The industrial and economic development that globally has occurred since the last century, has generated an important impact not only related to companies’ commercial growth, but also related to the generation of intangible business assets which without being expected, have been acquiring greater value and  commercial recognition in the industry, generating competition between companies and their different manufactured products or services offered to consumers, known as trademarks.

As time has passed, trademarks have gained so much importance in commerce that industrialists have focused part of their efforts in generating not only creative trademarks, but trademarks inherently distinctive from those already existing in the commercial market for different products and/or services and capable of connecting with consumers, but also having protected the company’s products or services quality and reputation; but not all trademarks possess this inherently quality, and acquired distinctiveness comes in, a concept that grants legal protection to trademarks that, through consistent and strategic use, have achieved significant recognition in the market, also known as trademarks with acquired distinctiveness or “secondary meaning” which is often defined as “an additional meaning acquired by a non-distinct trademark through its commercial use”, which initially lacked of distinctiveness to identify company’s products or services in the market but that through extensive and effective use may be recognized by consumers as an indicator of a specific company source.

By acquiring distinctiveness through use, these signs can secure the compliance of legal requirements to be registered, and gain legal protection against imitations and misuse. However, the process of acquiring distinctiveness isn’t automatic and requires sustained effort from the trademark holders to maintain its trademarks in regular and consistently use in the market, preventing similar use by competitors, investing in marketing and advertising strategies to raise trademark awareness being associated with a specific company source, and ensuring that the quality of products or services linked to the trademark solidify the trademark’s reputation and differentiation from others.

Choosing between registering trademarks with acquired distinctiveness or those with distinctiveness of origin will depend on the trademark’s nature, in which acquired distinctiveness is suitable for those trademarks that even though might have been considered as generic or descriptive, they have  established recognition in the market through consistent use, even if the trademark’s name or logo wasn’t inherently distinctive, as for example Aspirine, Nike swoosh, Kleenex, Lego; while inherent distinctiveness results ideal for products with a unique tie to a specific geographical location or traditional production methods that contribute to their quality and reputation, as well as for identification of trademarks’ products or services regardless of location, for example Tequila, Kodak, Mattel, Google, etc. 

Much has been said regarding trademark distinctiveness divided as those with no inherent meaning, those which do not directly describe the product or service but might suggest any of its characteristics, and those which directly indicate the product or service that have become genericized, which in accordance with the Industrial Property Law generally are not registrable or difficult to be registered, but not all is lost for those trademarks originally qualified as generic or descriptive, since a long-standing history use, marketing and consumer’s recognition for certain products or services could be the key to allow them to gain a secondary meaning and becoming registrable with important legal benefits as preventing competitors to use similar trademarks, granting trademark holders the right to take legal actions against infringers protecting trademark reputation and market share, and becoming a company’s considerable valuable asset.

Therefore, while trademarks with acquired distinctiveness can be valuable and legally protected, they generally have a weaker scope of protection compared to inherently distinctive trademarks, however, acquired distinctiveness remains a crucial concept as it allows generic or descriptive terms to become legally protected through consistent trademark building, its scope of protection will depend on the level of distinctiveness achieved, considering that the longer a term has been exclusively used as a trademark, the stronger will be its acquired distinctiveness, same as the extensive marketing and advertising campaigns efforts are made, the significantly strengthen acquired distinctiveness. So, the main key to measure how strong a trademark with acquired distinctiveness is, regards on how strongly consumers associate the mark with a specific product or service, and not just the generic meaning. 

At Uhthoff, Gomez Vega & Uhthoff, an IP Firm established since 1905 matters, we will be glad to assist you recommending the better legal strategy to have duly protected your IP signs in Mexico and abroad.

By: María Elena Fernández González

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