4

I want to understand why "Lyft" was trademarked for "transportation of passengers by motorized vehicle".

When Lyft Inc originally filed for "Lyft" trademark in 2012 (serial# 85/743120), the use was essentially restricted to a computer and telecommunication service.

Then Lyft Inc filed another application in 2014 (serial# 86/183891) for use in "transportation of passengers by motorized vehicle". This time, the attorney's response was that (1) the mark is not "merely descriptive of the identified services" and (2) "the mark has acquired distinctiveness among consumers".

Said application was approved by USPTO.

Obviously Lyft had a very good attorney at that time, and the first argument (which was fairly well written) was probably enough to convince the examiner.

Still, I am bugged by the second point. Under the trademark law, shouldn't be mark have been used for at least five (5) years before acquired distinctiveness be claimed?

My question is, is a five-year period an absolute minimum for acquired distinctiveness, or do examiners make exceptions to such rule?

Improve this question
1
  • Hello! Welcome to Law.SE. Plese read our tour page.
    – isakbob
    Nov 8, 2019 at 16:30

2 Answers 2

Reset to default
11

I supposed the five year requirement you referred to follows from U.S.C. § 1052(f):

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.

It only relates the "five years" requirement to "accept[ing] as prima facie evideice." It does not say that dictinctiveness cannot be acquired before a trademark has been used for less than five years.

Improve this answer
2
  • Does the wording may accept have any influence, I wonder? If this wasn't the text of a law I'd interpret this to mean that the Director may decide to deny the prima facie evidence even after 5 years... basically it would render the paragraph a simple suggestion which the Director may ignore (probably providing some reasoning as to why). How does legalese interpret that?
    – Giacomo Alzetta
    Nov 8, 2019 at 17:27
  • @GiacomoAlzetta I don't have a definitive answer for your question. I understand "may" here gives the "Director" the power to accept as prima facie evidence. Otherwise, the applicant must show more convincing evidence of acquired distinctiveness other than the "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."
    – xuhdev
    Nov 8, 2019 at 18:37
1

Distinctiveness can be acquired anytime. Five years' time period only provides prima-facie evidence for acquired distinctiveness filing with USPTO for registration in the principal register. This evidence may be repudiated by the examining attorney. Five years' time frame provides an opportunity to prove acquired distinctiveness. Not a guarantee. Good luck!

Improve this answer
1
  • Hello! Could you provide links to support your answer?
    – isakbob
    Nov 14, 2019 at 18:48

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .