# TMEP § 1212: Acquired Distinctiveness or Secondary Meaning

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/TMEP_S1212

## Section

- **Citation:** TMEP § 1212
- **Heading:** Acquired Distinctiveness or Secondary Meaning
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO TMEP / Chapter 1200 - Substantive Examination of Applications / TMEP § 1212

## Text

15 U.S.C. §1052(f)
Except as expressly excluded in subsections (a), (b),
(c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the
registration of a mark used by the applicant which has become distinctive of the
applicant’s goods in commerce. The Director may accept as prima facie evidence that
the mark has become distinctive, as used on or in connection with the applicant’s
goods in commerce, proof of substantially exclusive and continuous use thereof as a
mark by the applicant in commerce for the five years before the date on which the
claim of distinctiveness is made. Nothing in this section shall prevent the
registration of a mark which, when used on or in connection with the goods of the
applicant, is primarily geographically deceptively misdescriptive of them, and which
became distinctive of the applicant’s goods in commerce before the date of the
enactment of the North American Free Trade Agreement Implementation Act.
If a proposed trademark or service mark is not inherently
distinctive, it may be registered on the Principal Register only upon proof of acquired
distinctiveness, or "secondary meaning," that is, proof that it has become distinctive
as applied to the applicant’s goods or services in commerce. If the applicant
establishes, to the satisfaction of the examining attorney, that the matter in question
has acquired distinctiveness as a mark in relation to the named goods or services, then
the mark is registrable on the Principal Register under §2(f) of the Trademark Act,
15 U.S.C.  §1052(f)
.
Within the context of the Trademark Act, §2(f) may be
described as follows:
[U]nlike the first five sections of
15 U.S.C.
§1052
which define the grounds upon which a trademark
registration is to be refused, Section 2(f) serves as an exception to a rejection
under the provisions of one of the other sections, Section 2(e)
the Principal Register under §2(f) of the Trademark Act,
15 U.S.C.  §1052(f)
.
Within the context of the Trademark Act, §2(f) may be
described as follows:
[U]nlike the first five sections of
15 U.S.C.
§1052
which define the grounds upon which a trademark
registration is to be refused, Section 2(f) serves as an exception to a rejection
under the provisions of one of the other sections, Section 2(e). Section 2(f)
permits registration of marks that, despite not qualifying for registration in light
of Section 2(e), have nevertheless "become distinctive of the applicant’s goods in
commerce." Thus, "Section 2(f) is not a provision on which registration can be
refused," . . . but is a provision under which an applicant has a chance to prove
that he is entitled to a federal trademark registration which would otherwise be
refused.
Yamaha Int’l Corp. v. Hoshino Gakki Co.
, 840 F.2d 1572, 1580, 6
USPQ2d 1001, 1007 (Fed. Cir. 1988) (citation omitted) (quoting
In re Cap. Formation Couns.,
Inc.
, 219 USPQ 916, 917 n.2
(TTAB 1983)).
The purpose and significance of secondary meaning may be
described as follows:
A term which is descriptive . . . may, through usage
by one producer with reference to his product, acquire a special significance so
that to the consuming public the word has come to mean that the product is produced
by that particular manufacturer. This is what is known as secondary meaning.
The crux of the secondary meaning doctrine is that
the mark comes to identify not only the goods but the source of those goods. To
establish secondary meaning, it must be shown that the
primary
significance of the term in the minds of the consuming public is not the product but
the producer. This may be an anonymous producer, since consumers often buy goods
without knowing the personal identity or actual name of the manufacturer.
Ralston Purina Co. v. Thomas J. Lipton,
Inc.
, 341 F. Supp. 129, 133, 173 USPQ 820,
823 (S.D.N.Y. 1972) (citations
omitted)
g, it must be shown that the
primary
significance of the term in the minds of the consuming public is not the product but
the producer. This may be an anonymous producer, since consumers often buy goods
without knowing the personal identity or actual name of the manufacturer.
Ralston Purina Co. v. Thomas J. Lipton,
Inc.
, 341 F. Supp. 129, 133, 173 USPQ 820,
823 (S.D.N.Y. 1972) (citations
omitted).
Three basic types of evidence may be used to establish
acquired distinctiveness under §2(f) for a trademark or service mark:
(1)
Prior Registrations
: A claim of ownership of one or more
active prior registrations on the Principal Register of the same mark for goods
or services that are sufficiently similar to those identified in the pending
application (
37 C.F.R. §2.41(a)(1)
;
see
TMEP
§§1212.04–1212.04(e)
);
(2)
Five Years’ Use
: A verified statement that the mark has
become distinctive of the applicant’s goods or services by reason of the
applicant's substantially exclusive and continuous use of the mark in commerce
for the five years before the date on which the claim of distinctiveness is made
(
37 C.F.R. §2.41(a)(2)
;
see
TMEP
§§1212.05–1212.05(d)
); and
(3)
Other Evidence
: Other appropriate evidence of acquired
distinctiveness (
37 C.F.R.
§2.41(a)(3)
;
see
TMEP
§§1212.06–1212.06(e)(iv)
).
These three basic types of evidence apply similarly to
collective trademarks, collective service marks, and collective membership marks
(together "collective marks"), and certification marks, with slight modifications
regarding the type of evidence required due to (1) the different function and purpose of
collective and certification marks and (2) the fact that these types of marks are used
by someone other than the applicant.
See
37
C.F.R. §2.41(b)-(d)
.
ective trademarks, collective service marks, and collective membership marks
(together "collective marks"), and certification marks, with slight modifications
regarding the type of evidence required due to (1) the different function and purpose of
collective and certification marks and (2) the fact that these types of marks are used
by someone other than the applicant.
See
37
C.F.R. §2.41(b)-(d)
.
(1)
Prior Registrations
: A claim of ownership of one or more
active prior registrations on the Principal Register of the same mark for: goods
or services that are sufficiently similar to those identified in the pending
application, for a collective trademark or collective service mark
(
37 C.F.R. §2.41(b)(1)
;
cf.
TMEP §§1212.04–1212.04(e)
); goods,
services, or nature of the collective membership organization that are
sufficiently similar to those identified in the pending application, for a
collective membership mark (
37 C.F.R.
§2.41(c)(1)
;
cf.
TMEP §§1212.04–1212.04(e)
); and goods
or services that are sufficiently similar to the goods or services certified in
the pending application, for a certification mark (
37 C.F.R.
§2.41(d)(1)
);
cf.
TMEP §§1212.04–1212.04(e)
);
(2)
Five Years’ Use
: A verified statement that the mark has
become distinctive of: the members’ goods or services by reason of the members’
substantially exclusive and continuous use of the mark in commerce for the five
years before the date on which the claim of distinctiveness is made, for a
collective trademark or collective service mark (
37 C.F.R.
§2.41(b)(2)
;
TMEP
§1212.05(d)
); indicating membership in the
applicant’s collective membership organization by reason of the members’
substantially exclusive and continuous use of the mark in commerce for the five
years before the date on which the claim of distinctiveness is made, for a
collective membership organization (
37 C.F.R
r a
collective trademark or collective service mark (
37 C.F.R.
§2.41(b)(2)
;
TMEP
§1212.05(d)
); indicating membership in the
applicant’s collective membership organization by reason of the members’
substantially exclusive and continuous use of the mark in commerce for the five
years before the date on which the claim of distinctiveness is made, for a
collective membership organization (
37 C.F.R.
§2.41(c)(2)
;
TMEP
§1212.05(d)
); or the certified goods or services, by
reason of the authorized users’ substantially exclusive and continuous use of
the mark in commerce for the five years before the date on which the claim of
distinctiveness is made, for a certification mark (
37 C.F.R.
§2.41(d)(2)
;
TMEP
§1212.05(d)
); and
(3)
Other Evidence
: Other appropriate evidence of acquired
distinctiveness (
37 C.F.R.
§2.41(b)(3)
,
(c)(3)
,
(d)(3)
;
cf.
TMEP §§1212.06–1212.06(e)(iv)
).
The applicant may submit one or any combination of these
types of evidence, which are discussed in more detail below. In addition, see
TMEP §1212.01
regarding the factors
considered when determining whether a mark has acquired distinctiveness.
Depending on the nature of the mark and the facts in the
record, the examining attorney may determine that a claim of ownership of a prior
registration(s) or a claim of five years’ substantially exclusive and continuous use in
commerce is insufficient to establish a prima facie case of acquired distinctiveness. In
which case, the applicant may then submit additional other evidence of acquired
distinctiveness.
The legal principles pertaining to evidence of acquired
distinctiveness discussed in this section and below with respect to trademarks and
service marks apply generally to collective marks and certification marks as well.

## Nearby sections

- [TMEP § 1201 Ownership of Mark](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.md)
- [TMEP § 1201.01 Claim of Ownership May Be Based on Use By Related Companies](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.01.md)
- [TMEP § 1201.02(a) Identifying the Applicant Properly](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(a).md)
- [TMEP § 1201.02(c) Correcting Errors in How the Applicant Is Identified](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(c).md)
- [TMEP § 1201.02(d) Operating Divisions](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(d).md)
- [TMEP § 1201.02(e) Changes in Ownership After Application Is Filed](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(e).md)
- [TMEP § 1201.03(a) No Explanation of Use of Mark by Related Companies or Applicant’s Control Over Use of Mark by Related Companies Required](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(a).md)
- [TMEP § 1201.03(b) Wholly Owned Related Companies](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(b).md)
- [TMEP § 1201.03(c) Common Stockholders, Directors, or Officers](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(c).md)
- [TMEP § 1201.03(e) License and Franchise Situations](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(e).md)
- [TMEP § 1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.04.md)
- [TMEP § 1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.05.md)
- [TMEP § 1201.06(a) Applicant Is Merely Distributor or Importer](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.06(a).md)
- [TMEP § 1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.06(b).md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/TMEP_S1212. Check the current official text before relying on it. Not legal advice.