Making Section 2(f) Claims:
Demonstrating Acquired DistinctivenessLeveraging Declarations, Establishing Use and Evidence of Secondary Meaning
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THURSDAY, NOVEMBER 29, 2018
Presenting a live 90-minute webinar with interactive Q&A
Matthew D. Asbell, Partner, Ladas & Parry, New York
Matthew L. Frisbee, Attorney, Leason Ellis, New York
Jennifer Williston, Attorney, U.S. Patent and Trademark Office, Alexandria,Va.
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Agenda
I. Distinctiveness Generally
II. Pre-Filing Considerations for Marks Comprising Non-Inherently Distinctive Elements
III. Considerations at the Time of Filing
IV. Prosecution
V. Appeals and Caselaw
Conclusion
Introduction
5
ACQUIRED DISTINCTIVENESS IN U.S. TRADEMARK LAW
Matthew L. Frisbee
Leason Ellis
914.821.3090
Matthew D. Asbell
Ladas & Parry LLP
212.708.3463
Jennifer Williston
U.S. Patent and Trademark Office
571.272.3796
6
I. Distinctiveness Generally
Spectrum Freedom of Speech
Other non-merely descriptive marks that lack inherent distinctiveness
Generic
Descriptive or misdescriptive
“So highly descriptive” &
“the black hole”
Geographically descriptive
or misdescriptive
Primarily merely a surname
Trade dress – 3-
dimensional, color
marks, etc.
7
I. Distinctiveness Generally
Acquired Distinctiveness/Secondary Meaning:
Section 2(f) of the Lanham Act states that “nothing herein shall prevent
the registration of a mark used by the applicant which has become
distinctive of the applicant’s goods in commerce”
Marks that are descriptive or misdescriptive can acquire distinctiveness in
the minds of consumers through use, making them eligible for
registration on the Principal Register
Through use, the primary significance of the term, in the minds of
consumers, is the source of goods or services, not the descriptive nature
of the term
Not eligible for marks that are generic, 2(a) deceptive, primarily
geographically deceptively misdescriptive, or functional
8
II. Pre-Filing Considerations for Marks Comprising Non-Inherently Distinctive Elements
Advising client / Setting expectations / Building case:
Questions to consider regarding possibility of 2(f) claim
❑ How descriptive is the mark on the sliding scale?
❑ Is client’s mark in use and for how long?
❑ Is client or are others using the term as a mark?
❑ Is client or are others using the term
descriptively?
❑ Does client have the necessary budget to support
the 2(f) claim?
9
II. Pre-Filing Considerations for Marks Comprising Non-Inherently Distinctive Elements
Preparations for client to make if 2(f) claim is likely to be needed:
Evidence
❑ Keep track of advertising/sales figures related to
mark
❑ Have physical evidence of first use
❑ Keep various examples of advertising material
that shows use as a mark
❑ Keep unsolicited third party news articles, blog
posts, social media references that identify the
term as a mark and client as the source
10
II. Pre-Filing Considerations for Marks Comprising Non-Inherently Distinctive Elements
Advice re client’s use:
❑ Make mark prominent, not lowercase in text, not
as a noun/generic
❑ Use TM or SM after mark
❑ Monitor third party use and enforce mark against
third parties
Other Considerations:
❑ Have client identify customers who may be
willing to sign affidavits
11
II. Pre-Filing Considerations for Marks Comprising Non-Inherently Distinctive Elements
Likelihood of confusion with third party marks comprising potentially non-inherently distinctive matter; Clearance of seemingly descriptive common terms
❑ Consider how long the cited mark has been in use and whether the
owner is the exclusive user
❑ Investigation may be helpful
Is client planning to use the mark descriptively – fair use:
❑ Can use mark descriptively, even if cited mark has acquired
distinctiveness
❑ Defense to TM infringement, but client can’t gain rights in mark
❑ Manner of use – scent variant, flavor, sub-mark, etc.
❑ Advice to client – don’t apply to register, don’t use TM
12
II. Pre-Filing Considerations for Marks Comprising Non-Inherently Distinctive Elements
Previously disclaimed matter:
❑ Not supposed to be considered by PTO
❑ Examiner may find the mark in her search of the
database, which could make a 2(e)(1) refusal
more likely
Previously registered on Supplemental Register
13
III. Considerations at the Time of Filing
Pros and cons of including disclaimer or 2(f) claim when filing:
❑ For really descriptive marks, may be a way to
avoid a genericness refusal
❑ If term is clearly descriptive and client often
claims 2(f), may be a way to speed up
prosecution and avoid Office Action
14
III. Considerations at the Time of Filing
Filing Basis:
❑ A use-based application with distant first use date could help convince the examiner that a
2(f) claim based on 5 years is acceptable, without additional evidence
❑ Can still claim 2(f) in a 1(b) intent-to-use application when mark was used on other, related
goods or services
❑ Must show acquired distinctiveness for other goods, and
❑ Transferability/Relatedness: “the extent to which the goods or services in the intent-
to-use application are related to the goods or services in connection with which the
mark is distinctive, and that there is a strong likelihood that the mark’s established
trademark function will transfer to the related goods or services when use in
commerce occurs.” In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999). TMEP
1212.09(a).
15
III. Considerations at the Time of Filing
Form of mark, inclusion of additional distinctive matter
❑ Limits scope of rights, but make it more likely that mark will register,
even with a disclaimer
❑ Could be helpful to deter subsequent users, which may ultimately help
maintain exclusivity
❑ This will help to make a stronger 2(f) claim in the descriptive
portion of the mark down the road
Timing:
❑ Consider whether the mark will have been used for at least the least 5
years at some point during the prosecution
❑ Reviewed within 3-4 months, 6 months for first response, another 1-3
months to review, and 6 more months for Request for Reconsideration
(and Appeal)
16
IV. Prosecution
Descriptiveness Refusal vs. Disclaimer Requirement
❑ Examiners should indicate that the mark could be considered generic
when issuing the first Office Action
❑ Whether attempting to claim 2(f) is even worth it
❑ Whether evidence, rather than solely a 5 year claim will be necessary
Evaluating the Office Action
17
IV. Prosecution
Making the 2(f) Case – Types of Evidence
❑ Burden of proving acquired distinctiveness is on applicant
❑ Relevant time period for evidence is 5 years prior to claim
❑ Declaration based on 5 years use
❑ Use must be “substantially exclusive and continuous”
❑ Prima facie evidence of acquired distinctiveness
❑ PTO does not have to accept it if mark is “highly descriptive”
❑ Examiners seem to be increasingly reluctant to accept
without more evidence
18
IV. Prosecution
Practice Tip: If mark has been used for significantly longer than 5 years, add the date of first use in the argument or misc. statement section
❑ This may help persuade the examiner not to ask for evidence
❑ Particularly helpful when claiming 2(f) in part, where the first use
date of the full mark is much more recent
❑ Also may be necessary to submit example of use and first use date for
66(a) and 44(e) applications
19
IV. Prosecution
Advertising examples:
❑ Should come from someone inside the company who can verify
anything that cannot be independently verified by evidence
❑ Inform client that everything submitted in response to office action
will be public record that is available online
❑ May impact what the client is willing to submit
❑ “Look for” advertising for color marks and trade dress
Applicant’s affidavits re: sales, advertising figures:
20
IV. Prosecution
Customer letters/affidavits:
❑ Should say that the customer recognizes the mark as identifying the
client as the source of the goods/services
❑ Helps to demonstrate what consumers think
Getting the customer on board:
Proposed language:
21
IV. Prosecution
Independent Media Coverage:
❑ Can be very probative if done correctly
❑ Shows direct association between mark and owner in the
minds of consumers
❑ Easy to attack if done improperly
❑ No leading questions
❑ Must be appropriate portion of likely consumers
❑ Should be done by competent marketing research expert
❑ Can be prohibitively expensive, especially for ex parte
prosecution
❑ $15k for a “pilot” survey to test conclusion
❑ $30-40k for Internet based survey, like
Surveymonkey.com
❑ Significantly more for in-person or phone surveys
❑ Substantial number of unsolicited third
party references to the mark in news
articles is helpful
❑ Press releases and client generated
material is not helpful
❑ Practice Tip – set a Google News alert
early on and gather articles that mention
the mark
Consumer surveys:
22
IV. Prosecution
Case Study:
❑ Survey evidence not probative
❑ selected Applicant’s own magazine subscribers
❑ Conducted by applicant rather than market research company
❑ Leading questions
❑ Did not ask consumers if they associated the mark with one company
In re GIE Media Inc. (App. No. 85253450) (TTAB 2013) (not
precedential)
23
IV. Prosecution
Case Study:
❑ Board found survey supported acquired distinctiveness
❑ Population was from 12 mile radius around Applicant’s stores, which it
considered its market area
❑ Interviewees divided into test and control groups
❑ Test group asked about Applicant’s FARM & FLEET mark, and if
they thought it was owned by a single company (59% said yes)
❑ Control group asked about fake company RANCH & MACHINERY
and only 0.5% though it was operated by a single company
Farm Fleet Supplies, Inc. v. Blain Supply, Inc. (Opp. No. 9116469) (TTAB 2013) (not
precedential)
24
IV. Prosecution
2(f) based on earlier registrations (as previously discussed):
❑ Ownership of prior Principal Register ® for same mark is Prima facie
evidence of acquired distinctiveness
❑ Requirements
❑ Must be “Same mark”
❑ Legal equivalent that creates the same continuing
commercial impression
❑ Example: THE BOLLYWOOD REPORTER is not the same as
THE HOLLYWOOD REPORTER
❑ Goods in previous registration must be sufficiently similar to
those in application
❑ Registration must be active
25
IV. Prosecution
Partial 2(f) Claim:
❑ Consider what portion of the mark should be included
❑ Can overcome disclaimer requirement
❑ May also attempt to overcome full refusal by arguing that, with 2(f)
claim in part, the mark as a whole is not merely descriptive
❑ Can couple 2(f) in part with disclaimer of remainder of the mark
❑ Basis for claim is the same as it is for a full 2(f) claim – 5 years of use,
evidence, prior registration, etc.
❑ If claiming 2(f) based on prior registration, the portion to which
the 2(f) claim applies must consist of the “same mark” as the full
prior registration.
26
IV. Prosecution
Settling for the Supplemental Register:
❑ Not available for Madrid extension, generic mark, deceptive mark, or
marks based on intent to use
❑ If launch date of mark is several months or years off, consider
strategically extending prosecution time until use can be claimed and
amendment to Supp. can be made
❑ File responses close to deadline
27
V. Appeals and Caselaw
Converse, Inc. v. ITC, Appeal No. 2016-2497 (Fed. Cir. Oct. 30, 2018)
❑ Converse files ITC complaint based on trade dress infringing its Chuck Taylor shoes
❑ Lack of acquired distinctiveness raised by respondents
❑ Fed. Cir. clarifies time period during which acquired distinctiveness must be shown:
❑ "In any infringement action, the party asserting trade-dress protection must establish that
its mark had acquired secondary meaning before the first infringing use by each alleged
infringer.“
❑ Most relevant period for evaluating acquired distinctiveness is five years before alleged
infringement or claim of acquired distinctiveness
28
V. Appeals and Caselaw
Converse, Inc. v. ITC, Appeal No. 2016-2497 (Fed. Cir. Oct. 30, 2018)
New test for acquired distinctiveness
❑ Surveys
❑ Length, degree and exclusivity of use
❑ Advertising
❑ Sales
❑ Intentional copying
❑ Unsolicited media coverage
29
V. Appeals and Caselaw
John Edward Guzman v. The New Santa Cruz Surf School LLC, Opposition No. 91220843 (TTAB 2017)
❑ Opposition based on geographic descriptiveness
❑ 2(f) claim failed because use was not continuous during 5 years
❑ Owner of applicant was imprisoned in Aug. 2013
❑ Business did not resume until business was sold in Dec. 2013
❑ Applicant lacked evidence of any use for over a year
❑ Board sustained opposition based on geographic descriptiveness and rejected
2(f) claim
30
V. Appeals and Caselaw
In re IMH LR Clubhouse, LLC, Ser. No. 86338122 (TTAB 2017) (not precedential):
❑ LAUGHLIN RANCH refused registration based on geographic
descriptiveness
❑ Applicant appeals, arguing not geographically descriptive
❑ Applicant makes 2(f) claim in the alternative
❑ Geographic descriptiveness refusal upheld, but 2(f) claim accepted
31
V. Appeals and Caselaw
Montres Charmex S.A. v. Montague Corp. (Opp. No. 91191784) (TTAB 2015) (not precedential):
❑ Opposed on basis that SWISS MILITARY for bicycles had not acquired distinctiveness under
2(f)
❑ Evidence
❑ Only 5 year prima facie claim
❑ Opposer’s argument was that signatory did not have the requisite authority to bind the
applicant when he signed the declaration
❑ His title was mistakenly listed as “President” when he was actually the company’s
“Clerk” and “Treasurer”
❑ Board determined that the title mistake was immaterial and that the mark was not so highly
descriptive to require more than the 5 year claim
32
V. Appeals and Caselaw
In re J.T. Posey Company (SN 85206911) (TTAB 2015) (not precedential):
❑ SKINSLEEVES acquired distinctiveness
❑ Originally a genericness refusal, but Board reversed and found only
merely descriptive
❑ Board says not so highly descriptive that it cannot acquire
distinctiveness based on 5 year presumption
❑ Evidence of 2(f)
❑ Over 10 years of use
❑ Declarations from 7 customers
33
V. Appeals and Caselaw
RTX Scientific, Inc. v. Nu-Calgon Wholesaler, Inc. (Canc. No. 92055285) (TTAB 2015) (not precedential):
❑ Design mark consisting of the color blue as applied to the liquid
portion of the goods inside a container
❑ Color marks are never inherently distinctive, so applicant claimed 2(f)
in prosecution
❑ Petition to cancel on the basis that the mark is functional, descriptive
and generic, and has not acquired distinctiveness
34
V. Appeals and Caselaw
Evidence:
❑ Declaration from Applicant
❑ Product is the top selling condenser coil cleaner in the U.S.
❑ Blue color is source identifying
❑ 20 years of use
❑ Advertising and sales figures (designated confidential)
35
V. Appeals and Caselaw
Copies of several different advertisements highlighting the blue mark with “REACH FOR THE BLUE” and “GO BLUE” shown as identifying source, including:
36
V. Appeals and Caselaw
❑ Petitioner included evidence that six other HVAC companies also sold
blue coil cleaners
❑ Board holds that Petitioner made prima facie showing that mark
had not acquired distinctiveness
❑ Use not substantially exclusive in 2010
❑ Board – evidence is insufficient where there is undisputed evidence
that blue is a common color for HVAC coil cleaners
37
V. Appeals and Caselaw
The Topps Company, Inc. v. Panini America, Inc. (Opp. No. 91209769) (TTAB 2015) (not precedential):
❑ Application for LIMITED for sports trading cards
❑ Topps opposed, claiming that mark had not acquired distinctiveness
❑ Applicant’s Evidence
❑ 5 years of use (since 1994)
❑ Unverified statement of $30 million in sales under the mark since
2001
❑ Opposer’s Evidence
❑ Unrelated third party use of LIMITED in the same industry
38
V. Appeals and Caselaw
The Topps Company, Inc. v. Panini America, Inc. (Opp. No. 91209769) (TTAB 2015) (not precedential):
❑ Board’s analysis
❑ Third party use is inconsistent with requirement that mark
identify a single source
❑ Mark is highly descriptive and is commonly used in the industry
❑ Revenue figures do not show market share and that the sales
figures include the U.S. and Canada
❑ Mark did not acquire distinctiveness
❑ Example illustrates that examining attorneys do not challenge
exclusivity regarding a 5 year claim in ex parte examination, but the
issue can still be raised by an opposer
39
QUESTIONS?THANK YOU.
Matthew L. FrisbeeLeason Ellis
914.821.3090
Matthew D. AsbellLadas & Parry LLP
212.708.3463
Jennifer WillistonU.S. Patent and Trademark Office
571.272.3796
40
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