When Is a Surname Registrable Based on Acquired Distinctiveness Absent Five Years of Use?

As a general rule, a term that is primarily merely a surname or merely descriptive cannot be registered in the U.S. on the Principal Register, absent acquired distinctiveness (and the Supplemental Register is not available to International Registration designation to the U.S.). The most common way to assert acquired distinctiveness is a declaration that there has been substantially exclusive use of the mark for the recited goods/services in the U.S. for at least five years. With this claim, many trademark applicants can successfully overcome a mere descriptiveness or surname refusal under Section 2(e)(1) of the Trademark Act. However, it is also possible to prove that a mark is sufficiently well-known to be registered on the Principal Register based on acquired distinctiveness without a claim of five years of substantially exclusive use.  

Arguments that a mark meets the criteria for acquired distinctiveness without the use stipulations noted above are rarely successful. However, Litmus Law was able to succeed in doing so in connection with IR No. 1723874, for the mark ZELENSKYY, owned by Volodymyr Zelenskyy, President of Ukraine. With substantial evidence and carefully drafted arguments, we proved that ZELENSKYY is sufficiently well-known in the U.S. and associated with Applicant such that the mark has acquired distinctiveness. Thus, we gained official approval of the U.S. designation for ZELENSKYY for “entertainment services, film productions, and publications of books” (without a claim of five years of substantially exclusive use in the U.S. for relevant goods/services).