The Lanham Act, the federal law governing trademarks, specifically prohibits the registration of trademarks that fall into a number of categories. For example, Section 2(e) lists the following types of marks that are precluded from registration:
- Marks that are merely descriptive of the goods or services offered under the marks;
- Marks that are primarily geographically descriptive of the goods or services offered under the marks, except as indications of regional origin which may be registerable under Section 1054;
- Marks that are primarily a surname;
These marks are refused registration because they are relatively weak marks on the overall spectrum of trademark strength. In other words, trademark law prevents a weak marks from registration because it would be inequitable to permit someone to block others from using a common mark in connection with the offering of goods or services.
The Section 2(f) Exception
However, Section 2(f) trademark registration serves as an exception to this rule. Under this section, a mark that was initially refused registration based on the rules above can proceed to registration provided the mark “has become distinctive of the applicant’s goods in commerce.”
How do you prove a mark has achieved distinctiveness? If the mark has been used exclusively and continuous for more than 5 years, there is a presumption it has become distinctive. As a result, a simple sworn statement to continuous use will permit the mark to proceed to registration. If the mark has been used for less than five years, the applicant will need to submit evidence proving the mark has acquired distinctiveness. This could include a wide range of information, including advertising expenses, marketing plans, and formal surveys.
So, is there a downside to a Section 2(f) registration?
A Section 2(f) could be an admission the mark is not “inherently distinctive,” thus requiring you to establish secondary meaning in any subsequent litigation. While this is important, it is likely obtaining the federal registration itself is more important.
If you are faced with a decision about whether to accept a Section 2(f) registration or debating responding to an office action, you should consult with an attorney. Revision Legal’s experienced trademark attorneys can be reached at 855-473-8474.