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.
What “Acquired Distinctiveness” Actually Means
The legal concept underlying Section 2(f) is “acquired distinctiveness,” also commonly called “secondary meaning.” A term acquires secondary meaning when the consuming public comes to associate it primarily with a single commercial source rather than with the descriptive term or surname it represents. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211 (2000). The mark has, through use in commerce, transcended its ordinary meaning and become a source identifier in the minds of consumers.
Secondary meaning is a fact-intensive inquiry. It turns on what the relevant consuming public actually understands when they encounter the mark—not what the mark means in the abstract. A term that is purely descriptive when first introduced can, over time and through sustained commercial use, come to mean one company’s products to the people who buy those products. At that point, the policy concern that animated the Section 2(e) bar—inequitably monopolizing a term others need to use—is substantially reduced, and registration becomes appropriate.
The Five-Year Presumption
Congress built an evidentiary shortcut into Section 2(f): five years of substantially exclusive and continuous use in commerce creates a rebuttable presumption of acquired distinctiveness. TMEP § 1212.05(a). To claim this presumption, the applicant submits a sworn declaration attesting to exclusive and continuous use for at least five years before the date of the claim. No further evidence is required unless the examining attorney finds the presumption rebutted by evidence that the mark remains descriptive despite five years of use—for example, because competitors have continued to use the term descriptively in the same industry.
It is important to understand what “exclusive” use means in this context. It does not mean that no other entity has ever used the term anywhere; it means that no other party has used the same mark as a trademark in connection with the same or similar goods or services. Concurrent use by multiple sources would undercut the argument that consumers associate the mark with a single source.
Proving Acquired Distinctiveness in Under Five Years
When the applicant cannot satisfy the five-year presumption, acquired distinctiveness must be demonstrated through objective evidence. The TMEP identifies several categories of evidence that examining attorneys consider:
- Advertising expenditures: Evidence of substantial investment in promoting the mark—across television, print, digital, outdoor, and trade advertising—supports a finding that the mark has achieved consumer recognition.
- Sales volume and commercial success: High sales figures associated with the mark demonstrate significant market penetration and consumer exposure.
- Consumer declarations: Declarations from customers attesting that they recognize the mark as identifying a single source are among the most direct evidence of secondary meaning.
- Consumer surveys: A properly conducted consumer perception survey can directly establish the percentage of the relevant purchasing public that associates the mark with the applicant’s source. Surveys conducted by qualified experts and following accepted methodological standards carry significant weight.
- Media coverage: Unsolicited coverage in trade publications, news articles, and industry reports that treats the mark as a brand identifier supports the inference of consumer recognition.
- Long period of use: Even if the use does not reach five years, a substantial period of use—particularly if accompanied by significant advertising and sales—can support a claim of acquired distinctiveness.
Section 2(f) in Litigation: The Admission Risk
Accepting a Section 2(f) registration carries a significant downstream litigation risk. Because the registration is premised on acquired distinctiveness rather than inherent distinctiveness, the owner may face an argument in subsequent infringement litigation that the mark is not inherently distinctive and that the plaintiff must prove secondary meaning as an element of its infringement claim. Courts have generally held that a Section 2(f) claim amounts to a concession that the mark is not inherently distinctive. See Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999).
This means that in an infringement case, the mark owner may need to re-prove secondary meaning—potentially against a defendant who argues that the mark has not achieved secondary meaning in the specific market at issue or during the specific time period relevant to the dispute. Depending on the facts, this can significantly increase the burden of proof and litigation costs.
For many applicants, the benefit of obtaining federal registration outweighs this risk. But for marks in competitive markets where infringement litigation is foreseeable, the decision deserves careful analysis. Revision Legal’s trademark attorneys can evaluate whether fighting the Section 2(e) refusal on the merits is the stronger path, or whether proceeding under Section 2(f) makes strategic sense. Contact us at 855-473-8474 or through the contact form on this page.
Section 2(f) and the Supplemental Register: Key Differences
When a mark is refused on descriptiveness grounds, the applicant has three potential paths: argue the mark is not merely descriptive; claim acquired distinctiveness under Section 2(f); or amend the application to seek registration on the Supplemental Register. Understanding the differences is essential to making the right strategic choice.
Supplemental Register registration does not carry the legal presumptions of Principal Register registration. It does not constitute constructive notice to the public, does not confer incontestability, and cannot be used to block registration of confusingly similar marks in most circumstances. However, Supplemental Register registration does allow use of the ® symbol and can serve as a basis for foreign trademark registration. More importantly, five years of use following Supplemental Register registration can support a claim of acquired distinctiveness sufficient to move the mark to the Principal Register under Section 2(f). For applicants whose marks are genuinely descriptive and whose commercial use has not yet generated sufficient evidence of secondary meaning, the Supplemental Register can function as a bridge to eventual Principal Register registration rather than a permanent second-tier status.
