What is Acquired Distinctiveness?

large group of yellow rubber ducks with one purple - acquired distinctiveness concept

When you’re building a brand, it’s important to make sure you choose a mark that is not merely descriptive — it must be inherently distinctive or be able to acquire distinctiveness. A common reason the United States Patent & Trademark Office (USPTO) refuses trademark applications is due to lack of acquired distinctiveness or “secondary meaning.” Critically, only marks that are inherently distinctive or those that have acquired distinctiveness can be placed on the Principal Register and have full trademark protection.

What is a Non-Distinctive Trademark?

“Acquired distinctiveness” is a crucial concept in trademark law. Specifically, a non-distinctive trademark is one that is merely descriptive; deceptively misdescriptive; primarily geographically descriptive, or those that are primarily merely surnames. Non-distinctive trademarks can be registered on the Supplemental Register. This does not offer the full protection and benefits of the Principal Register, but can still be a critical safeguard when it is not possible to register on the Principal Register. However, there are still several circumstances under which they may appear on the Principal Register.

Why is Distinctiveness Important in Trademark Law?

In order to be placed on the Principal Register, a mark must “identify and distinguish” the goods or services with which it is connected. Without being distinctive, a mark may be ineligible for federal trademark protection. This is because a mark that is merely descriptive does not serve to identify and distinguish the source of the goods or services it represents. Descriptive marks are weak and can be very difficult to register.

In contrast, an inherently distinctive trademark is one that lacks words that describe the goods or services connected with it. While it might seem to make sense to choose a term that describes the characteristics of a product for your trademark, it’s best to come up with a name that is fanciful, imaginative, or has no relation to the product — also called an “arbitrary mark.” These types of marks can be registered on the Principal Register without proof of acquired distinctiveness.

What is Acquired Distinctiveness in Trademark Law?

Acquired distinctiveness, also referred to as “secondary meaning,” can occur when an unregistered trademark develops distinctiveness. Specifically, a descriptive term used as a trademark may acquire significance over the course of time by the way in which the owner uses it. This can lead to consumers associating the mark with a specific source, manufacturer, or producer.

There are three forms of evidence a trademark owner can submit to the USPTO to show that a trademark has acquired distinctiveness. These include:

  • Prior registrations — If you own an existing registration on the Principal Register for the same or a similar trademark for goods or services that are related, you can make a claim of acquired distinctiveness based on the prior registration.
  • Five years of use in commerce — A trademark that has been in “substantially exclusive and continuous” use in commerce for five or more years in connection with the products or services listed in the application can acquire distinctiveness.
  • Actual evidence of acquired distinctiveness — If the mark has not been used in commerce for five or more years, it may still be able to acquire distinctiveness based on actual evidence. In this case, you would have to demonstrate that the mark has acquired the necessary secondary meaning to consumers.

Importantly, once a mark has acquired distinctiveness, it is entitled to the benefits and protections afforded to any other marks on the Principal Register.

Can You Register a Mark That is Not Distinctive?

If your mark lacks inherent or acquired distinctiveness, you may still be able to register it with the USPTO. However, it can only be placed on the Supplemental Register. The USPTO’s Supplemental Register is an alternative available to applicants when the examining attorney rejects a trademark on the grounds that it is a weak or descriptive mark because it is descriptive. If the mark gains acquired distinctiveness, it can later be registered on the Principal Register.

While the Supplemental Register only offers limited trademark protection, there is no presumption of federal ownership when a mark is placed on this register. In addition, an owner cannot record the filing with the US customs services to prevent the importation of items that violate the mark. Nevertheless, the owner of a mark on the Supplemental Register still has the right to use the encircled “R” registration symbol and can bring a lawsuit for infringement in federal court.

Contact an Experienced Trademark Attorney

There are many rules associated with USPTO trademark registration. It’s best to have a knowledgeable trademark attorney on your side who can guide you through the registration process. Located in Ann Arbor, Michigan and serving clients nationwide, the Trademark Lawyer Law Firm, PLLC assists business owners and entrepreneurs with a variety of trademark matters, including all aspects of the application process. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.