1. Secondary Meaning in Trademark Law
2. Methods Used to Determine Secondary Meaning
3. When Must a Trademark Obtain Secondary Meaning?

A secondary meaning trademark results when consumers have started to identify a trademark with a particular product over time. A descriptive mark that a business might not have been able to register initially can now achieve a trademark status because of this association.

Secondary Meaning in Trademark Law

As a concept, secondary meaning acknowledges that words with a regular and distinctive meaning of their own could become synonymous with a specific product. The general public then specifically identifies a product by this secondary meaning. The plaintiff is also required to show that the main significance of the secondary meaning is related to the producer rather than a product. A relevant example would be Apple. While the word apple has a primary meaning, many people also recognize it for its second meaning. And, that secondary meaning is specific to a brand of computers, not just computers in general.

To be a trademark that has acquired secondary meaning, the mark must have become recognizable as a brand for particular services and/or goods from only one source. This particular mark could be eligible for registration down the line once there is enough use that gives you the ability to prove secondary meaning under applicable trademark law.

In order to be eligible for protection, the trademark must be distinctive and identifiable. It must distinguish these services or goods from competitors' versions. Trademarks may vary some in terms of distinctiveness. They can either be inherently distinctive, or they could gain distinctiveness through recognition by consumers after regular use. The extent of distinctiveness (inherent or acquired) is directly related to the scope of protection the trademark is entitled to.

Methods Used to Determine Secondary Meaning

Proving secondary meaning can be difficult when a trademark is geographically descriptive. Some courts have recognized that surveys or other quantifiable proof are two of the best ways to show secondary meaning. You can also use the services of a trademark attorney who can assist with gathering the necessary evidence to meet the threshold necessary to prove secondary meaning.

Sales volume totals and advertising can also be used as evidence, in addition to consumer surveys. Examples of descriptive words that ultimately gained registration include:

  • ChapStick — lip balm
  • Xerox — copy machines
  • Bufferin — buffered aspirin

You can categorize trademarks on the Spectrum of Distinctiveness as based on levels of distinctiveness or strength, from the strongest to the weakest:

  • Fanciful Marks — These are ones that are made up terms, and there is no correlation to the products being described. An example would be Exxon for gas.
  • Arbitrary Marks — These are marks that consist of existing words or terms that have no relationship or meaning to the described goods. This would include Apple again for computers.
  • Suggestive Marks — Terms that suggest relation or meaning, but still do not describe the goods outright. This would be something like Coppertone as suntan lotion.
  • Descriptive Marks — These are terms that describe characteristics of goods or the goods themselves. It's hard to get trademark rights for descriptive marks without gaining secondary meaning. One example would be Shoeland which sells shoes.

The plaintiff has the burden of proof in a secondary meaning case. This is obviously not an easy burden to satisfy since a high degree of proof is required in order to establish the necessary secondary meaning for a descriptive mark. The plaintiff can prove secondary meaning using both circumstantial and direct evidence. Direct evidence may include consumer testimony in addition to consumer surveys.

Circumstantial evidence is any evidence that relates to the:

  • Advertising expenses;
  • Number of customers and amount of sales; or
  • Manner, length, and exclusivity of the trademark's use.

When Must a Trademark Obtain Secondary Meaning?

The courts typically look at four factors when determining whether a trademark has acquired secondary meaning:

  • Length of time and how the mark has been utilized;
  • How much advertising and promotional work has been done for the owner's business;
  • What efforts the mark's owners have made to create a conscious connection between the mark and its owner in the mind of a consumer; and
  • The extent that the public identifies the name with the mark's services or goods.

These four criteria are not absolute. In other words, a mark's owner could fail one, but as long as the mark meets a majority of the criteria, it can still be declared to have secondary meaning.

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