Successful Outcome with United States Patent and Trademark Office for Davis, Burch & Abrams!

In March of 2025, trademark attorney Destinee Byers obtained a Section 2(f) claim of acquired distinctiveness with the United States Patent and Trademark Office on behalf of a client. Chimney USA, a successful business owner in Virginia and North Carolina, provides chimney repair, inspections, and sweeping services (https://www.chimneyusa.com/). Chimney USA had been using its mark for over eight years and had been registered on the Supplemental Registry for over seven years prior to applying for a 2(f) claim of acquired distinctiveness on the Principal Registry in September of 2024.

Trademark applicants whose marks are deemed as “descriptive” of their goods and services, or otherwise don’t meet the strict requirements of the Principal Registry, are placed on the Supplemental Registry. The Supplemental Registry is viewed as subordinate because it does not give trademark owners the same benefits and protections available to marks on the Principal Registry, namely, important presumptions of ownership, validity, and exclusive right to use the mark throughout the United States and the ability to become “incontestable” after a period of time. Without these presumptions, protecting a trademark against infringing users can become very difficult and expensive.

But the good news is that marks on the Supplemental Registry can “acquire distinctiveness” (or secondary meaning) over time and apply, again, to be on the Principal Registry. Trademark owners must collect and provide a variety of evidence to show Trademark Examiners that they have acquired distinctiveness in their market and in the eyes of consumers.  This process is tedious and, often, does not end in success for trademark owners. However, Davis, Burch & Abrams’s trademark attorney, Destinee Byers, was able to work with Chimney USA over the course of several years to implement business strategies and compile evidence, and, ultimately, enhance the value of its trademark through registration of its mark on the Principal Registry.

If you believe, or have been told by the United States Patent and Trademark Office, that your mark might be descriptive of the goods and services you provide, give our office a call to see if we can help you broaden the benefits and protections available for your mark.