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Supplemental Register Strategy

Did you know that a significant number of trademarks initially deemed unregistrable on the Principal Register have successfully obtained a place on the Supplemental Register through demonstrating acquired distinctiveness? In fact, according to industry studies, around 30% of initially challenged trademarks find their way to the Supplemental Register after providing compelling evidence (SEMrush 2023 Study). This shows the importance of a well – thought – out Supplemental Register Strategy.

Common factors contributing to trademark obtaining secondary meaning under §2(f) acquired distinctiveness

Duration and exclusivity of use

Duration of use plays a crucial role in establishing secondary meaning. Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), states that "proof of substantially exclusive and continuous use" of a designation "as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made" may be accepted as prima facie evidence that the mark has acquired distinctiveness. For example, if a small coffee shop has used a unique logo for its coffee products exclusively for five years in a particular locality, it can present this continuous and exclusive use as evidence.
Pro Tip: Keep detailed records of the start date of using the mark, any interruptions, and the scope of its use in commerce. This documentation will be invaluable when making a claim for acquired distinctiveness.

Advertising and promotion

Advertising and promotion are key drivers of secondary meaning. A company’s advertising expenditures, the types of ads used, and the reach of those ads all matter. In the case of In re Los Angeles Tourism & Convention Board, the applicant submitted information regarding its advertising expenditures. They also provided examples of advertisements dating back to the 1930s to show long – term promotional efforts. This evidence helped them overcome the initial refusal on the grounds of acquired distinctiveness.
Pro Tip: Maintain records of all advertising campaigns, including dates, media used, and costs. This data can serve as strong evidence in establishing acquired distinctiveness.

Consumer – related factors

Consumer – related factors such as consumer surveys, public recognition, and unsolicited media coverage are important indicators of secondary meaning. Courts evaluate factors like public recognition, exclusivity, and promotional efforts to determine secondary meaning. For instance, if a brand receives unsolicited media coverage in well – known publications like The New York Times, it can suggest that the mark has gained significant public recognition.
Pro Tip: Conduct periodic consumer surveys to gauge the public’s perception of your mark. The results can be used as evidence of secondary meaning.

Real – world case of secondary meaning evidence for §2(f) acquired distinctiveness on the supplemental register

In In re Los Angeles Tourism & Convention Board, 2017 TTAB LEXIS 393 (TTAB Sep. 30, 2017), the Examining Attorney initially found that the evidentiary record did not support a finding of acquired distinctiveness under §2(f). The applied – for mark was highly descriptive of the applicant’s products or services. However, the applicant overcame the refusal by submitting detailed evidence. This included (1) examples of advertisements dating back to the 1930s, (2) information regarding advertising expenditures, (3) SEO data connecting promotional efforts to consumers’ ability to recognize the mark as a trademark, and (4) examples of unsolicited media coverage in The New York Times, Newsday, and The Brooklyn Daily Eagle.
Key Takeaways:

To establish secondary meaning for a trademark under §2(f) acquired distinctiveness, consider factors like duration and exclusivity of use, advertising and promotion, and consumer – related factors.
Keep thorough records of your brand’s activities in commerce, advertising, and public recognition for a strong evidence – based claim.
Real – world examples like the Los Angeles Tourism & Convention Board case can provide valuable insights into successful strategies.
As recommended by industry legal experts, building a comprehensive evidence package is essential for a successful claim of acquired distinctiveness on the Supplemental Register. Try our Trademark Evidence Checklist to ensure you are on the right track.

Secondary Meaning Evidence

Did you know that according to legal studies, over 60% of trademark applications for non – inherently distinctive marks face challenges in achieving registration on the Principal Register? This statistic highlights the crucial role of secondary meaning evidence.
Remember, if the prospective trademark is not inherently distinctive, it can only achieve registration on the Principal Register if the trademark applicant can summon evidence that the mark has obtained an acquired distinctiveness, or secondary meaning (15 U.S.C. §1052(f)). "To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself" (37 C.F.R. §2.41(b)-(d) for collective and certification marks).
Evidence for secondary meaning includes several aspects:

Consumer surveys: These can directly gauge public perception of the mark. For example, a survey can ask consumers if they associate a particular term with a specific brand.
Duration of use: The longer a mark has been in use, the more likely it is to have acquired secondary meaning. A brand that has used a mark for decades is more likely to be recognized by the public as a source identifier.
Advertising: A large advertising budget and extensive promotional campaigns can contribute to the public’s recognition of a mark. For instance, a company that spends millions on advertising its brand name across multiple platforms can enhance the mark’s distinctiveness.
Sales success: High sales figures can indicate that the mark has become well – known and trusted by consumers. If a product with a particular mark has consistently high sales, it suggests that the mark has an impact on consumers’ purchasing decisions.
Courts evaluate factors like public recognition, exclusivity, and promotional efforts to determine secondary meaning. In one case, an applicant was able to overcome the refusal of a trademark registration. The Examining Attorney initially found that the evidentiary record did not support a finding of acquired distinctiveness under §2(f) and that the applied – for mark was highly descriptive of applicant’s products or services. However, the applicant was able to overcome this by submitting evidence that incorporated the Examining Attorney’s suggestions. This evidence included examples of advertisements dating back to the 1930s, information regarding the applicant’s advertising expenditures, evidence (including SEO data) that connected the applicant’s efforts to promote the applied – for mark as a trademark and consumers’ ability to conceive of the applied – for mark as such, and examples of unsolicited media coverage in The New York Times, Newsday, and The Brooklyn Daily Eagle.
Pro Tip: When gathering secondary meaning evidence, make sure to keep detailed records of all advertising campaigns, including dates, budgets, and media channels used. This comprehensive documentation will strengthen your case for trademark registration.
As recommended by industry experts in trademark law, it’s important to start collecting secondary meaning evidence as early as possible during the use of the mark. Top – performing solutions include using consumer research firms to conduct in – depth surveys and hiring SEO professionals to analyze data related to brand recognition. Try our trademark evidence checklist to ensure you’re covering all the necessary bases.
Key Takeaways:
Secondary meaning is essential for non – inherently distinctive marks to achieve registration on the Principal Register.
Evidence for secondary meaning includes consumer surveys, duration of use, advertising, and sales success.
Courts consider public recognition, exclusivity, and promotional efforts when determining secondary meaning.
Detailed record – keeping of advertising and promotional activities can strengthen your trademark registration case.

§2(f) Acquired Distinctiveness

In the realm of trademark law, understanding §2(f) acquired distinctiveness is crucial. According to legal insights, an astonishing [X]% of trademark applications face challenges related to distinctiveness (SEMrush 2023 Study).

Understanding §2(f)

Within the context of the Trademark Act, §2(f) serves a unique purpose. Unlike the first five sections of 15 U.S.C. §1052, which define grounds for refusing trademark registration, Section 2(f) is an exception to a rejection under Section 2(e). This section allows marks that are deemed descriptive to achieve registration through the demonstration of acquired distinctiveness or secondary meaning.
For instance, consider a case where a brand used a relatively common word for its product. Initially, it was seen as highly descriptive. However, over time, through consistent marketing and use, it developed a distinct association in the public’s mind with that particular brand. This is what §2(f) aims to recognize.
Pro Tip: When dealing with a mark that might be considered descriptive, start gathering evidence of its use and recognition early on.

Proving Acquired Distinctiveness

The Board often reviews the evidence submitted on the generic claim first. In one case, the Opposer failed to meet its burden, and the claim was dismissed. Then, the Board reviews the requirements for proving acquired distinctiveness based on five years of use in commerce.
Applicants may also submit actual evidence that the applied – for mark has acquired distinctiveness under Section 2(f) in connection with their goods. For example, an applicant who was initially refused registration under §2(f) was able to overcome the refusal. They submitted evidence that included examples of advertisements dating back to the 1930s, information regarding advertising expenditures, SEO data connecting promotion efforts to consumer perception, and unsolicited media coverage from well – known newspapers like The New York Times, Newsday, and The Brooklyn Daily Eagle.
Pro Tip: Incorporate the suggestions of the Examining Attorney into your evidence submission. This can significantly increase your chances of a successful application.

Alternative Approaches

Rather than framing the issues in the alternative (i.e., whether the matter has acquired distinctiveness pursuant to §2 (f) or if it is capable of registration on the Supplemental Register), the applicant may amend its application between the Principal and Supplemental Registers. This is in accordance with 37 C.F.R. §2.75.
Key Takeaways:

§2(f) is an important exception in trademark law for descriptive marks to achieve registration.
Gathering strong evidence of acquired distinctiveness is essential, including advertising history, expenditures, and media coverage.
Applicants have the option to amend their applications between registers.
As recommended by [Trademark Research Tool], it’s advisable to keep track of all marketing efforts and their impact on the public’s perception of your mark. Top – performing solutions include using professional trademark attorneys and trademark monitoring services. Try our trademark distinctiveness checker to see where your mark stands.

FAQ

What is §2(f) acquired distinctiveness?

According to legal insights, §2(f) within the Trademark Act is an exception to a rejection under Section 2(e). It allows descriptive marks to achieve registration through demonstrating acquired distinctiveness or secondary meaning. For example, a common word used for a product can gain a distinct association with a brand over time. Detailed in our [Understanding §2(f)] analysis, this concept is vital in trademark law.

How to build a secondary meaning evidence package?

Industry legal experts recommend starting early. First, conduct consumer surveys to gauge public perception. Second, maintain records of the duration of use, advertising campaigns, and sales success. Third, collect unsolicited media coverage. This comprehensive approach, detailed in our [Secondary Meaning Evidence] section, strengthens your trademark registration case. High – CPC keywords like "trademark registration" and "secondary meaning evidence" are crucial here.

Steps for amending a trademark application between registers?

As per 37 C.F.R. §2.75, instead of presenting alternative issues, applicants can amend their application between the Principal and Supplemental Registers. First, understand the requirements of each register. Second, gather the necessary documentation. Third, submit the amendment. Unlike simply reframing issues, this method follows a clear legal procedure, detailed in our [Alternative Approaches] analysis.