Secondary Meaning/Acquired Distinctiveness (Trademark)
“Secondary meaning” refers to the distinctiveness that is acquired by an otherwise non-distinct trademark through its commercial use. To acquire federal trademark protection, a non-distinctive mark must become associated with a single commercial source in the minds of consumers, with the U.S. Patent and Trademark Office stating, “If a proposed trademark or service mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or ‘secondary meaning,’ that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services, then the mark is registrable on the Principal Register under §2(f) of the Trademark Act.”
When seeking to prove secondary meaning, various factors are considered by courts and/or the USPTO. These factors may include …
Length and Exclusivity of Use: Evidence showing the length and exclusivity of the mark’s use in commerce is important. The longer the mark has been used in association with the goods or services, the stronger the claim for secondary meaning.
Advertising and Promotion: Evidence of advertising and promotional efforts aimed at creating brand recognition and associating the mark with the goods or services can support a claim of secondary meaning. This may include marketing materials, advertising campaigns, media coverage, or other promotional activities.
Sales and Market Share: Proof of substantial sales and market share can indicate that consumers recognize the mark and associate it with the source of the goods or services.
Consumer Surveys: Conducting consumer surveys can provide empirical evidence demonstrating consumer recognition and association of the mark with a specific source. Expertly conducted surveys can be persuasive evidence of secondary meaning.
Testimonials and Declarations: Affidavits or declarations from consumers, industry professionals, or other relevant individuals attesting to their understanding of the mark as indicating a single source can support a claim of secondary meaning.
Unsolicited Media and Trade Recognition: Evidence of media recognition, positive reviews, or industry accolades that associate the mark with a particular source can contribute to establishing secondary meaning.
Competitor Awareness: Evidence that competitors are aware of the mark and recognize it as indicating a single source can demonstrate the mark’s acquired distinctiveness.
Note: These factors may not all be required or given the same weight in every case. The specific evidence required to establish secondary meaning can vary depending on the jurisdiction and the specific facts of the case at issue. The Federal Circuit’s decision in Converse, Inc. v. ITC, for instance. provides clarity on how the Federal Circuit analyzes secondary meaning and trademark infringement issues for product design trade dress.