1212.05 Five Years of Use as Proof of Distinctiveness
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), provides 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 as used in commerce with the applicant’s goods or services. See 37 C.F.R. §2.41(a)(2).
The Trademark Act previously required that the relevant five-year period precede the filing date of the application. The Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (1988), revised §2(f) of the Act to provide for a prima facie showing of acquired distinctiveness based on five years’ use running up to the date the claim is made. Under the revised provision, any five-year claim submitted on or after November 16, 1989, is subject to the new time period. This applies even if the application was filed prior to that date.
Section 2(f) of the Act and 37 C.F.R. §2.41(a)(2) state that reliance on a claim of five years’ use to establish acquired distinctiveness "may" be acceptable in "appropriate cases." The USPTO may, at its option, require additional evidence of distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (noting that the statute does not require the USPTO to accept five years’ use as prima facie evidence of acquired distinctiveness). Whether a claim of five years’ use will be deemed sufficient to establish that the mark has acquired distinctiveness depends largely on the nature of the mark in relation to the specified goods/services/classes.
The following are general guidelines regarding the statutorily suggested proof of five years’ use as a method of establishing acquired distinctiveness.
1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark
For most surnames, the statement of five years’ use will be sufficient to establish acquired distinctiveness.
For marks refused under §2(e)(1) or §2(e)(2), the amount of evidence necessary to establish secondary meaning varies. "[T]he greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning." In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)). For terms encumbered with a greater degree of descriptiveness, statements of length of use alone generally will be insufficient to establish acquired distinctiveness. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (holding that the Board was within its discretion not to accept applicant’s allegation of five years’ use given the highly descriptive nature of the mark); Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1856 (TTAB 2017) (finding, despite applicant’s claim of use since 1991, that much more evidence, especially in the quantity of direct evidence from the relevant purchasing public, would be necessary to show that the designation MEDICAL EXTRUSION TECHNOLOGIES has become distinctive for Applicant’s medical extrusion goods); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1766 (TTAB 2013) ("Given the highly descriptive nature of registrant’s mark [ANNAPOLIS TOURS], continuous use alone since 1992 would not be sufficient to establish acquired distinctiveness."); In re Noon Hour Food Prods., Inc., 88 USPQ2d 1172 (TTAB 2008) (finding, despite applicant’s claim of use in commerce for almost one hundred years, as well as an "inadvertently cancelled" seventy-year old registration for the mark BOND-OST for cheese, current evidence clearly showed the mark was generic for the goods, and assuming arguendo that BOND-OST is not generic, that applicant had failed to establish acquired distinctiveness of the highly descriptive mark); In re Crystal Geyser Water Co., 85 USPQ2d 1374 (TTAB 2007) (holding applicant’s evidence of acquired distinctiveness, including a claim of use since 1990, sales of more than 7,650,000,000 units of its goods, and extensive display of its mark CRYSTAL GEYSER ALPINE SPRING WATER on advertising and delivery trucks and promotional paraphernalia, insufficient to establish that the highly descriptive phrase ALPINE SPRING WATER had acquired distinctiveness for applicant’s bottled spring water); In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989) (holding applicant’s sole evidence of acquired distinctiveness, a claim of use since 1975, insufficient to establish that the highly descriptive, if not generic, designation RADIO CONTROL BUYERS GUIDE had become distinctive of applicant’s magazines); In re Gray Inc., 3 USPQ2d 1558, 1559 (TTAB 1987) ("[T]o support registration of PROTECTIVE EQUIPMENT [for burglar and fire alarms and burglar and fire alarm surveillance services] on the Principal Register a showing considerably stronger than a prima facie statement of five years’ substantially exclusive use is required."); cf. In re Synergistics Research Corp., 218 USPQ 165 (TTAB 1983) (holding applicant’s declaration of five years’ use sufficient to support registrability under §2(f) of BALL DARTS for equipment sold as a unit for playing a target game, in view of lack of evidence that the term is highly descriptive (e.g., no dictionary evidence of any meaning of BALL DARTS and no evidence of use of the term by competitors or the public)).
For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product design, overall color of a product, mere ornamentation, and sounds for goods that make the sound in their normal course of operation), evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods/services/classes would be required to establish distinctiveness. See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant’s fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1401 (TTAB 2009) (noting that "the evidence required is in proportion to the degree of nondistinctiveness of the mark at issue" in relation to a sound mark emitted by cellular telephones in their normal course of operation); In re ic! berlin brillen GmbH, 85 USPQ2d 2021 (TTAB 2008) (configuration of an earpiece for frames for sunglasses and spectacles comprised of three "fingers" near the hinge); In re The Black & Decker Corp., 81 USPQ2d 1841, 1844 (TTAB 2006) (finding applicant successfully established acquired distinctiveness for the design of a key head for key blanks and various metal door hardware, where evidence submitted in support thereof included twenty-four years of use in commerce and significant evidence regarding industry practice, such that the evidence showed that "it is common for manufacturers of door hardware to use key head designs as source indicators."); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress (white circle surrounded by blue border) for ear plugs); In re Star Pharm., Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791 (TTAB 1984) (configuration of halter square for horse halters).
1212.05(b) "Substantially Exclusive and Continuous"
The five years of use in commerce does not have to be exclusive, but must be "substantially" exclusive. 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2). This makes allowance for use by others that may be inconsequential or infringing, which does not necessarily invalidate the applicant’s claim. L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 1352, 52 USPQ2d 1307, 1309 (Fed. Cir. 1999).
The existence of other applications to register the same mark, or other known uses of the mark, does not automatically eliminate the possibility of using this method of proof, but the examining attorney should inquire as to the nature of such use and be satisfied that it is not substantial or does not otherwise nullify the claim of distinctiveness. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403, 222 USPQ 939, 940-41 (Fed. Cir. 1984) ("When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances."); In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1024 (TTAB 2017) (finding that "the presence in the market of yellow-packaged cereals from various sources . . . would tend to detract from any public perception of the predominantly yellow background as a source-indicator pointing solely to Applicant"); Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d, 1844, 1853 (TTAB 2017) (finding that "the nature and number of third-party descriptive uses in the record indicate that use by applicant [of MEDICAL EXTRUSION TECHNOLOGIES] has not been ‘substantially exclusive’ as is required for a showing of acquired distinctiveness under Section 2(f)"); Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1404 (TTAB 2016) (finding that, because of widespread third-party uses of the surname Ayoub in connection with rug, carpet and flooring businesses, applicant's use of the applied-for mark, AYOUB, was not "substantially exclusive" and thus the mark had not acquired distinctiveness in connection with applicant’s identified carpet and rug services); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1408 (TTAB 2009) (finding opposer’s contemporaneous use of the mark in connection with services closely related to applicant’s goods rose to the level necessary to rebut applicant’s contention of substantially exclusive use); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1682-83 (TTAB 2007) (finding substantial use of mark by opposer’s parent company and additional use of mark by numerous third parties "seriously undercuts if not nullifies applicant’s claim of acquired distinctiveness."); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1357-58 (TTAB 1989) ("[T]he existence of numerous third party users of a mark, even if junior, might well have a material impact on the Examiner’s decision to accept a party’s claim of distinctiveness."); Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) ("[L]ong and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive.").
The use of the mark during the five years must also be continuous, without a period of "nonuse" or suspension of trade in the goods or services in connection with which the mark is used. 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2).
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.").
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. The following is the suggested format for a claim for a trademark or service mark, for a certification mark, for a collective membership mark, and for a collective trademark or collective service mark, based on 37 C.F.R. §2.41(a)(2), (b)(2), (c)(2), and (d)(2).
For a trademark or service mark, the claim of distinctiveness should read as follows, if accurate:
The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
For a certification mark, the claim of distinctiveness should read as follows, if accurate:
The mark has become distinctive of the certified goods/services through the authorized users' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
For a collective membership mark, the claim of distinctiveness should read as follows, if accurate:
The mark has become distinctive of indicating membership in the collective membership organization through the members' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
For a collective trademark or collective service mark, the claim of distinctiveness should read as follows, if accurate:
The mark has become distinctive of the goods/services through the applicant's members' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate 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 a properly signed affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.41(a)(2), (b)(2), (c)(2), (d)(2). The affidavit or declaration must 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 of the mark 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 the U.S. 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 immediately 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) If the claim of acquired distinctiveness applies only to a portion of the mark (a claim of §2(f) "in part"), the claim must be limited to the relevant portion of the mark. See TMEP §§1212.02(f)(i), 1212.02(f)(ii).
- (7) The affidavit or declaration must contain a reference to distinctiveness with respect to the applicant’s goods, services, or membership in the collective membership organization because the distinctiveness created by the five years’ use must relate to the goods/services/collective membership organization specified in the application. If there is doubt that the distinctiveness pertains to all or any of the goods/services/classes specified in the application, the examining attorney must inquire regarding that issue.
- (8) While a response clarifying a §2(f) claim does not have to be verified, a substitute statement regarding acquired distinctiveness based on five years' use must be verified. For example, if the applicant amends a §2(f) claim as to the entire mark to a claim of §2(f) in part, or vice versa, the amended claim of distinctiveness based on five years’ use must be supported by a properly signed affidavit or a declaration under 37 C.F.R. §2.20.