How do I prove my trademark is not merely descriptive, in the United States?

How do I prove my trademark is not merely descriptive, in the United States?

A trademark is a something that a manufacturer uses to signal to consumers that the manufacturer is the source of a product.  A trademark is traditionally a symbol, word or phrase, but a trademark can also be a color, sound or smell.  If a something creates an association in the mind of a consumer between a product and the identity of the manufacturer of the product, that can be considered a trademark.  Trademark law in the United States is a hybrid of state and federal laws.  A trademark owner can register their trademark with the United States Patent and Trademark Office to strengthen their trademark, but registration is not required to start using a trademark to brand goods.

The value and strength of a trademark is measured by the the association consumer make between products branded trademark and the company which produced those products.  Trademark law only offers protection to distinctive trademarks, that is, trademarks that serve the purpose of identifying the source of the goods or services.  The trademarks that are the most distinctive  are arbitrary or fantastical trademarks that have nothing to do with the products, like Apple for computers or Kodak for cameras.  Suggestive trademarks may refer to a characteristic of a product, but require some imagination to make the connection between the trademark and the product, like Penguin for a refrigerator.  Generic trademarks are trademarks that have become synonymous with a product and cannot be protected by trademark law.

A fifth class of trademarks are descriptive trademarks.  A descriptive trademark identifies a characteristic or quality of the service or product.  A descriptive trademark may be registered, on the Principal Trademark Register of the United States Patent and Trademark Office, only if it has acquired secondary meaning.  If the United States Patent and Trademark Office refuses to register a trademark because it is merely descriptive, than the trademark applicant can request registration on the Supplemental Trademark Register.

How can a trademark applicant overcome a refusal to register a trademark the United States Patent and Trademark Office deems merely descriptive?  With evidence of secondary meaning which demonstrates the trademark has acquired distinctiveness.

Under Trademark Rule 2.41(a)(3), 37 C.F.R. §2.41(a)(3), a trademark applicant may submit affidavits, declarations under 37 C.F.R. §2.20, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce, advertising expenditures in connection with such use, letters, or statements from the trade and public, or other appropriate evidence tending to show that the mark distinguishes the products of the applicant.

An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.  In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985).

In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public, not whether the mark is capable of becoming distinctive. In re Redken Labs., Inc., 170 USPQ 526, 528 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 335, 335 (TTAB 1959).

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