A trademark that is descriptive may still be registered if has acquired distinctiveness (this is referred to as Section 2(f) of trademark law). Acquired distinctiveness can be achieved in several ways:
- Five or more years of continues and exclusive use, and a statement of such verified by the applicant (” The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” TMEP Sect. 1212
- A claim of ownership of one or more prior registrations on the Principal Register for the same mark for goods or services that are the same as or related to those named in the pending application (see 37 C.F.R. §2.41(b); TMEP §§1212.04-1212.04(e))
- Actual evidence of acquired distinctiveness.
A mark which is very descriptive may not be allowed to claim acquired distinctiveness after five year, or even 10 years or more.
And a mark which is heavily advertised and isn’t overly descriptive may achieve acquired distinctiveness in a year, or maybe even less (such circumstances are fairly rare).
Often, it is necessary or useful to show acquired distinctiveness based on “actual evidence.” This evidence could be advertising expenses, surveys, evidence about the amount and reach of advertising, media coverage, declarations from others in the industry or consumers, the length of use of the mark, and more. In short, it is anything that tends to show that the mark is recognized as a brand that correlates directly and solely with the applicant trademark owner. As stated in TMEP Sect. 1212.06, “In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public, not whether the mark is capable of becoming distinctive. In re Redken Labs., Inc., 170 USPQ 526, 528 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 335, 335 (TTAB 1959).”
Here is a sample declaration and evidence filed with the USPTO in support of a claim of acquired distinctiveness. The filing is public record.