Understanding Secondary Meaning in Trademark Law
Introduction
In the world of trademark law, the concept of "secondary meaning" plays a crucial role in determining the protectability of certain marks. But what is secondary meaning and why does it matter?
This post will explore the ins and outs of secondary meaning, its importance in trademark protection, and how it's established.
What is Secondary Meaning?
Secondary meaning occurs when the consuming public associates an otherwise descriptive mark with a specific brand or source. This concept is fundamental to trademark law because it transforms a potentially weak mark into a protectable asset.
The Spectrum of Distinctiveness
To understand secondary meaning, we first need to grasp the concept of distinctiveness in trademark law. Courts evaluate potential trademarks on a spectrum of distinctiveness, which includes:
Generic Terms: These are common names for products or services (e.g., "apple" for the fruit). They receive no trademark protection.
Descriptive Marks: These describe a quality or characteristic of the product or service (e.g., "Cold and Creamy" for ice cream). They require secondary meaning for protection.
Suggestive Marks: These suggest, rather than describe, qualities of the product or service (e.g., "Coppertone" for suntan lotion). They are inherently distinctive.
Arbitrary Marks: These use common words in an uncommon way (e.g., "Apple" for computers). They are inherently distinctive.
Fanciful Marks: These are made-up words (e.g., "Kodak" for cameras). They are the most distinctive and receive the strongest protection.
The more distinctive your trademark, the stronger the legal protection it receives.
The Spectrum of Distinctiveness
When is Secondary Meaning Needed?
Secondary meaning becomes crucial when dealing with descriptive marks. Unlike suggestive, arbitrary, or fanciful marks, which are inherently distinctive, descriptive marks are not automatically eligible for trademark protection. They need to acquire distinctiveness through secondary meaning.
Examples of marks that typically require secondary meaning include:
Marks that describe what a product does, its ingredients, or its size (e.g., "Arthriticare" for arthritis medication)
Marks that primarily indicate geographic origin (e.g., "American Airlines")
Marks that consist mainly of a surname (e.g., "Ford" for automobiles)
Laudatory marks (e.g., "The Best Coffee in Town")
It's worth noting that some geographic terms or surnames can be inherently distinctive if they're rare or used in an arbitrary context (e.g., "Amazon" for an online retailer).
The Time Frame for Acquiring Secondary Meaning
The length of time needed to establish secondary meaning can vary significantly. Factors influencing this include:
How descriptive the mark is (more descriptive marks typically need longer use)
The nature and extent of advertising and promotion
The volume of sales and number of customers
The type of product or service and its market
While there's no fixed time requirement, five years of continuous use is often considered prima facie evidence of secondary meaning by the U.S. Patent and Trademark Office (USPTO).
The Time Frame for Acquiring Secondary Meaning
Proving Secondary Meaning
To prove that your mark has acquired secondary meaning, you need to show evidence that the public identifies your mark with your brand. This can be done through both direct and circumstantial evidence:
Direct Evidence:
Consumer surveys demonstrating brand recognition
Consumer testimony
Circumstantial Evidence:
Length and manner of use
Amount and manner of advertising
Volume of sales
Number of customers
The legal standard requires that a "substantial portion" of the consuming public in the relevant geographic area associates the mark with a single source.
Secondary Meaning in Trademark Registration
When applying for federal trademark registration, marks lacking inherent distinctiveness are typically placed on the Supplemental Register. After five years of continuous use, the mark may be eligible for the Principal Register if secondary meaning can be demonstrated.
Implications and Challenges
Once secondary meaning is established, the trademark owner gains exclusive rights to use the mark in connection with their goods or services. However, competitors may challenge claims of secondary meaning, particularly if they believe the mark remains merely descriptive.
Conclusion
Secondary meaning offers a path to protection for descriptive marks that might otherwise be ineligible. By understanding how secondary meaning works and how to prove it, you can better protect their brand assets and build stronger, more distinctive trademarks.