1212.06(a) Long Use of the Mark in Commerce
Long-term use of the mark in commerce is one relevant factor to consider in determining whether a mark has acquired distinctiveness. See, e.g., In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (holding evidence of long use insufficient to establish acquired distinctiveness of FISH FRY PRODUCTS where evidence involved uses of LOUISIANA FISH FRY PRODUCTS); In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *6-7 (TTAB 2020) (finding §2(f) claim based on applicant’s use since 2000 not dispositive, even if the use was considered "substantially exclusive," due to the highly descriptive nature of applicant’s mark and the nature and number of third-party descriptive uses in the record); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *22 (TTAB 2019) (finding applicant’s evidence of use since 1998 of an umbrella trade dress design "supports a finding of acquired distinctiveness to some extent because there is no evidence that competitive double canopy umbrellas had a mesh design between 1998 and 2017"); In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *15 (TTAB 2019) (finding applicant’s evidence of continuous use of ALGAE WAFERS since at least Oct. 31, 1991 and advertisment of the goods sold under the mark since at least Oct. 1992 did not convince the Board that "ordinary purchasers of fish food have come to view that term primarily as an indicator of source"); In re Uncle Sam Chem. Co., 229 USPQ 233, 235 (TTAB 1986) (holding §2(f) claim of acquired distinctiveness persuasive where applicant had submitted declaration of its president supporting sales figures and attesting to over eighteen years of substantially exclusive and continuous use).
To support a §2(f) claim, use of the mark must be use in commerce, as defined in 15 U.S.C. §1127. See TMEP §§901–901.04 regarding what constitutes use in commerce.