Acquired distinctiveness, also known as "secondary meaning," refers to the state in which a sign originally lacking distinctive features has, through actual use, enabled the relevant public to associate it with a particular business, thereby acquiring distinctive character and becoming registrable. It is the registration channel the Trademark Law leaves open for descriptive signs, and it is the stage in trademark prosecution that most severely tests the quality of evidence.
Legal Basis: Article 11(2)
The first paragraph of Article 11 of the Trademark Law enumerates signs that may not be registered as trademarks: signs consisting solely of the generic name, device, or model of the goods; signs that directly indicate the quality, main raw materials, function, intended purpose, weight, quantity, or other characteristics of the goods; and other signs lacking distinctive features. The second paragraph immediately follows: where the signs listed in the preceding paragraph have acquired distinctive features through use and are easy to identify, they may be registered as trademarks.
This paragraph is the registration channel for descriptive signs and for "other signs lacking distinctive features" other than generic names. Particular attention is required: it does not apply to the prohibited signs under Article 10—Article 10 prohibits "use" of such signs, and no amount of use can reverse the outcome.
The Core of the Assessment: A Stable Correspondence
There is only one criterion for assessing acquired distinctiveness: at the time the application for registration is filed, whether the relevant public has already established a stable, identifiable correspondence between the sign and a particular business. The assessment turns not on how much the applicant invested, but on the cognitive state of the relevant public.
Three practical points follow:
- The subject is the relevant public: not industry experts, and not all consumers, but the actual purchasers of, and dealers in, the goods or services;
- The scope must match: the territories, channels, and audiences of the use and influence should cover the scope of the goods or services for which protection is sought; influence confined to a single city or a single platform will hardly support nationwide registration;
- The use must predate the filing: evidence proving use should in principle have been formed before the filing date; influence established after the filing usually cannot be used for that application.
Proof Points and the Evidence System
A single contract or a single screenshot is insufficient; what is needed is a mutually corroborating, chronologically continuous chain of evidence:
- Duration and continuity of use: date of first use and years of continuous use, such as dated packaging design drafts, early sales orders, and advertising materials from successive years;
- Territorial scope and scale: geographic coverage of sales, number of stores and online channels;
- Business data: sales revenue and volume over the years, together with the tax or audit materials relating to the goods in question;
- Advertising expenditure: advertising contracts, media schedules, and delivery data reports, which must correspond to the sign and the goods;
- Media and industry recognition: reports in the press and trade media, industry rankings, and awards;
- Consumer perception evidence: market survey reports, consumer questionnaires, platform search heat, and review content. Survey reports should be issued by a neutral third party, and the sample and questionnaire design must withstand challenge;
- Use by third parties: use by licensees and distributors can be counted, but proof of the licensing relationship is required, and the use must point to the same sign.
Relationship with "Use of a Trademark" and Common Pitfalls
Relationship with "Use of a Trademark"
Proving acquired distinctiveness still turns on trademark use in the sense of Article 48: directed at the relevant public and aimed at identifying source. Internal documents, internal system screenshots, contracts that were never performed, and token use merely to maintain a registration cannot support the conclusion that "the relevant public has established a correspondence."
Common Pitfalls
- Believing the number of applications or registrations proves reputation: registration activity has nothing to do with market perception;
- Evidence not matching the goods: sales and advertising evidence submitted points to other goods, unrelated to the designated goods;
- Gaps in the evidence: concentrated in one or two years with long blank periods in between;
- Padding with others' use: unable to explain the relationship with the applicant, or the sign used is not identical to the applied-for sign;
- Believing one round of proof lasts forever: after the sign, the scope of goods, or the market landscape changes, the conclusion may be challenged anew.
Practical Points
For a brand name that has been used for many years and has a stable customer base but is itself somewhat descriptive, there is no need to give up the application for fear of refusal. The correct approach is: when filing the application, simultaneously prepare a structured distinctiveness evidence package, numbered and archived along five dimensions—time, territory, amount, media, and third parties; once a refusal notice is received, submit it centrally in the refusal review proceeding. Success on this path depends on the quality of the evidence; the earlier the record-keeping begins, the lower the cost.
The practical judgment behind these concepts must be tailored to the individual case; before proceeding, you may book a registered agent via MyTMBee for targeted analysis.