SECTION 93.39. Proof of Distinctiveness

(a) An applicant may seek registration of a mark, otherwise unregistrable by reason of §16.051(a)(5)(A), (B), or (6) of the Business & Commerce Code, which the applicant believes has become distinctive as applied to the applicant's goods and/or services. To support the claim of distinctiveness the applicant may submit:

(1) evidence of prior registrations with the Secretary of State of the same or similar marks owned by the applicant or applicant's predecessor in interest;

(2) actual evidence of acquired distinctiveness; or

(3) a sworn statement of the applicant's substantially exclusive and continuous use of the mark for the five years preceding the date on which the applicant filed its application for registration.

(b) Types of evidence that may be submitted to support a claim of distinctiveness may include sworn affidavits, depositions, or other evidence showing duration, extent, and nature of use of the mark. The applicant also may submit evidence of advertising expenditures made in connection with the mark; the evidence should identify the types of media and should include typical advertisements. Additional evidence may include affidavits, letters, or statements from the trade or public. Sworn statements in the application may, in appropriate cases, be accepted as prima facie evidence of distinctiveness.

(c) After reviewing evidence submitted to support a claim of distinctiveness, the trademark examiner may require further evidence, or may determine that the mark is so generic or highly descriptive as applied to the applicant's goods and/or services that the mark cannot be registered regardless of the amount of evidence provided.

Source Note: The provisions of this §93.39 adopted to be effective September 1, 2012, 37 TexReg 6287