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). Thus, when evaluating whether an applicant has had "substantially" exclusive use of a mark, the determination is based on "whether any use by a third party [is] ‘significant’ or whether it [is] merely ‘inconsequential or infringing.’" Galperti, Inc. v. Galperti S.R.L., 17 F.4th 1144, 1147, 2021 USPQ2d 1115, at *2 (Fed. Cir. 2021).

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 significant or does not otherwise nullify the claim of distinctiveness. See Galperti, Inc., 17 F.4th at 1148, 2021 USPQ2d 1115, at *4 ("a significant amount of marketplace use of a term not as a source identifier for those users does tend to undermine an applicant’s assertion that its own use has been substantially exclusive"); 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 Jasmin Larian, LLC, 2022 USPQ2d 290, at *40-41 (TTAB 2022) (finding "the widespread use, sale of and discussions/comments about bamboo handbag designs similar to [a]pplicant’s applied-for mark" showed that "[a]pplicant’s use [was] not 'substantially exclusive'"); In re Dimarzio, Inc., 2021 USPQ2d 1191, at *13-25 (TTAB 2021) (finding the examining attorney's evidence of extensive third-party use of applicant's proposed color mark on the same goods showed that applicant's use was not substantially exclusive); Spiritline Cruises LLC v. Tour Mgmt. Servs. Inc., 2020 USPQ2d 48324, at *11 (TTAB 2020) (finding "the substantially non-exclusive use of CHARLESTON HARBOR TOURS . . . interfere[d] with the relevant public’s perception of the designation as an indicator of a single source"); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *21 (TTAB 2020) ("[w]hile absolute exclusivity is not required for a Section 2(f) registration, . . . the widespread use of other substantially similar [designs] . . . is inconsistent with the ‘substantially exclusive’ use required by the statute"); Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019 USPQ2d 460354, at *25 (TTAB 2019) (finding evidence of third-party use of the proposed mark showed that registrant’s use had not been "substantially exclusive either at the time of registration or thereafter"); 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"); 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).