1212.05(d)   Form of the Proof of Five Years’ Use

If the applicant chooses to seek registration under §2(f), 15 U.S.C. §1052(f), by using the statutory suggestion of five years of use as proof of distinctiveness, the applicant should submit a claim of distinctiveness that reads as follows, if accurate:

The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

The claim of five years of use is generally required to be supported by an affidavit or declaration under 37 C.F.R. §2.20, signed by the applicant. See 37 C.F.R. §2.41(b). The affidavit or declaration can be signed by a person properly authorized to sign on behalf of applicant under 37 C.F.R. §2.193(e)(1). See TMEP §611.03(a).

The following are guidelines regarding the form and language appropriate for a claim of five years of use:

  • (1) Use of the precise statutory wording is desirable, but variations may be accepted if they do not affect the essential allegations.
  • (2) The wording "substantially exclusive and continuous use in commerce" is essential.
  • (3) It must be clear from the record that the five years of use has been in commerce that may lawfully be regulated by Congress. See Blanchard & Co. v. Charles Gilman & Son, Inc., 239 F. Supp. 827, 145 USPQ 62 (D. Mass. 1965), aff’d, 353 F.2d 400, 147 USPQ 263 (1st Cir. 1965).
  • (4) The use of the mark must cover the five years before the date of the statement of five years’ use. Thus, wording that indicates that the use referred to is before the date of the statement is essential. Its omission can only be excused if the facts in the record clearly show that the use includes the five years before the date of the statement.
  • (5) The affidavit or declaration should include a statement that the mark has become distinctive or that the applicant believes that the mark has become distinctive, but absence of this statement is not fatal. See TMEP §1212.07 for examples of various ways in which an applicant may assert a §2(f) claim.
  • (6) The affidavit or declaration must contain a reference to distinctiveness as applied to the applicant’s goods or services, or to use with the applicant’s goods or services, because the distinctiveness created by the five years’ use must relate to the goods or services specified in the application. If there is doubt that the distinctiveness pertains to either all or any of the goods or services specified in the application, the examining attorney must inquire regarding that issue. While a clarifying response does not have to be verified, a substitute statement must be verified, i.e., supported by an affidavit or a declaration under 37 C.F.R. §2.20, signed by the applicant.