case citation

THEATL the equivalent of THE ATL, a common nickname for the city of Atlanta, merely descriptive of publications featuring news and information about Atlanta

In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007)


CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system

In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987)


DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition

In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999)

SMARTTOWER merely descriptive of highly automated cooling towers

In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)

OATNUT merely descriptive of bread containing oats and hazelnuts

In re Entenmann’s, Inc., 15 USPQ2d 1750, 1751 (TTAB 1990)

Where the applied-for mark shows the descriptive wording in stylized lettering BUT where the degree of stylization is not sufficiently striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark.  

In re Sambado & Son Inc., 45 USPQ2d 1312 (TTAB 1997); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987).


E-AUTODIAGNOSTICS merely descriptive of an electronic engine analysis system comprised of a hand-held computer and related computer software

In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002)

E FASHION merely descriptive of software for consumer use in shopping via a global computer network and of electronic retailing services

 In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000)

PATENTS.COM merely descriptive a feature of the goods for computer software for managing a database of records and for tracking the status of the records by means of the Internet.

In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)

ASPIRINA is sufficiently similar to generic term "aspirin" in appearance and meaning to be merely descriptive of analgesic products

In re Bayer Aktiengesellschaft, 82 USPQ2d 1828 (Fed. Cir. 2007)

1-888-M-A-T-R-E-S-S mark is merely descriptive of telephone shop-at-home mattress retail services

In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001)

BATTLECAM mark is merely descriptive of computer game software

In re Petroglyph Games Inc., 91 USPQ2d 1332 (TTAB 2009)

URBANHOUZING mark is merely descriptive of real estate services

In re Carlson, 91 USPQ2d 1198 (TTAB 2009)

DEC mark is merely descriptive of batteries deriving power from nuclear decay processes, and related services, since record demonstrates that "DEC" is routinely used as abbreviation for term "direct energy conversion,"and that term describes power source and efficient way of transforming power into electricity

 In re BetaBatt Inc., 89 USPQ2d 1152 (TTAB 2008)

GRAND CANYON WEST is merely descriptive, and geographically descriptive, of transportation and tourist services on west rim of Grand Canyon

Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501 (TTAB 2008

REDUCER is generic for flow meters for measuring flow through pipes and vortex flow meters

In re Rosemount Inc., 86 USPQ2d 1436 (TTAB 2008)

The Flavor of food products has been found to be merely descriptive

CREME DE MENTHE merely descriptive of laminated chocolate mint

In re Andes Candies Inc., 178 USPQ 156 (C.C.P.A. 1973)

CHOCOLATE FUDGE generic for chocolate fudge flavored diet soda


A. J. Canfield Co. v. Honickman, 808 F.2d 291 USPQ2d 1364 (3d Cir.1986)

CHUNKY CHEESE merely descriptive of cheese-flavored salad dressing


In re Int’l Salt Co., 171 USPQ 832 (TTAB 1971)

Examples of NOT Merely Descriptive Trademarks


THE FARMACY is not merely descriptive of retail store services featuring natural herbs and organic products, and integrated health services provided at retail locations

In re Tea and Sympathy Inc., 88 USPQ2d 1062 (TTAB 2008)

SUGAR NO. 14, SUGAR NO. 11 and COTTON NO. 2 are not merely descriptive of commodity futures exchange and related commodity trading services, since there is no evidence that numerical elements "11," "14,"or "2" in marks have any particular meaning other than to identify futures contracts uniquely associated with applicant's exchange

In re ICE Futures U.S. Inc., 85 USPQ2d 1664 (TTAB 2008)

See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.

Overcoming A Merely Descriptive Refusal




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How To Show Acquired Distinctiveness Under 2(f)

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Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

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Color as Trade Dress  3D Marks as Trade Dress  

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Ornamental Refusal  Standard TTAB Protective Order

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What Does Published for Opposition Mean?

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Descriptive Trademarks Trademark2e.com  

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Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

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Section 2(d) Refusals   FilingforTrademark.com

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Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

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DIY Overcoming Descriptive Refusals

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Published for Opposition     What is Discoverable in a TTAB Proceeding?

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