Distinctiveness Toolkit: Secondary Meaning Declarations, Genericness Surveys, and Brand Usage Guidelines

Summary. This toolkit collects the working documents for proving acquired distinctiveness and for pursuing or resisting a genericness challenge, each introduced by its purpose, its owner, and when to use it, and each followed by drafting commentary tied to the governing rules and cases. The prosecution and evidence templates include a client evidence request, an exclusivity audit for the five-year statement, a bank of Section 2(f) claim language for each route under 37 C.F.R. § 2.41, an office action response outline, a corporate secondary meaning declaration, and a purchaser declaration kit. The survey templates include an expert engagement letter, specifications for Teflon, Thermos, and secondary meaning surveys, and an audit chart for testing the other side's survey. The brand protection templates include usage guidelines built around a generic descriptor, a usage and cooperation clause for licenses and partner agreements, a policing log, and correction letters to publishers, dictionaries, competitors, and platforms. It closes with the challenger's tools, a genericness evidence chart with targeted discovery requests and an outline for a cancellation counterclaim or petition, followed by common drafting mistakes and related resources.

The best distinctiveness evidence is created years before anyone needs it: a usage rule that stopped the marketing team from launching a "Tallyo it!" campaign, a customer statement taken while the customer still remembered the first ad, a survey fielded before the knockoffs arrived. The worst evidence is created the week before a deadline: twenty identical declarations and a spreadsheet of advertising totals. This toolkit is for doing the first kind of work, and for taking apart the second kind when it belongs to the other side.

How to use this toolkit

Every template below opens with three labels: its purpose, its owner (the person who should prepare it), and when to use it. The form follows, and a short drafting commentary closes each entry. Fill in the bracketed text in capitals. Where an example helps, the templates use the two hypothetical companies from the companion article: Juniper Labs, whose TALLYO expense-splitting app is drifting toward verb use, and Holloway & Finch, a furniture workshop seeking Section 2(f) registration for the frame of its ARDEN lounge chair.

The doctrine is explained in Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends. The sequence of steps is in Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide, and the item-by-item evidence list is the Acquired Distinctiveness and Genericness Evidence Checklist: A Practical Checklist. Every template should be checked against the current Trademark Rules, the current TMEP, and the forum's practices before use.

Template 1: Evidence request memo to the client

Purpose: collect distinctiveness evidence in the form tribunals accept, before anyone summarizes it. Owner: outside or in-house counsel sends it; marketing, finance, sales, and customer support answer it. When to use: on receipt of a § 2(e)(1) refusal, before filing a 2(f) claim, on service of an opposition or cancellation petition, and before filing suit on an unregistered descriptive mark or trade dress.

PRIVILEGED AND CONFIDENTIAL: ATTORNEY-CLIENT COMMUNICATION

TO:    [MARKETING LEAD], [FINANCE LEAD], [SALES LEAD], [SUPPORT LEAD]
FROM:  [COUNSEL]
RE:    [MARK] for [GOODS/SERVICES AS IDENTIFIED]: evidence of distinctiveness
       Please preserve now and collect by [DATE]

We are assembling evidence that customers understand [MARK] as our brand,
not as a description or the name of the product. Please collect the items
below for [START DATE] to the present. Do not delete, edit, or "clean up"
any material that uses [MARK] while this request is open.

A. USE HISTORY
 1. Date and form of first use for each product line and territory, with
    the earliest dated packaging, labels, web pages, and invoices.
 2. Every version of the logo, packaging, or product design showing [MARK],
    with the dates each was in use.
 3. Any period when [MARK] was not used, or was used only with another name.
B. EXCLUSIVITY
 4. Any other business, product, domain, or social account using [MARK] or
    something similar, and what we did about it.
 5. All licenses and distributor, reseller, co-branding, marketplace, and
    API or partner terms that allow others to use [MARK].
C. ADVERTISING
 6. Annual spend by campaign and medium. Separate campaigns that feature
    [MARK] or the claimed design prominently from house-brand campaigns.
 7. Two to five dated samples of each campaign, especially any telling
    customers to "look for" [MARK] or the claimed feature.
 8. Reach data: impressions, circulation, ratings, visits, engagement.
D. SALES
 9. Units and revenue under [MARK] by year, region, and channel.
10. Market share or rank reports, customer counts, repeat-purchase data.
E. MEDIA AND RECOGNITION
11. Unsolicited articles, reviews, awards, and social posts mentioning
    [MARK], with dates. Flag anything we paid for or placed.
12. Brand-tracking, awareness, or other consumer research mentioning [MARK].
F. COPYING AND CONFUSION
13. Knockoffs, "[MARK]-style" listings, lookalike packaging, misdirected
    orders, and customer inquiries that mix us up with someone else.
G. USAGE
14. Our style guides and brand guidelines (all versions), and any material,
    internal or external, using [MARK] as a noun, verb, plural, possessive,
    or description. Send these as they are.
15. Letters asking others to correct their use of [MARK], with responses.

Send native files with metadata where possible. Please do not prepare new
summaries or commentary on these subjects unless counsel asks for them.

Drafting commentary. The categories track the six factors in Converse, Inc. v. International Trade Commission, 909 F.3d 1110 (Fed. Cir. 2018) and the kinds of proof listed in 37 C.F.R. § 2.41(a)(3): duration, extent, and nature of use, advertising expenditures "identifying types of media and attaching typical advertisements," and statements from the trade or public. Frame the request around the goods as identified in the application or registration, because that identification defines the genus and the relevant public (Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638 (Fed. Cir. 1991)). Item 14 is deliberately uncomfortable: the owner's own generic usage is the challenger's best evidence (In re Gould Paper Corp., 834 F.2d 1017 (Fed. Cir. 1987)), and archived versions will surface whether or not the current website is fixed. The instruction against new commentary keeps the record from filling with unprivileged business documents that characterize the mark. Pair the memo with a formal hold; see Litigation Hold and Evidence Preservation Checklist: A Practical Checklist.

Template 2: Exclusivity audit for the five-year statement

Purpose: document the factual basis for a statement of "substantially exclusive and continuous use" before anyone signs it. Owner: a paralegal or associate under the supervising attorney; reviewed by the person who will sign the verified statement. When to use: before every 2(f) claim based on five years of use, including claims in part, and before relying on the same statement in later filings.

EXCLUSIVITY AUDIT: [MARK] for [GOODS/SERVICES]
Prepared by: [NAME]          Date: [DATE]
Statement period: [DATE FIVE YEARS BEFORE CLAIM] to [DATE OF CLAIM]

1. OWNER'S USE
   First use in commerce: [DATE]        Evidence: [EXHIBIT]
   Continuous through the period?  Y / N   Gaps and explanation:
   Form of mark used (attach one dated specimen per year):
   Used as a mark (prominent, TM symbol, not descriptive)?  Y / N   Notes:

2. SEARCHES RUN (attach reports)
   [ ] USPTO register, live and dead   [ ] State registers
   [ ] Business-name records: [STATES] [ ] Domain names
   [ ] Marketplaces: [LIST]            [ ] App stores    [ ] Social handles
   [ ] Trade press and directories     [ ] General web search
   [ ] Full common-law search report from [VENDOR]

3. THIRD-PARTY USES FOUND
   | User | Matter | Goods | Geography | Since | Extent and promotion |
   | Status: ceased / licensed / challenged / tolerated | Evidence |

4. ASSESSMENT
   Third-party uses inconsequential or substantial?  Basis:
   Licensee and related-company use controlled by owner?  Y / N
   Matter so descriptive that five years will not suffice?  Y / N
   Recommendation:
   [ ] Five-year statement alone
   [ ] Five-year statement plus actual evidence
   [ ] Actual evidence only
   [ ] Do not claim 2(f) yet

5. SIGN-OFF
   Reviewed by the signer of the verified statement:
   [NAME, TITLE]   Date:

Drafting commentary. The five-year showing is accepted only "in appropriate cases," and "further evidence may be required" (37 C.F.R. § 2.41(a)(2)); the TMEP treats it as usually insufficient for highly descriptive matter, product designs, and colors (TMEP § 1212.05(a)), and the Federal Circuit upheld the Office's refusal to accept it for a highly descriptive phrase in In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332 (Fed. Cir. 2015). The statement is verified under 37 C.F.R. § 2.20, whose language warns of liability under 18 U.S.C. § 1001, and it must be signed by a person with authority to bind the owner, a person with firsthand knowledge and authority to act, or an attorney with a power of attorney (37 C.F.R. § 2.193(e)(1)). The audit exists because of cases like Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC, 745 F.3d 877 (8th Cir. 2014), where no one could say whether exclusivity had ever been checked, the district court cancelled the registrations, and the owner prevailed on appeal only because the challenger's evidence (registrations and business names with no proof of actual use, plus testimony that nobody remembered an investigation) could not overcome the registration's presumption. Use by licensees counts for the owner only if the owner controls quality (15 U.S.C. § 1055). If the signer relies on the audit, assume its facts will be discoverable later.

Template 3: Section 2(f) claim language bank

Purpose: choose and word the acquired distinctiveness claim for the route actually available. Owner: the prosecuting attorney. When to use: in the application, in a response to a § 2(e)(1) refusal, or in an amendment after an allegation of use.

A. FIVE YEARS OF USE (37 C.F.R. § 2.41(a)(2))
   "The mark has become distinctive of the goods/services through the
   applicant's substantially exclusive and continuous use of the mark in
   commerce that the U.S. Congress may lawfully regulate for at least the
   five years immediately before the date of this statement."

B. PRIOR REGISTRATION (37 C.F.R. § 2.41(a)(1))
   "The mark has become distinctive of the goods/services, as evidenced by
   the ownership on the Principal Register for the same mark for
   sufficiently similar goods/services of active U.S. Registration
   No(s). [NUMBER(S)]."

C. ACTUAL EVIDENCE (37 C.F.R. § 2.41(a)(3))
   "The mark has become distinctive of the goods/services, as shown by the
   declaration of [NAME] and Exhibits [A] through [__] submitted herewith,
   which establish the duration, extent, and nature of the applicant's use
   of the mark, its advertising directed to the mark, and recognition of
   the mark by the trade and the public."

D. CLAIM IN PART (TMEP § 1212.02(f))
   "The wording [DESCRIPTIVE ELEMENT] has become distinctive of the
   goods/services through the applicant's substantially exclusive and
   continuous use of [DESCRIPTIVE ELEMENT] in commerce that the U.S.
   Congress may lawfully regulate for at least the five years immediately
   before the date of this statement."
   [Add actual evidence aimed at [DESCRIPTIVE ELEMENT] if it is more than
   mildly descriptive.]

E. CLAIM IN THE ALTERNATIVE (TMEP § 1212.02(c))
   "Applicant maintains that the mark is inherently distinctive and
   requests that the refusal under Section 2(e)(1) be withdrawn. In the
   alternative, and only if the refusal is maintained, applicant claims
   that the mark has acquired distinctiveness under Section 2(f), as shown
   by [A, B, or C above]."

F. COMBINATIONS
   A + C, or B + C. Lead with the strongest route and add actual evidence
   whenever the matter is more than mildly descriptive.

Drafting commentary. Forms A and B follow the USPTO's standard statements; confirm the current TEAS wording before filing, because the Office prefers its own text. A 2(f) claim made without reservation concedes that the matter is not inherently distinctive (TMEP § 1212.02(b)), which is why form E exists. A claim in part keeps the rest of a composite outside the concession, and the evidence for it must be aimed at the claimed element alone (Louisiana Fish Fry). Form B works only if the new mark is the legal equivalent of the registered one (In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001)). No form can cure a genericness refusal, because a 2(f) claim for generic matter is legally insufficient (TMEP § 1212.02(i)). Whatever is filed becomes part of the registration file, which is automatically of record in any later cancellation (Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352 (Fed. Cir. 2009)). An intent-to-use applicant ordinarily waits until it alleges use, subject to the narrow transfer exception in TMEP § 1212.09(a).

Template 4: Office action response outline for a § 2(e)(1) refusal

Purpose: organize a response that argues inherent distinctiveness first and acquired distinctiveness in the alternative, with a complete evidentiary record. Owner: the prosecuting attorney. When to use: on any refusal under 15 U.S.C. § 1052(e)(1), and on a descriptiveness refusal that carries a genericness advisory.

RESPONSE TO OFFICE ACTION
Serial No. [  ]    Mark: [  ]    Response due: [DATE]
(three months from issue; one three-month extension available for a fee)

I.   Introduction and action requested
II.  The goods as identified, and their purchasers
III. The mark is not merely descriptive
     A. The mark as a whole, not its parts, is the subject of the inquiry
     B. Reaching a conclusion about the goods requires imagination
     C. The examining attorney's evidence addresses components or
        different goods
     D. Competitors do not need the term to describe their goods
IV.  The term is not generic (only if raised)
     A. The genus is [ ]; the term does not name it or a key aspect of it
     B. The relevant public does not use the term as a category name
V.   In the alternative: acquired distinctiveness under Section 2(f)
     A. Degree of descriptiveness, addressed expressly
     B. Length, exclusivity, and manner of use (Decl. paras. __)
     C. Advertising directed at the mark (Exs. __)
     D. Sales and customers, in context (Exs. __)
     E. Unsolicited media and recognition (Exs. __)
     F. Copying and confusion, if any (Exs. __)
     G. Surveys and purchaser declarations, if any (Exs. __)
VI.  In the further alternative: amendment to the Supplemental Register
     (only if appropriate; see commentary)
VII. Conclusion

EVIDENCE INDEX: exhibit, description, source, URL, and access date

Drafting commentary. The response period and extension are in 37 C.F.R. § 2.62(a). Put everything in the record now: the record should be complete before a notice of appeal, and new evidence afterward requires a request for remand (37 C.F.R. § 2.142(d)). Section V.A answers Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018), which requires an express finding on the degree of descriptiveness, and the rule that the burden grows with descriptiveness (In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005)). In reversing a genericness refusal, the Federal Circuit told the Board to weigh the evidence of public understanding against the degree of descriptiveness and to resolve reasonable doubt in the applicant's favor, on the theory that anyone harmed can still oppose (In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987)). A Supplemental Register request must be an express amendment, not a reservation (TMEP § 816.04); it requires lawful use in commerce under 15 U.S.C. § 1091, and an intent-to-use applicant must first file an acceptable allegation of use, which resets the effective filing date (37 C.F.R. § 2.75(b)). For the full response workflow, see Responding to a Trademark Office Action Checklist: A Practical Checklist.

Template 5: Corporate secondary meaning declaration

Purpose: put the owner's circumstantial evidence of acquired distinctiveness into the record through a witness who can authenticate it. Owner: counsel drafts from the Template 1 materials; the declarant, usually a senior marketing or brand executive, reviews every sentence and exhibit. When to use: with a 2(f) claim or office action response, as Board testimony, or in support of or opposition to summary judgment.

[CAPTION: Application Serial No. __ / TTAB Proceeding No. __ / U.S. District Court]

DECLARATION OF [NAME] IN SUPPORT OF [ACQUIRED DISTINCTIVENESS / SECONDARY MEANING]

I, [NAME], declare:

1. ROLE AND KNOWLEDGE. I am [TITLE] of [COMPANY] and have held this role
   since [YEAR], with responsibility for [BRAND, MARKETING, SALES]. I make
   this declaration from personal knowledge and from [COMPANY]'s business
   records, which are made at or near the time of the events they record,
   by or from information supplied by people with knowledge, and kept in
   the ordinary course of [COMPANY]'s regularly conducted business.
   [Identify any fact learned from another person and its source.]

2. THE CLAIMED MATTER. [COMPANY] uses [MARK, or the product design
   consisting of the following elements: (a) ... (b) ... (c) ...] (the
   "Claimed Matter") for [GOODS/SERVICES AS IDENTIFIED]. Exhibit 1 shows the
   Claimed Matter as it has appeared in each year since [YEAR].

3. LENGTH, CONTINUITY, AND EXCLUSIVITY. [COMPANY] first used the Claimed
   Matter in commerce on [DATE] and has used it continuously since then.
   [Describe any changes.] [Describe the exclusivity investigation and its
   results, Exhibit 2, and any third-party uses and their resolution.]

4. MANNER OF USE. The Claimed Matter appears [as the product name on
   packaging, product pages, and app store listings / with the TM or
   (R) symbol / prominently and apart from other text]. [COMPANY] does not
   use it to describe its goods. Exhibit 3.

5. ADVERTISING DIRECTED TO THE CLAIMED MATTER. From [YEAR] to [YEAR],
   [COMPANY] spent about $[  ] on advertising that prominently featured the
   Claimed Matter, through [MEDIA]. [Describe each campaign that called
   attention to the Claimed Matter, e.g., "Follow the Arden line" (2023 to
   present), with reach.] Exhibit 4 contains typical advertisements from
   each year, with placement and reach data.

6. SALES AND CUSTOMERS. Sales of goods bearing the Claimed Matter were
   [UNITS AND REVENUE BY YEAR] (Exhibit 5, a summary of records that have
   been produced or are available for inspection). [Market share, rank,
   number of customers, repeat purchase rates.]

7. UNSOLICITED MEDIA. Independent publications have referred to the
   Claimed Matter as [COMPANY]'s, including [EXAMPLES]. Exhibit 6, with
   dates and circulation. [COMPANY] did not pay for or place these items
   [except as noted].

8. COPYING. [Describe knockoffs and "-style" listings, with dates and any
   evidence of deliberate copying.] Exhibit 7.

9. POLICING. [Letters sent, responses, outcomes.] Exhibit 8.

10. SURVEYS. [Identify any survey; the survey expert's declaration is
    submitted separately.]

[USPTO OR TTAB ATTESTATION, 37 C.F.R. § 2.20:]
The signatory being warned that willful false statements and the like are
punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that
such willful false statements and the like may jeopardize the validity of
the application or submission or any registration resulting therefrom,
declares that all statements made of his/her own knowledge are true and all
statements made on information and belief are believed to be true.

[FEDERAL COURT ATTESTATION, 28 U.S.C. § 1746:]
I declare under penalty of perjury that the foregoing is true and correct.
Executed on [DATE].

[SIGNATURE]   [PRINTED NAME AND TITLE]

Drafting commentary. Organize the declaration by the Converse factors and aim every paragraph at the Claimed Matter; spending and sales for a composite or a house mark prove little about a descriptive element (Louisiana Fish Fry). Advertising counts when it directs the consumer to the claimed features (Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25 (1st Cir. 2001)), and McCarthy puts the trade dress version bluntly: advertising that merely pictures the dress and does nothing to call attention to it usually proves little (1 McCarthy on Trademarks and Unfair Competition § 8:8). Paragraph 1 lays the business-records foundation of Fed. R. Evid. 803(6) and supports authentication under Fed. R. Evid. 901; paragraph 6 supports a summary under Fed. R. Evid. 1006. Pick a declarant who can be cross-examined on every exhibit, because Board testimony declarations are subject to oral cross-examination (37 C.F.R. § 2.123(a)(1)) and the Federal Circuit vacated a Board finding of acquired distinctiveness that rested on catalogs from years before the sponsoring witness joined the company, which she could neither authenticate as business records nor describe from personal knowledge (Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012)). For a product design, remove any sentence touting what the feature does; Holloway & Finch's catalog line that the ARDEN curve "cradles the lower back" belongs in a functionality brief, not a 2(f) declaration.

Template 6: Purchaser and trade declaration kit

Purpose: collect direct evidence of consumer understanding from independent purchasers, in their own words. Owner: counsel or a paralegal conducts interviews; each declarant writes or edits his or her own statement. When to use: to supplement a 2(f) showing, to rebut a genericness refusal, or as trial testimony in a contested proceeding.

PART A: INDEPENDENCE SCREEN (counsel's file)
  Declarant, city, state:                  How recruited:
  Customer since:                          Channel (store, online, dealer):
  Employment, ownership, family, or financial tie to [COMPANY]?  Y / N
  Compensation (none, or out-of-pocket expenses only):
  Statement drafted by: declarant / counsel from interview notes,
  then edited and approved by the declarant

PART B: INTERVIEW GUIDE (open questions; record answers verbatim)
  1. What products of this kind do you buy, and how often?
  2. When you see [MARK, or an unbranded photo of the CLAIMED DESIGN],
     what comes to mind?
  3. Does that come from one company or more than one? Which, if you know?
  4. What would you call this kind of product if you asked for it in a
     store or searched for it online?
  5. Where have you seen [MARK / DESIGN]? When did you first notice it?
  6. What other companies sell this kind of product, if you know?

PART C: DECLARATION
  I, [NAME], declare:
  1. I live in [CITY, STATE] and work as [OCCUPATION]. I have bought
     [TYPE OF GOODS] for about [  ] years, most recently [WHEN, WHERE].
  2. I am not employed by, related to, or paid by [COMPANY]. [COMPANY's
     counsel asked whether I would give this statement.]
  3. [In the declarant's own words: how he or she encountered the mark or
     design, what it signifies, and why.]
  4. When I look for this kind of product, I call it [DECLARANT'S OWN
     GENERIC NAME].
  [Attestation for the forum: 37 C.F.R. § 2.20 or 28 U.S.C. § 1746]

Drafting commentary. Form declarations fail. In In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009), sixty-four identical statements that HOTELS.COM was not a generic name got no weight because they explained nothing, and TMEP § 1212.06(c) describes the same skepticism. Independence matters as much as wording: statements from employees, people with personal ties to the owner, or interested parties are routinely discounted (Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143 (9th Cir. 1999); Japan Telecom, Inc. v. Japan Telecom America Inc., 287 F.3d 866 (9th Cir. 2002)), and testimony from one source was insufficient in Art Attacks Ink, LLC v. MGA Entertainment Inc., 581 F.3d 1138 (9th Cir. 2009). Question 4 cuts both ways by design. A declarant who names the product category with a generic term ("expense-splitting app") helps the owner on genericness; a declarant who can only call the product "a tallyo" has told counsel something important about the risk before a challenger finds out. Pay no more than out-of-pocket expenses, and keep the screen in the file so the independence answers are ready for cross-examination. Use trade declarations (retailers, distributors) only where the trade is part of the purchasing public, and say so in the statement; the Trademark Rules contemplate "letters or statements from the trade or public," but the question is still what purchasers think (37 C.F.R. § 2.41(a)(3)).

Template 7: Survey expert engagement letter

Purpose: retain a survey expert on terms that protect independence, privilege, and the record. Owner: litigation or prosecution counsel. When to use: before any survey design work begins, whether the expert will consult or testify.

[COUNSEL LETTERHEAD]
PRIVILEGED AND CONFIDENTIAL
ATTORNEY WORK PRODUCT PREPARED IN ANTICIPATION OF LITIGATION

[DATE]
[EXPERT NAME AND FIRM]

Re: [MATTER]; engagement as a [consulting / testifying] survey expert

1. ENGAGEMENT. [LAW FIRM] retains you on behalf of [CLIENT] to advise on
   and, if requested, design and conduct a survey addressing [the primary
   significance of TERM to purchasers of GOODS / whether purchasers
   associate the CLAIMED MATTER with a single source, as of RELEVANT DATE].
2. INDEPENDENCE. You will choose the universe, screener, stimuli,
   questions, controls, sampling, coding, and analysis in your professional
   judgment. Counsel will not draft or edit the questionnaire. You may
   decline to proceed if you conclude a reliable survey cannot be designed.
3. INFORMATION FROM COUNSEL. We will provide [the identification of goods,
   the relevant date, marketplace materials, the other side's survey].
   Keep a list of everything you receive and from whom.
4. PILOT. Pilot the instrument and report the pilot results to counsel
   before full fielding.
5. PRESERVATION. Preserve questionnaires, screen captures, programming,
   raw data, terminations, verbatim responses, codebooks, coder notes, and
   validation records.
6. DISCLOSURE. If designated to testify, your report must satisfy
   Fed. R. Civ. P. 26(a)(2)(B) [or the Board's schedule under
   37 C.F.R. § 2.120(a)(2)(iii)]. Drafts and most communications with
   counsel are protected, except those about compensation, facts or data
   counsel provides that you consider, and assumptions counsel provides
   that you rely on.
7. CONTACTS. Route contacts with [CLIENT] personnel through counsel.
8. COMPENSATION. [RATES]. Payment does not depend on the results or the
   outcome of the matter.
9. CONFLICTS. Confirm that you have no engagement adverse to [CLIENT] or
   for [ADVERSE PARTY] in the last [  ] years.

Drafting commentary. Paragraph 2 is the one that matters most. The Ninth Circuit approved excluding two surveys that the plaintiff's own lawyer designed and ran, citing the Reference Manual on Scientific Evidence for the point that valid survey design typically requires graduate training or professional experience in survey research (Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017)); Shari Seidman Diamond's Reference Guide on Survey Research in that Manual (3d ed. 2011) is the standard the other side's rebuttal expert will apply. Paragraph 6 tracks Fed. R. Civ. P. 26(b)(4), which protects drafts and most attorney-expert communications but not compensation, facts or data the expert considered, or assumptions the expert relied on; at the Board, expert disclosure follows Rule 26(a)(2) unless the Board orders otherwise, and a late-retained expert requires a motion for leave (37 C.F.R. § 2.120(a)(2)(iii)). Admissibility runs through Fed. R. Evid. 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). A consulting engagement keeps the pilot and early work protected if the expert is never designated; deciding late to convert a consultant into a testifier exposes the overlapping work. For the expert's deposition, see Taking and Defending an Expert Deposition: A Practical Guide and the Expert Witness Toolkit.

Template 8: Teflon genericness survey specification

Purpose: a written specification that tells the survey expert what question the client needs answered, leaving the design to the expert. Owner: counsel prepares the question, the identification of goods, and the relevant public; the expert writes the instrument. When to use: when a word mark faces a genericness refusal, opposition, cancellation petition, or defense, and as a periodic baseline for brands at risk of genericide.

TEFLON-FORMAT SURVEY: SPECIFICATION FOR [TERM]

QUESTION    Is the primary significance of [TERM] to [RELEVANT PUBLIC] a
            brand name or a common name for [GENUS AS IDENTIFIED]?
UNIVERSE    [e.g., adults 18+ in the U.S. who in the past 12 months used,
            or in the next 12 months expect to use, an app to split or
            track shared expenses]
SCREENER    Category use and intent; exclude respondents (and households)
            working in market research, advertising, or [INDUSTRY];
            attention and quality checks
MODE        Online panel; double-blind (respondents and vendor not told
            the sponsor or purpose)
TUTORIAL    Define "brand name" (a name one company uses for its product)
            and "common name" (a name any company may use for that type of
            product), with examples from an unrelated category
QUIZ        Two or three practice items; respondents who fail are excluded
            under a rule written before fielding; report the failure rate
TEST LIST   [TERM], plus [3 to 5] known brands and [3 to 5] known common
            names from the same category, chosen to resemble [TERM] in form
            (coined words, compounds, or .com terms as appropriate),
            presented in rotated order
ANSWERS     "Brand name" / "Common name" / "Don't know or not sure"
OUTPUT      Brand, common, and don't-know shares for every term; results
            for controls; margins of error; subgroups specified in advance
RECORDS     Questionnaire, screen captures, programming, raw data,
            terminations, verbatims, validation

Drafting commentary. The format takes its name from E.I. DuPont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975). In Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017), a little over 93 percent of respondents classified GOOGLE as a brand, with Coke, Jello, Amazon, and Yahoo! as brand controls and refrigerator, margarine, browser, and website as common-name controls; the Ninth Circuit valued the survey because it offered comparative evidence of primary significance regardless of grammatical function. The controls are the instrument's credibility: respondents who call "refrigerator" a brand are noise, and controls that look nothing like the test term invite the objection that the test term stood out. The critique to anticipate is Justice Breyer's dissent in USPTO v. Booking.com B.V., 591 U.S. 549 (2020): a respondent may know a term is "a brand" and still use it as the only name for the product, so the majority's acknowledgment that surveys must be designed with care is an invitation to scrutinize the tutorial and controls. The Board gave a HOTELS.COM Teflon survey little weight because its design skewed results toward brand answers for a domain-name term (In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009)), and in the PRETZEL CRISPS proceeding it questioned whether the format fits ordinary words at all (Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opp. No. 91195552 (T.T.A.B. Sept. 6, 2017)). Brand percentages in the sixties and above are strong evidence for the owner; a figure near half is contestable.

Template 9: Thermos survey specification

Purpose: measure what the relevant public calls the product, and whether the disputed term is used as that name. Owner: counsel for the challenger frames the question; the expert designs. When to use: when challenging a coined or arbitrary mark as having become generic, or when an owner wants to know its worst case.

THERMOS-FORMAT SURVEY: SPECIFICATION FOR [TERM]

QUESTION    What do [RELEVANT PUBLIC] call [PRODUCT], and do they use
            [TERM] as the name of the product or as the name of a brand?
UNIVERSE    As in Template 8
DESCRIPTION A neutral description with no brand names, e.g., "an app on
            your phone that keeps track of what each person in a group
            owes and lets everyone settle up"
Q1  If you were asking a friend to recommend one of these, what would you
    call it? [open-ended]
Q2  What other names, if any, do you know for this kind of product?
    [open-ended]
Q3  What companies or brands, if any, make this kind of product?
    [open-ended]
Q4  For each name given in Q1: is [NAME] the name of the type of product,
    the name of a brand, or both? Or don't you know?
CONTROL     The same questions for a product category whose leading brand
            is not generic, to measure how often respondents volunteer a
            dominant brand as a product name
CODING      Two coders blind to the sponsor; codebook written before
            fielding; disagreements resolved by a third coder; agreement
            rate reported
OUTPUT      Share volunteering [TERM] in Q1; share calling [TERM] the name
            of the type of product in Q4; comparison with the control

Drafting commentary. The format comes from the district court decision in the thermos litigation, where roughly three-quarters of respondents said they would ask for a "thermos" (American Thermos Products Co. v. Aladdin Industries, Inc., 207 F. Supp. 9 (D. Conn. 1962), aff'd, King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963)). Its known weakness is that a dominant brand gets volunteered by people who know perfectly well it is a brand, which is why Q4 and the control exist. Ask for the name of the product, not for a verb: in Elliott, the challenger's Thermos survey asked how respondents would tell a friend to search the internet, more than half answered with "google" as a verb, and the Ninth Circuit held that verb use alone did not show the word had become the generic name for search engines. Universe errors are fatal here too; the Seventh Circuit called a survey of 13- to 18-year-old girls "worthless" because they were an arbitrary subset of the consumers of beanbag stuffed animals (Ty Inc. v. Softbelly's, Inc., 353 F.3d 528 (7th Cir. 2003)). For a term the owner did not coin, consider whether any survey is needed: courts have treated survey evidence as beside the point when the term already named a class of goods (Hunt Masters, Inc. v. Landry's Seafood Restaurant, Inc., 240 F.3d 251 (4th Cir. 2001)).

Template 10: Secondary meaning survey specification

Purpose: measure whether the relevant public associates a descriptive term, product design, packaging, or color with a single source. Owner: counsel frames the question and the relevant date; the expert designs. When to use: for highly descriptive terms, every product design and color claim, and any litigation over an unregistered descriptive mark or trade dress.

SECONDARY MEANING SURVEY: SPECIFICATION FOR [CLAIMED MATTER]

QUESTION    As of [RELEVANT DATE], do [RELEVANT PUBLIC] associate
            [CLAIMED MATTER] with one company, whether or not they can
            name it?
UNIVERSE    [e.g., U.S. adults who in the past 24 months bought, or in
            the next 12 months intend to buy, a lounge chair priced above
            $1,000]
DESIGN      Test and control cells; each respondent sees one stimulus;
            double-blind
TEST        [CLAIMED MATTER] with names, logos, labels, and other branding
            removed (e.g., studio photographs of the ARDEN frame from three
            angles)
CONTROL     The same product with the claimed feature removed or altered,
            matched in quality, finish, and photography (e.g., the same
            chair with straight rear legs and separate armrests)
Q1  Do you associate the [product] shown with one company, with more than
    one company, or with no company? Or don't you know?
Q2  (If one company) What makes you say that? [open-ended]
Q3  (If one company) Which company is that, if you know? [open-ended;
    "don't know" is an acceptable answer]
CODING      Count "one company" answers only where Q2 points to the claimed
            feature, under rules written before fielding
OUTPUT      Net association = test-cell "one company" share minus
            control-cell share; margins of error; verbatims
TIMING      Field as close to the relevant date as possible; document events
            between that date and fielding that could have changed
            perception

Drafting commentary. Q3 accepts "don't know" because association with a single source is enough even if that source is anonymous (Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192 (Fed. Cir. 1994)). The control does the work that bare percentages cannot: a survey that biased respondents and did not control for guessing earned little weight in First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987). Do not substitute a confusion survey; a Squirt-style lineup that primed respondents was held not probative of secondary meaning in Parks LLC v. Tyson Foods, Inc., 863 F.3d 220 (3d Cir. 2017), although an Eveready-style design, named for Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366 (7th Cir. 1976), is sometimes offered for both issues. Timing matters: in litigation the relevant date is each infringer's first use, and surveys conducted within five years of that date may provide evidence of secondary meaning (Converse, Inc. v. International Trade Commission, 909 F.3d 1110 (Fed. Cir. 2018)). Read results against the cases: figures in the thirties are marginal but probative (Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998)); 23 and 28 percent helped only alongside strong circumstantial proof (Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)); about ten percent cut against the claim (Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965 (Fed. Cir. 2018)). Holloway & Finch's specification above is built for a 2(f) application and a lawsuit at once, which is why the relevant date line names the importer's first sale. See 6 McCarthy on Trademarks and Unfair Competition ch. 32 on survey design.

Template 11: Survey audit chart

Purpose: a structured way to test a survey, yours before you serve it or theirs when it arrives. Owner: counsel with the rebuttal or consulting expert. When to use: within days of receiving an expert report, and before designating your own expert's report.

Drafting commentary. Most survey flaws go to weight, but a fundamental defect (wrong universe, no control, wrong question) can support exclusion under Fed. R. Evid. 702, which since 2023 requires the proponent to show by a preponderance that the opinion reflects a reliable application of reliable methods; the expert may rely on survey data of a kind experts reasonably rely on (Fed. R. Evid. 703). Decide early whether the flaws support a motion or only cross-examination, because a failed Daubert motion educates the other side's expert. For admissibility strategy, see Daubert Challenges to Consumer Survey Experts in Trademark Litigation: A Practical Guide; for design standards, Trademark Consumer Survey Design: A Practical Checklist and Consumer Survey Expert Methodology in Trademark Cases: A Practical Guide.

Template 12: Brand usage guidelines

Purpose: rules that keep the owner, its partners, and the press using the mark as a brand, and that become evidence of the owner's efforts if the mark is ever challenged. Owner: in-house counsel with the brand team; every marketing, sales, support, and product writer gets a copy. When to use: before launch, then always; update whenever a new product, channel, or market appears.

[COMPANY] TRADEMARK USAGE GUIDELINES                    Version [ ] [DATE]
Questions: [TRADEMARK CONTACT, EMAIL]

1. USE THE MARK AS AN ADJECTIVE, FOLLOWED BY THE GENERIC NAME
   Our generic name for the product is: [expense-splitting app]
   Correct:    Split the bill with the TALLYO expense-splitting app.
   Incorrect:  Just Tallyo it.  /  Send me a tallyo.  /  the best tallyo

2. NEVER USE THE MARK AS A NOUN, VERB, PLURAL, OR POSSESSIVE
   Correct:    Settle up with TALLYO.   TALLYO accounts.   The TALLYO app's
               new feature.
   Incorrect:  Tallyo me for the pizza.  Two tallyos.  Tallyo's new feature.

3. MAKE THE MARK LOOK LIKE A BRAND
   Capitalize it [or set it in the logo or approved type]; never write it
   in lower case or merge it with other words.

4. USE THE RIGHT SYMBOL
   Use (R) for registered marks and TM for others, at least on the first
   or most prominent use on each page, screen, or package.

5. SAY "BRAND" WHERE IT HELPS
   "TALLYO brand expense-splitting app" in legal, packaging, and press
   materials, and wherever the context could suggest a category name.

6. DO NOT ALTER THE MARK
   No abbreviations, hyphenation, puns, or combinations with other marks.

7. GIVE COMPETITORS AND THE PRESS A WORD TO USE
   Describe the category as "[expense-splitting apps]," never as
   "[tallyo apps]." Never describe a competitor's product using our mark.

8. PRODUCT, HELP-CENTER, AND APP STORE COPY
   Product names, error messages, help articles, onboarding screens, and
   store listings follow these rules too. "How to split a bill with
   TALLYO," not "How to tallyo a bill."

9. PARTNERS, RESELLERS, AND DEVELOPERS
   Use of our marks by others is governed by their agreements and by these
   guidelines. Report misuse to [TRADEMARK CONTACT].

10. RECORDS
   Keep these guidelines, each prior version, and training records. They
   are evidence of how we protect the mark.

Drafting commentary. The statute is the reason this template exists: a mark is abandoned when "any course of conduct of the owner, including acts of omission as well as commission," causes it to become generic (15 U.S.C. § 1127). Rule 1 does the most work, because the generic name gives the public, the press, and competitors a word other than the mark, and courts in the Seventh and Ninth Circuits ask whether competitors can describe their products without it (Ty Inc. v. Softbelly's, Inc., 353 F.3d 528 (7th Cir. 2003); Elliott). Timing matters: the thermos maker spent its first sixteen years popularizing "Thermos bottle" without the generic terms then in use, and adding "vacuum bottle" later did not undo the damage (King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963)). Rules 2 and 8 address the owner's own usage, the most damaging evidence in a genericness record (In re Gould Paper Corp., 834 F.2d 1017 (Fed. Cir. 1987)); AOL's employees kept using "IM" as a noun and a verb despite management's admonitions, and the Fourth Circuit affirmed the refusal to enforce it (America Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001)), so training records and enforcement matter as much as the text. Rule 4 also preserves remedies: without notice of registration, profits and damages may be limited (15 U.S.C. § 1111). Verb use by the public is not fatal (Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017)), but an owner's own "Tallyo it!" campaign is exactly the kind of exhibit a challenger quotes.

Template 13: Trademark usage and cooperation clause

Purpose: contractual control over how licensees, resellers, marketplaces, and technology partners use the mark, plus an obligation to help prove distinctiveness later. Owner: commercial counsel, using language approved by trademark counsel. When to use: in every license, distribution, reseller, co-branding, affiliate, marketplace, and API or developer agreement.

[X]. TRADEMARK USAGE

[X].1 Approved Use. [Partner] shall use the Marks only in forms approved
      by [Owner] and in accordance with [Owner]'s Trademark Usage Guidelines
      as updated from time to time (the "Guidelines"), including by
      (a) using each word Mark as an adjective followed by the generic
      term [GENERIC DESCRIPTOR]; (b) not using any Mark as a noun, verb,
      plural, or possessive, or as the name of a type or category of
      product; (c) displaying the (R) or TM symbol as the Guidelines
      direct; and (d) not combining any Mark with other words, marks, or
      designs.

[X].2 No Adoption. [Partner] shall not use or seek to register any Mark,
      or any term containing or confusingly similar to a Mark, as a trade
      name, domain name, social media handle, app name, search keyword,
      product name, or category name, except as this Agreement expressly
      permits.

[X].3 Quality Control. [Standards, approvals, specimens, inspection, and
      audit rights.]

[X].4 Misuse Reporting and Correction. [Partner] shall promptly notify
      [Owner] of any generic or descriptive use of a Mark that comes to
      its attention, and shall correct any such use in materials under its
      control within [ten] business days after notice.

[X].5 Cooperation. On request, [Partner] shall provide declarations,
      documents, and testimony reasonably needed to establish the use,
      distinctiveness, or validity of the Marks. [Owner] shall reimburse
      reasonable out-of-pocket costs.

[X].6 Goodwill. All use of the Marks by [Partner] inures to the benefit
      of [Owner]. [Partner] shall not contest the validity of the Marks
      [to the extent permitted by applicable law].

Drafting commentary. Clause [X].3 is what makes licensed use count for the owner: use by related companies benefits the owner only where the owner controls the nature and quality of the goods (15 U.S.C. § 1055), and a license without control undercuts both exclusivity and source significance. See Trademark License and Quality Control Checklist: A Practical Checklist and Brand Licensing Toolkit: License Terms, Quality Programs, and Audit Rights. Clause [X].2 matters most for marketplaces and app stores, where partners create category pages and keyword lists that can turn a brand into a category label. Clause [X].5 is the one owners forget: years later, the declarations of partners and distributors may be needed, and a contractual duty to cooperate is far easier to invoke than a subpoena. Remember the limits of partner testimony: statements from interested distributors carry less weight than statements from independent purchasers. No-challenge clauses are generally enforced in trademark licenses but should be checked against the governing law.

Template 14: Policing log

Purpose: a single record of generic or improper uses found, what was done, and what happened. Owner: the trademark paralegal or brand protection team, reviewed quarterly by counsel. When to use: continuously; it is the owner's proof that it fought the drift.

Drafting commentary. Rank by evidentiary harm, which is also the order in which tribunals weigh usage: competitor usage first (it is often decisive, as with "brick oven" frozen pizza in Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006)), then trade and general media, then partners and platforms, and the public last, with no letters to individual consumers. In Elliott the Ninth Circuit treated Google's policing of dictionary publishers as weighing against genericide, and cited Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143 (9th Cir. 1999) and King-Seeley for the converse proposition that an owner's failure to police supports genericness. Save each capture with its URL and access date so it can be made of record before the Board by notice of reliance (37 C.F.R. § 2.122(e)) and authenticated in court; see Authenticating Website Evidence: A Practical Checklist.

Template 15: Correction letters

Purpose: ask the person who misused the mark to fix it, in a tone suited to who they are. Owner: the brand protection team for letters A, B, and D, under counsel's supervision; counsel for letter C. When to use: after a policing-log entry is ranked and the action chosen.

A. TO A PUBLISHER, JOURNALIST, OR EDITOR (education)

Thank you for covering [TOPIC] in [ARTICLE, DATE, URL]. One small request:
TALLYO is a registered trademark of Juniper Labs for its expense-splitting
app, and the article uses "tallyo" as a general term ("the flood of tallyo
apps"). The generic term is "expense-splitting app." We would be grateful
if the online version could be updated and if future coverage could use
the generic term when referring to the category. Our usage guide is at
[LINK]. Thank you.

B. TO A DICTIONARY OR REFERENCE PUBLISHER

[ENTRY, EDITION, URL] defines "tallyo" as a verb meaning "to split a bill
using an app." TALLYO is a registered trademark (U.S. Reg. No. [ ]) for
Juniper Labs' expense-splitting app. We ask that the entry identify TALLYO
as a trademark and, if usage examples are retained, that it note the
term's trademark status. Enclosed are examples of current usage that
identify the brand as Juniper Labs' app. We are glad to provide anything
else the editors would find useful.

C. TO A COMPETITOR (firm)

[COMPETITOR] advertises its product as "the tallyo for teams" ([URL,
CAPTURE DATE]). TALLYO is Juniper Labs' registered trademark for its
expense-splitting app (U.S. Reg. No. [ ]). Using our mark to describe your
own product misuses it and is likely to cause confusion. We ask that you
stop using TALLYO or any variation in your advertising, product pages,
app store listing, and keyword campaigns by [DATE], and confirm in
writing. You are free to describe your product as an expense-splitting
app, which is the generic term.

D. TO A MARKETPLACE OR APP STORE

Listing or category [ID, URL] uses our registered mark TALLYO (U.S. Reg.
No. [ ]) as a category label ("tallyo apps") and in third-party product
titles. Please rename the category "expense-splitting apps" and remove
TALLYO from listings that do not offer Juniper Labs' product. [Attach the
registration and the platform's required notice form.]

Drafting commentary. Letters A and B are requests, not threats; publishers who are treated as allies tend to change copy, and the response, whatever it is, goes in the policing log. Letter C rests on infringement and false designation claims under 15 U.S.C. § 1114 and 15 U.S.C. § 1125(a), so it should be reviewed against Drafting a Trademark Cease-and-Desist Letter and should not overreach: a competitor using an ordinary word in its descriptive sense may have a fair use defense under 15 U.S.C. § 1115(b)(4), though a coined term like TALLYO has no descriptive meaning to use; see Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's. Expect that a firm letter may prompt a cancellation petition, as it did for Juniper Labs in the companion article's example, and send it only when the evidence file can withstand one. "-Style" listings deserve attention early, because a brand that the trade uses as a style name can end up defending a descriptive fair use claim, as in Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020). For platform notice procedures, see the Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands.

Template 16: Genericness evidence chart and discovery requests

Purpose: organize the challenger's genericness proof and pry loose the owner's own usage, research, and policing record. Owner: challenger's counsel. When to use: from the first week of an opposition, cancellation, or infringement defense; the chart doubles as the exhibit list for a notice of reliance or summary judgment motion.

PART A: EVIDENCE CHART
Genus (from the identification of goods): [  ]
Relevant public: [  ]
| No. | Category | Source and date | Read by relevant public? | How the
  term is used | Generic, brand, or ambiguous | Weight notes | Exhibit |
Categories: dictionaries / trade press / general media / competitors'
names and listings / owner's own use / partners' use / public use online /
USPTO records (disclaimers, prior refusals, third-party registrations) /
foreign-language meaning / patents, standards, varietal names / surveys

PART B: DOCUMENT REQUESTS
 1. All versions of the owner's brand, style, or trademark usage
    guidelines, and records of training on them.
 2. Documents sufficient to show each use by the owner, its employees,
    agents, or partners of [TERM] as a noun, verb, plural, possessive, or
    category name, in advertising, packaging, help pages, app store
    listings, and internal communications.
 3. Communications with any publisher, dictionary, competitor, platform,
    or other third party about its use of [TERM], and the responses.
 4. Surveys, studies, focus groups, and brand-tracking research mentioning
    [TERM] or the product category, with questionnaires and data.
 5. Documents concerning the selection, clearance, and adoption of [TERM],
    including alternatives considered and search reports.
 6. Documents sufficient to show advertising expenditures by campaign and
    medium, with samples of each campaign.
 7. All documents filed with or received from the USPTO concerning [TERM].

PART C: INTERROGATORIES
 1. Identify every term the owner uses or has used to name the category of
    goods identified in [REGISTRATION OR APPLICATION].
 2. Identify every person the owner has asked to stop or change a use of
    [TERM], and the result.
 3. Identify every survey or study concerning [TERM], and who conducted it.
 4. State the date as of which the owner contends [TERM] acquired
    distinctiveness, and identify the facts supporting that contention.

PART D: REQUESTS FOR ADMISSION
 1. Admit that Exhibit [ ] is a true and correct copy of [OWNER'S WEB PAGE]
    as it appeared on [DATE].
 2. Admit that the owner disseminated advertising using the phrase
    "[TERM] it" in [YEAR].
 3. Admit that [THIRD PARTY] has used [TERM] to refer to its own [GOODS]
    since at least [DATE].

PART E: CORPORATE DEPOSITION TOPICS
 1. Selection, clearance, and adoption of [TERM].
 2. Usage guidelines and their enforcement, internally and with partners.
 3. Advertising featuring [TERM], including any look-for messaging.
 4. Policing of third-party uses, including dictionaries and the press.
 5. Surveys and research concerning [TERM].
 6. Knowledge of third-party uses of [TERM].

Drafting commentary. Requests 1 and 2 go after the evidence that most often decides genericness: the owner's own usage (In re Gould Paper Corp., 834 F.2d 1017 (Fed. Cir. 1987)) and its employees' habits (America Online). The chart's categories track the sources courts actually weigh, including competitor usage (Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008)), the term's history before the owner adopted it (Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999)), phonetic equivalents (Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977)), and foreign meanings (Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266 (2d Cir. 1999)). Interrogatory 4 forces the owner to commit to a relevant date, which matters because secondary meaning must exist before each accused infringer's first use (Converse). Use Fed. R. Civ. P. 33, Fed. R. Civ. P. 34, Fed. R. Civ. P. 36, and Fed. R. Civ. P. 30(b)(6) in court. At the Board, interrogatories, document requests, and requests for admission are each limited to seventy-five, counting subparts, but a party may also serve one comprehensive request to admit the authenticity of documents the other side produced (37 C.F.R. § 2.120(d), (e), and (i)). See TTAB Discovery: A Practical Checklist.

Template 17: Cancellation counterclaim and petition outline

Purpose: plead genericness, and where still available lack of acquired distinctiveness, as a claim that removes or narrows the registration. Owner: challenger's counsel. When to use: with the answer in an infringement suit or Board proceeding, or as a standalone petition to cancel.

[COUNTERCLAIM FOR CANCELLATION (district court) /
 PETITION FOR CANCELLATION (TTAB)]

 1. Parties.
 2. [Court:] Jurisdiction and venue. [Board:] Petitioner's entitlement to
    bring the claim: [real commercial interest, e.g., it sells
    expense-splitting apps and has received a demand letter].
 3. The registration: Reg. No. [ ]; mark; goods as identified;
    registration date; register; whether registered under Section 2(f);
    Section 15 status.
 4. The genus: the goods as identified in the registration.
 5. The relevant public: [actual and potential purchasers of those goods].
 6. Facts: (a) dictionary definitions; (b) media and trade usage;
    (c) competitors' usage; (d) registrant's own usage; (e) the absence,
    or availability, of another common name; (f) the term's history before
    registrant adopted it; (g) survey evidence, if any.

COUNT I    Genericness. [TERM] is the generic name of the goods, or of a
           portion of them, and the registration may be cancelled at any
           time (15 U.S.C. § 1064(3)); no incontestable right exists in a
           generic name (15 U.S.C. § 1065(4)).
COUNT II   [Only if the registration is less than five years old.]
           Mere descriptiveness without acquired distinctiveness as of
           registration (15 U.S.C. § 1052(e)(1), (f)).
COUNT III  [Alternative.] Restriction of the registration to goods for
           which [TERM] is not generic.

AFFIRMATIVE DEFENSES [litigation]: genericness; descriptive fair use
(15 U.S.C. § 1115(b)(4)); [others].
PRAYER: cancellation or restriction of Reg. No. [ ]; [declaration of
non-infringement]; costs [and fees where available].

Drafting commentary. At the Board, a defense attacking the validity of a pleaded registration is a compulsory counterclaim if its grounds exist when the answer is filed (37 C.F.R. § 2.106(b)(3)(i) in oppositions; § 2.114(b)(3)(i) in cancellations). In court, plead the counterclaim under Fed. R. Civ. P. 13 and ask for relief under 15 U.S.C. § 1119; the Board's power to restrict a registration is in 15 U.S.C. § 1068. Count I is available at any time under 15 U.S.C. § 1064(3) and survives incontestability under 15 U.S.C. § 1065(4); Count II is available only within five years of registration (§ 1064), and an incontestable registration cannot be attacked as merely descriptive in litigation either (Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985)). Against a 2(f) registration, Count II requires real evidence: the registration's presumption includes acquired distinctiveness, the prosecution evidence is automatically of record (Cold War Museum), and registrations or business names without proof of actual use will not make a prima facie case (Lovely Skin). Plead the genus from the identification (Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638 (Fed. Cir. 1991)) and address the term as a whole (Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 786 F.3d 960 (Fed. Cir. 2015)). Winning on genericness may not end the case, because a first user can still pursue passing off (Blinded Veterans Ass'n v. Blinded American Veterans Foundation, 872 F.2d 1035 (D.C. Cir. 1989)). For pleading mechanics, see the Responsive Pleading Toolkit: Answer Templates, Affirmative Defense Libraries, and Counterclaim Outlines, Petitioning to Cancel a Trademark Registration: A Practical Checklist, and Trademark Cancellation in Federal Litigation: A Practical Guide.

Common drafting mistakes

• Declarations about the wrong matter. Advertising and sales for the house mark or the composite, offered to prove distinctiveness of a descriptive element (Louisiana Fish Fry).
• A five-year statement signed without an exclusivity check. Run Template 2 first (Lovely Skin).
• Identical purchaser declarations. They get no weight (Hotels.com).
• A declarant who joined the company after the period described. Lay a business-records foundation or choose a different witness (Coach Services).
• Counsel's fingerprints on the survey. Counsel frames the question; the expert designs the instrument (Elliott).
• Usage guidelines nobody follows. The owner's own "Tallyo it!" campaign undoes a decade of policing letters.
• Firm letters to everyone. Polite requests to publishers and dictionaries; firm letters to competitors; nothing to individual consumers.
• A genericness counterclaim when fair use would do. Descriptive fair use is narrower and cheaper; see Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide.

Practical takeaways

• Build the distinctiveness file before you need it: guidelines, a policing log, an advertising archive, and a baseline survey.
• Aim every declaration, exhibit, and survey at the matter actually claimed and the date that matters.
• Use independent declarants who write in their own words, and a survey expert who designs without counsel's edits.
• Contract for control and cooperation with every licensee and partner.
• For challengers, the owner's own usage, competitor usage, and the term's history are the first places to look.

This document is general information, not legal advice for any particular situation; the law changes, and the facts matter.

Related Documents

Related Articles

• Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends: the doctrine behind these templates, with the TALLYO and ARDEN worked examples.
• Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's: the defense that limits what an owner of a descriptive mark can stop.
• Trademark Licensing and Quality Control: How Naked Licensing Kills a Brand: why Template 13's quality control clause matters.
• Daubert Challenges to Consumer Survey Experts in Trademark Litigation: A Practical Guide: using Template 11 in a motion.

Related Guides

• Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide: when and in what order to use each template.
• Consumer Survey Expert Methodology in Trademark Cases: A Practical Guide: survey design in depth.
• Taking and Defending an Expert Deposition: A Practical Guide: deposing and defending the survey expert.
• Trademark Cancellation in Federal Litigation: A Practical Guide: using § 1119 counterclaims.

Related Checklists

• Acquired Distinctiveness and Genericness Evidence Checklist: A Practical Checklist: the item-by-item evidence list these templates implement.
• Responding to a Trademark Office Action Checklist: A Practical Checklist: the office action workflow around Templates 3 and 4.
• Trademark Consumer Survey Design: A Practical Checklist: design checks for Templates 8 to 10.
• TTAB Discovery: A Practical Checklist: serving Template 16 at the Board.
• Trademark License and Quality Control Checklist: A Practical Checklist: license terms that support Template 13.

Related Toolkits

• Trade Dress Protection Toolkit: From Product Design and Packaging to Registration, Functionality, and Enforcement: functionality and trade dress templates for design claims like ARDEN.
• Brand Licensing Toolkit: License Terms, Quality Programs, and Audit Rights: full license forms.
• Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands: platform notices that complement Template 15.
• Responsive Pleading Toolkit: Answer Templates, Affirmative Defense Libraries, and Counterclaim Outlines: pleading the counterclaim in Template 17.
• Expert Witness Toolkit: retaining and managing experts beyond surveys.