Business-minded people often seek to protect their names, logos, designs, and other brand indicators through trademark law. However, not all marks are eligible for trademark protection. Federal law requires that a trademark be “inherently distinctive” or have acquired distinctiveness or “secondary meaning” in order to be registered. These terms of art can be tricky to understand, and a seasoned trademark attorney is a helpful guide through the trademark process.
Trademarks fall into one of five categories, from least to most distinctive:
While suggestive, arbitrary and fanciful marks are inherently distinctive and protected under trademark law, generic marks cannot be registered and therefore are not protected by trademark at all. Descriptive marks are only protected if they acquire secondary meaning.
To establish secondary meaning, the trademark applicant must prove that the mark has become distinct 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 in the public’s mind.
Applicants can establish secondary meaning through prior registrations, five years of continuous use, or other appropriate evidence. Courts rely on six factors in determining whether a given mark has acquired secondary meaning, including advertising expenditures, consumer studies, sales success, unsolicited media coverage, attempts to plagiarize the mark, and the length and exclusivity of the mark’s use. No single factor is determinative in establishing secondary meaning, and the burden of proof is on the applicant to establish distinctiveness. Failure to support a trademark application with this information may result in an office action.
In conclusion, protecting brands is crucial for businesses, and consulting an experienced attorney can assist in presenting a strong case for trademark protection.