Acquired Distinctiveness, Priority, and Trademark Conflicts Explained

At first glance, a business name like “Best Medical Certifications” might seem too descriptive to qualify as a federally registered trademark. And in many cases, the United States Patent and Trademark Office (USPTO) would agree. But what if your business has used that name consistently for decades and is widely known across the country in your field?

In that case, your brand may have what trademark law calls “acquired distinctiveness” or “secondary meaning.” And if you’re applying to register a descriptive trademark — especially in a crowded field — understanding how acquired distinctiveness affects trademark rights, priority, and likelihood of confusion is essential.

In this article, we’ll explore how this doctrine works using a hypothetical involving a nationally recognized certifying body in the medical industry. We’ll also explain how Section 2(f) of the Lanham Act helps certain descriptive trademarks overcome USPTO refusals, and what risks still remain when similar registered marks already exist.

The Hypothetical: BMC and the Power of Long-Term Use

Let’s imagine a nonprofit organization, Best Medical Certifications, has operated for over 50 years, providing nationally recognized certification programs for medical professionals across the U.S. It uses the acronym BMC, and over the years, BMC has become a household name in hospitals, universities, and healthcare networks.

Despite its national reputation, BMC never filed a federal trademark application. In 2025, BMC decides to seek trademark protection for both “Best Medical Certifications” and “BMC.” However, both names are merely descriptive: the former describes what the business does, and the latter is a well-known acronym that communicates the same.

To overcome a likely merely descriptive refusal under Section 2(e)(1) for descriptiveness, BMC submits its applications under Section 2(f) — claiming acquired distinctiveness based on decades of continuous use.

What Is Acquired Distinctiveness or Secondary Meaning?

Under the Lanham Act, certain marks that are not inherently distinctive — such as descriptive terms, surnames, geographic names, or acronyms — may still qualify for registration if the applicant can show that the public has come to recognize the mark as identifying a single source.

This is known as acquired distinctiveness, or secondary meaning, and is governed by Section 2(f) of the Lanham Act.

Importantly, filing under Section 2(f) is a concession that the mark is not inherently distinctive. The only issue becomes whether the applicant has presented sufficient evidence that the mark has acquired distinctiveness in the minds of consumers.

Types of evidence often used to prove secondary meaning include:

• Length and exclusivity of use (typically 5+ years)
• Volume of sales and advertising expenditures
• Media recognition and unsolicited press
• Consumer surveys showing source recognition
• Declarations from industry professionals or clients

The Legal Threshold Depends on the Strength (or Weakness) of the Trademark

Not all descriptive marks are created equal. Courts and the USPTO apply a sliding scale: the more descriptive the mark, the heavier the burden of proving acquired distinctiveness.

For example, in In re Franklin County Historical Society, the Trademark Trial and Appeal Board (TTAB) rejected a claim of secondary meaning for “Center of Science and Industry,” even after years of use, because the term was highly descriptive.

In our BMC hypothetical, “Best Medical Certifications” may be viewed as self-laudatory and highly descriptive, and the acronym “BMC” — if widely understood to mean the same thing — may be considered no better.

Thus, BMC must present strong evidence of long-standing, exclusive, and geographically widespread use to satisfy the USPTO that the public associates the name and acronym with a single source of certification services.

But What About Conflicts With Other Registered Marks?

Here’s where things get more complex — and where even businesses with decades of goodwill and recognition can run into legal trouble.

Let’s return to our hypothetical. Suppose BMC submits federal trademark applications for both “Best Medical Certifications” and its acronym “BMC,” claiming acquired distinctiveness under Section 2(f). In conducting a comprehensive search, BMC discovers a registered trademark for BMCA Health Foundation, a separate organization that has operated in the healthcare space for over 40 years. BMCA provides workforce training and job placement services in the medical field.

Although the names differ slightly — “BMCA” vs. “BMC,” and “Health Foundation” vs. “Medical Certifications” — the USPTO will evaluate the applications under Section 2(d) of the Lanham Act, which prohibits the registration of a mark that is likely to cause confusion with a prior registered mark.

This likelihood-of-confusion analysis is entirely separate from the issue of descriptiveness. Even if BMC successfully proves acquired distinctiveness — that is, that the public associates “Best Medical Certifications” and “BMC” with a single source — that does not eliminate the risk of a Section 2(d) refusal if the marks and services are seen as too similar to those of a pre-existing registrant.

The USPTO’s Section 2(d) Likelihood of Confusion Factors

When assessing whether confusion is likely between two trademarks, the USPTO and courts apply a multi-factor test, commonly known as the DuPont factors. The most relevant in this scenario include:

• Similarity of the trademarks in appearance, sound, connotation, and commercial impression
• Relatedness of the goods or services
• Similarity of trade channels and consumers
• The strength of the prior registered trademark
• Evidence of actual confusion, if any

Let’s look at each of these in the context of our hypothetical:

1. Similarity of the Marks: BMC vs. BMCA Health Foundation

While the trademarks are not identical, they are quite similar:

• Both begin with the letters BMC
• The addition of an “A” in BMCA may be overlooked in quick reading or casual speech
• Both trademarks relate to the medical and healthcare professions
• Acronym-based marks are often considered weak, especially when each letter corresponds to a descriptive or generic word

The USPTO tends to weigh similar overall commercial impressions more heavily than side-by-side differences. So while “Best Medical Certifications” and “BMCA Health Foundation” may not look the same in print, the acronym “BMC” and “BMCA” could easily be confused in verbal communications, particularly in the context of continuing education, certification, or employment in the medical field.

2. Relatedness of the Services

This is often the deciding factor in Section 2(d) refusals.

In our hypothetical:

• BMC provides certification services for healthcare professionals — potentially including online education, assessments, and credentials recognized by employers.
• BMCA Health Foundation offers workforce training and placement in the medical industry.

While not identical, both businesses operate in the professional development and credentialing space within healthcare. Their audiences — medical professionals, hospitals, hiring institutions — significantly overlap.

From the USPTO’s perspective, the average consumer might reasonably believe the services are sponsored by, affiliated with, or offered by the same entity or related entities, especially if the services are offered under confusingly similar acronyms.

3. Channels of Trade and Consumers

If both BMC and BMCA promote their services to similar audiences — such as:

• Medical schools and training institutions
• Hospitals and healthcare employers
• Licensed professionals and jobseekers

— and use similar channels such as online platforms, conferences, or continuing education portals, the likelihood of confusion increases.

Even in cases where one mark targets certification and another targets workforce development, the perception of overlap is enough to cause concern under Section 2(d).

4. The Strength (or Weakness) of the Registered Mark

Interestingly, if BMCA’s trademark is itself descriptive, it may be considered weak. Weak marks are generally afforded a narrower scope of protection — and applicants like BMC can argue that minor differences are sufficient to avoid confusion.

However, if BMCA has used its trademark for decades and can show strong recognition or secondary meaning, the USPTO may view it as a strong mark within the healthcare space, making BMC’s application more vulnerable.

Moreover, even though both parties are relying on descriptive acronyms, the similarity in sight, sound, and field of use may still trigger a refusal unless BMC can clearly distinguish its brand identity and consumer base.

Does Acquired Distinctiveness Help BMC Avoid Refusal?

Not necessarily.

Acquired distinctiveness under Section 2(f) only helps the applicant overcome a descriptiveness refusal under Section 2(e)(1). It does not immunize a mark from a likelihood of confusion refusal under Section 2(d). The USPTO routinely refuses Section 2(f) applications if they conflict with existing registered trademarks.

However, showing acquired distinctiveness can help strengthen the applicant’s arguments against a likelihood of confusion refusal. For example:

• BMC can argue that its mark is now a well-established brand recognized by a distinct consumer base
• If there is no actual confusion, that fact can weigh in BMC’s favor
• BMC may show that the marks co-exist in the marketplace without issue (e.g., different regions, sectors, or audiences)

But even with these arguments, the USPTO often errs on the side of caution when registration might cause confusion — especially where both parties operate in overlapping medical or professional service fields.

Key Takeaways for Descriptive Mark Owners Facing a Prior Registration

• Claiming acquired distinctiveness does not avoid conflict with existing trademarks. The USPTO will still assess whether the average consumer is likely to confuse the source of the goods or services.
• Similarity of services and shared industry context often tip the scales in Section 2(d) analysis — even when trademarks are not identical.
• Acronyms are inherently tricky because small variations (like adding a single letter) may not be enough to avoid confusion.

Evidence of market recognition, co-existence, and brand distinctiveness may help — but the best approach is often pre-application clearance and strategic filing.

Priority and Acquired Distinctiveness: Who Was First?

In typical trademark law, the rule is first-in-time, first-in-right. But for descriptive marks like “Best Medical Certifications,” this priority rule is modified: priority goes to the first party to achieve secondary meaning, not merely the first to use the words descriptively.

This means that to have priority over BMCA, BMC must prove that its descriptive trademarks had acquired distinctiveness before BMCA’s constructive or actual use date.

As McCarthy explains:

“For all designations which are not inherently distinctive, the law requires that secondary meaning be proven. In determining priority… mere priority of use is not the test. It is the party who first achieved trademark significance in the mark through secondary meaning who is the senior user.”

In TTAB proceedings, however, the Board has held that applicants can rely on their constructive use date (i.e., the trademark application filing date) in priority disputes, meaning the applicant need only show secondary meaning by that date, not before a competitor’s actual use.

In litigation, the bar is higher. Courts generally require that the senior user show it had acquired distinctiveness before the junior user entered the market, especially in the same geographic area.

In our BMC scenario, if BMC can demonstrate that its marks had acquired secondary meaning nationwide well before BMCA applied for or used its trademarks, BMC may be able to establish priority — despite its later application.

How Does This Affect the Likelihood of Confusion?

Even if BMC proves that its marks — “Best Medical Certifications” and the acronym “BMC” — have acquired distinctiveness through decades of use, that does not end the inquiry. The USPTO will still evaluate whether the applied-for marks are confusingly similar to existing registered marks, particularly the prior registration for BMCA Health Foundation, under Section 2(d) of the Lanham Act.

Put differently: acquiring distinctiveness can get your mark over the Section 2(e) hurdle (mere descriptiveness), but not over the Section 2(d) hurdle (likelihood of confusion). These are separate grounds for refusal.

What Happens When Both Parties Claim Acquired Distinctiveness?

This is where the analysis becomes even more delicate.

When both the applicant (BMC) and the prior registrant (BMCA) have marks that are not inherently distinctive, but each claims to have acquired distinctiveness, the USPTO must weigh:

• Whether both marks have achieved secondary meaning — and if so, among which consumers and to what extent
• Whether the two marks have coexisted in commerce without confusion
• Whether one mark is significantly more entrenched in the relevant consumer base

According to McCarthy:

“When neither mark is inherently distinctive, priority lies with the party whose mark is the first to become distinctive through use in commerce.”

That principle carries into the Section 2(d) context: even if BMC has acquired distinctiveness, the USPTO will still prioritize the earlier-acquired trademark rights of BMCA — assuming BMCA’s mark had acquired secondary meaning before BMC filed its application or began use.

The strength of BMCA’s mark matters. If BMCA cannot prove that its mark has acquired significant source-identifying meaning (e.g., if it is obscure, geographically limited, or lacks evidence of public recognition), then BMC can argue that:

• The BMCA mark is weak and should not bar other similar descriptive trademarks
• Consumers can distinguish between the two based on context
• No actual confusion has occurred despite parallel operation

However, if BMCA is a widely known, well-recognized player in the same industry, then its mark may be deemed strong enough — despite its descriptive nature — to block BMC’s registration.

Practical Outcome for Applicants Like BMC

The USPTO is conservative in its approach to likelihood of confusion. In close cases, where:

• The services are overlapping or complementary
• The marks are visually and phonetically similar
• Both marks are descriptive and claim acquired distinctiveness

— the USPTO may still issue a refusal under Section 2(d), particularly if the registered trademark (BMCA) was established first and appears to serve a similar public.

In that situation, BMC may have several options:

• Submit evidence of peaceful co-existence and distinct consumer bases
• Request a concurrent use proceeding (rare, but sometimes used for regional players)
• Negotiate a consent agreement with the owner of BMCA

When Both Parties Claim Acquired Distinctiveness: Consent Agreements and Litigation Strategy

In scenarios like the BMC vs. BMCA hypothetical — where both parties use descriptive trademarks and each claims acquired distinctiveness under Section 2(f) — registration and enforcement become especially nuanced. Even if both marks have coexisted for years, federal registration may be blocked unless the parties take strategic steps to resolve the conflict.

1. Consent Agreements: A Practical Path to Coexistence

One of the most effective tools to overcome a Section 2(d) likelihood of confusion refusal is a consent agreement (also called a “coexistence agreement”). This is a negotiated agreement between the applicant and the registrant stating that both parties believe confusion is unlikely and agree to coexist under certain terms.

The USPTO gives substantial deference to such agreements — particularly when:

• The parties are knowledgeable industry players
• The agreement lays out clear distinctions in use, branding, or channels
• There’s no history of actual confusion

The agreement contains protective measures, such as disclaimers, geographic limits, or visual branding differences

In our BMC/BMCA scenario, if the two organizations serve overlapping but distinguishable roles in the healthcare ecosystem — for example, certification vs. workforce development — a well-drafted consent agreement could convince the USPTO that the marks can coexist in the market without confusion.

Best practices for drafting a strong consent agreement:

• Acknowledge the similarity of the marks but deny any actual confusion
• Outline differences in target audience, service scope, or branding
• Include steps each party will take to avoid confusion (e.g., full name usage, disclaimers, domain names)
• Affirm that the parties have coexisted without confusion to date
• Confirm that each party waives opposition to the other’s registration

While not a guarantee, a thoughtfully structured consent agreement can help secure registration — especially where both parties are sophisticated and operating in good faith.

2. Litigation Strategy When Both Marks Require 2(f) Protection

If the conflict escalates to a trademark opposition or infringement litigation, and both sides are asserting rights in descriptive marks based on acquired distinctiveness, the legal strategy becomes evidence-heavy.

The central questions the court or TTAB will evaluate include:

• Which party first acquired secondary meaning? Courts generally apply a “first to acquire distinctiveness” rule — not merely “first to use.” In other words, the plaintiff must prove that its mark had acquired distinctiveness before the defendant’s first use (or constructive use date if registration is involved).
• Has either mark become sufficiently distinctive to warrant broad protection? A party asserting rights in a descriptive term must show that consumers associate the mark with a single source, often through surveys, declarations, media coverage, and sales volume. The more descriptive the mark, the higher the evidentiary burden
• Can both parties operate without a likelihood of confusion? Courts will look at the overall market context — whether both parties serve the same audience, operate in the same channels, or have differentiated their branding and messaging. If confusion seems unlikely in practice, the court may allow coexistence.
• Has there been any actual confusion? Evidence of actual confusion (or lack thereof) during long-term concurrent use can strongly influence the outcome, especially where both parties rely on Section 2(f) and neither mark is inherently strong.

In TTAB opposition proceedings, each side must also consider how much weight the Board will give to constructive use dates, common law rights, and the nature of the services. Unlike federal courts, the TTAB does not have jurisdiction over claims like infringement or damages — but it does determine whether an application can proceed to registration.

Final Thoughts: Strategic Guidance Is Essential

Trademark conflicts involving descriptive marks are rarely clear-cut. When both parties rely on acquired distinctiveness, the case turns not just on who used the mark first, but who used it in a way that caused the public to associate it with a single source.

For startups, nonprofits, and professional organizations — especially in highly regulated fields like healthcare, education, or finance — resolving these disputes often requires:

• A thoughtful pre-application clearance strategy
• Clear evidence of brand recognition and market presence
• A willingness to negotiate coexistence terms
• Litigation counsel who understands the evidentiary demands of 2(f) proceedings

Our trademark attorneys routinely assist clients in navigating Section 2(f) applications, overcoming trademark refusals, and negotiating consent agreements that allow their brands to grow without costly trademark disputes. If you’re unsure about your trademark rights or facing opposition from another trademark registrant, we can help you assess your options and chart a path forward.  Contact our law firm today.  We make every effort to respond to all inquiries within one business day.