How does USPTO evaluate 'acquired distinctiveness'?

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Written by Jan Buza

Co-founder of Trama

The United States Patent and Trademark Office (USPTO) evaluates acquired distinctiveness, also known as secondary meaning, based on certain factors to determine if a mark has acquired distinctiveness and is eligible for trademark protection. These factors are used to assess whether the mark has developed a secondary meaning in the minds of consumers, indicating that it identifies the source of goods or services rather than being merely descriptive or generic. The key factors considered by the USPTO include:

  • Length of Use: The length of continuous and exclusive use of the mark in commerce is an important factor. Generally, the longer the mark has been used, the more likely it has acquired distinctiveness.
  • Extent and Nature of Use: The USPTO examines how extensively and prominently the mark has been used in connection with the goods or services in the marketplace. This includes assessing the volume of sales, advertising efforts, and the geographical scope of use.
  • Advertising and Promotional Expenditures: The USPTO considers the amount and nature of advertising and promotion undertaken to establish consumer recognition of the mark. Evidence of advertising campaigns, marketing materials, and related expenditures can help demonstrate the efforts made to build brand recognition.
  • Consumer Surveys and Testimonials: Surveys or other evidence of consumer perception and recognition of the mark can be submitted to support the claim of acquired distinctiveness. These surveys assess consumer understanding and association of the mark with the source of goods or services.
  • Media Recognition: Evidence of media recognition, such as press coverage or industry awards, can be submitted to show the mark's recognition and reputation in relevant markets.
  • Statements of Third-Party Recognition: Statements from industry experts, trade publications, or others attesting to the mark's distinctiveness and association with the source of goods or services can be submitted as supporting evidence.

It's important to note that the weight given to each factor may vary depending on the specific circumstances of the case. The evidence provided should demonstrate that the mark has acquired distinctiveness and is no longer merely descriptive or lacking inherent distinctiveness.

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