You may submit actual evidence that the applied-for mark has acquired distinctiveness under Section 2(f) in connection with applicant's goods. In other words, because of the extensive use and promotion of the mark, consumers now directly associate the mark with the applicant as the source of those goods. Note: Long-term use alone is generally not sufficient to show acquired distinctiveness for marks that are merely ornamental.
Acceptable evidence of use and promotion can include:
(a) advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;
(b) dollar figures for advertising devoted to such promotion;
(c) dealer and consumer statements indicating recognition of the applied-for mark as a trademark;
(d) other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant's goods.
NOTE: For applications filed under Section 44 or 66(a), when providing evidence of long term use, an applicant may rely only on use in commerce that the U.S. Congress may regulate. Use solely in a foreign country or between two foreign countries never supports evidence of acquired distinctiveness in the United States.
For more information on Section 2(f), see 37 C.F.R. §2.41(a); TMEP §§1202.03(d), 1212.06 et seq.
TEAS instructions for claiming acquired distinctiveness: Below are instructions for how to use TEAS to respond to such issue in an Office action. The instructions below presume that you will be using a TEAS form to respond online to more than one issue. To respond using TEAS, you must fill out the form to address all issues in the Office action and, at the end of the form, the correct party must properly sign it. For more information about who may sign a response, please review your Office action.
To respond to a non-final office action, use the TEAS Response to Office Action form. To respond to a final office action, use the TEAS Request for Reconsideration after Final Action form. These forms will include the appropriate required statements and supporting declaration language referenced in the Office action. The instructions provided in both forms are the same. If you need technical assistance with TEAS, contact TEAS@uspto.gov.
Once you have opened the appropriate TEAS form:
- Answer "Yes" to form wizard question #3 for submitting a Section 2(f) claim. Continuing on to the next portion of the form:
- In the “Additional Statement(s)” section, check the box under “Indicate the Nature of the §2(f) Claim of Acquired Distinctiveness” for either “§2(f) Whole” or “§2(f) In Part.”
- Check the box next to “§2(f) Claim of Acquired Distinctiveness, [IN PART,] based on Evidence.”
- Check the box next to the following statement: For “§2(f) Whole,” “The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.” or for “§2(f) In Part,” “For a trademark or service mark: “____ has become distinctive of the goods/services, as demonstrated by the attached evidence.
- Use the "Click here to Attach/Remove §2(f) Evidence" button to attach JPG/PDF image files of the §2(f) evidence.
- Once all relevant classes have been addressed, click the "Continue" button.