To overcome an ornamental refusal, you may submit actual evidence that the applied-for mark has acquired distinctiveness under Section 2(f) in connection with your goods. To establish “acquired distinctiveness” means that consumers directly associate your mark with your goods, typically due to extensive promotion and use of your mark.
The USPTO typically accepts the following evidence of use and promotion to establish acquired distinctiveness:
- Long term use of the mark in commerce with the goods
- Advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier for your goods
- Dollar figures for advertising devoted to such promotion
- Sales figures for your goods
- Dealer and consumer statements indicating recognition of your mark as a trademark
- Other evidence that shows consumer recognition of your mark as a trademark for your goods
NOTE: More than one of these types of evidence is needed to establish distinctiveness.
ADVISORY FOR SECTION 44/66(a) APPLICANTS: For applications filed under Section 44 or Section 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, such as use across U.S. state lines. Use solely in a foreign country or between two foreign countries never supports evidence of acquired distinctiveness in the United States.
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 nonfinal Office action, use the TEAS "Response to Office Action" (ROA) online form. To respond to a final Office action, use the TEAS "Request for Reconsideration after Final Action" online 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.
NOTE: The TEAS online form requires two signatures for claiming acquired distinctiveness - one in the “Declaration Signature” section and one in the “Response Signature” section. The same individual may not always have the authority to sign in both places. The declaration in the TEAS online form should not be bypassed, doing so will likely result in the amendment being unverified and unacceptable.
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.