Updated: September 30, 2021
Businesses typically want to protect their names, logos, designs, and other indicia of their brands from others trying to profit from their work. Trademark law provides one way to do that. However, not all marks can be trademarked. Under federal law, a trademark cannot be registered unless it is “inherently distinctive,” or it has acquired distinctiveness or “secondary meaning.”
What are the categories of distinctiveness?
Marks are classified in five categories of increasing distinctiveness:
- Generic;
- Descriptive;
- Suggestive;
- Arbitrary; or
- Fanciful
Generic marks cannot be registered. On the other side, arbitrary and fanciful marks are inherently distinctive and protected under trademark law. In the middle are suggestive and descriptive marks. Suggestive marks are distinctive and suggest, without describing, the nature of the goods or services associated with such marks, whereas descriptive marks describe the goods or services to be provided.
Descriptive marks are only protected if they acquire secondary meaning as discussed further below.
Note that in addition to descriptive marks, the following categories of marks also require proof of secondary meaning:
- Geographically Descriptive Marks;
- Personal Name Marks;
- Corporate, Business and Professional names which fall into the preceding categories;
- Titles of Single Literary Works;
- Descriptive Titles of a Literary Series;
- Non-inherently Distinctive Designs and Symbols;
- Non-inherently Distinctive Trade Dress in Packaging;
- Trade Dress in Product Shapes.
How can a trademark applicant prove secondary meaning?
Where a mark is not inherently distinctive, the trademark applicant must prove that the mark has become distinctive as applied to the goods or services in commerce. This requires evidence that the mark has become uniquely associated with a single source of those goods or services and in the public’s mind, the mark is associated not with the product or services but with the source of the product or services. This connection between the mark and the business occurs gradually through the mark’s use in commerce.
To establish secondary meaning, applicants must rely on one of these types of evidence:
- Prior Registrations:Ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark where the goods or services are sufficiently similar to the goods or services in the application.
- Five Years’ Use:A verified statement that the applicant’s substantially exclusive and continuous use of the mark in commerce for five or more years has rendered the mark distinctive of the applicant’s goods or services. As with prior registrations, further evidence may be required.
- Other Evidence:Other appropriate evidence of acquired distinctiveness as provided in the federal rules. These may include evidence of the duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith.
What factors are relevant to determining secondary meaning?
Courts rely on six factors in determining whether a given mark has acquired secondary meaning. These include:
- Advertising expenditures.The applicant must show successful efforts in educating the public to associate the proposed mark with a single source. Large scale expenditures may help, but one successful campaign is not enough by itself. In lieu of specifying the expenditures made, the applicant may indicate the types of media used and the frequency of ads.
- Consumer studieslinking the mark to a source. Relevant surveys and market research should demonstrate that the public views the mark as an indication of the source of the product or service. Evidence of the procedural and statistical accuracy of the data must be submitted as well.
- Sales success.High sales figures may be relevant to demonstrating that the mark is distinctive, and that the public may associate the mark with the company/source. However, the numbers must be put into context and shown in comparison to the norms of that industry.
- Unsolicited media coverageof the products. One isolated article is generally not sufficient for this factor.
- Attempts to plagiarizethe mark. Evidence of parodies and copies by third parties may be relevant to demonstrating secondary meaning in some cases
- Length and exclusivityof the mark’s use. Both factors must exist.
No single factor is determinative in establishing secondary meaning, and the burden of proof is on the plaintiff or applicant to establish distinctiveness.
Conclusion
Businesses have a strong interest in protecting their brands. Accordingly, it is important to consult an experienced attorney to provide guidance and assist in presenting a strong case for trademark protection.
Photo by Emily Morter on Unsplash
