What is secondary meaning in trademark law?

The least you need to know…

• To have trademark protection, a mark must be more distinctive than being merely descriptive or generic
• A descriptive mark can be eligible for protection if it acquires secondary meaning
• Secondary meaning of a mark is acquired when people associate the mark with the specific company rather than the product or service it seems to describe

What is a trademark or service mark? When legal professionals use jargon, they tend to call it “terms of art.” One of those is “secondary meaning.” So what is secondary meaning in trademark law? It refers to a way that a seemingly non-trademark-able term or phrase can be trademarked due to claim of distinctiveness.

A secondary meaning trademark arises when minds of consumers have come to identify a trademark exclusively with a certain product over time. When this happens, a descriptive mark that a business would not have been able to register initially may achieve trademark status.

The descriptive mark may be subject to registration at some time in the future after sufficient use has been made.

Even after you know what secondary meaning is you may still be wondering how to prove it. More importantly, who is the trademark owner in these types of situations? Can it be any employee of the company involved, or can it only be certain key officers? In this article, we’re going to answer as many questions on trademark law and secondary meaning as we can.

If you have a specific trademark or other intellectual property issues that may require legal help, you can begin your search for a trademark attorney by entering your ZIP code in our search tool above.

Frequently Asked Questions: Trademark and Secondary Meaning

In order to more fully understand secondary meaning, we’re going to try and answer some common questions about trademark law succinctly.

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What are the three types of trademarks that can be registered?

There are only three things that can be trademarked in United States trademark law: a trademark, trade name, or trade dress. A registered mark is a logo or symbol associated with a company or person. A trade name is simply the word or name without any design elements.

(For example, Google has a trademark on their trade name. It also has a trademark on the logos used like the lowercase multi-color way that the word google appears on their landing page.) Trade dress refers to any number of design elements that identify a company. McDonald’s golden arches are an example, but McDonald’s also has trademarks on the uniforms of employees, menu design, and countless other aspects of their brand.

What are the four types of trademark categories?

Trademarks can typically be divided into four categories based on how distinctive they are and therefore how strong their legal protections are. These are fanciful or arbitrary, suggestive, descriptive,or generic trademark.

Typically, a mark has to be at least suggestive to be eligible for protection. Falling below the suggestive threshold suggests a lack of inherent distinctiveness, the trademark category necessary for protection.

What is a descriptive trademark?

To illustrate the different categories, let’s think about Apple. As the name of a technology company, Apple is arbitrary and therefore has strong protection. The same name for an apple orchard, though…? It’s not even suggestive of the company, arguably. Calling your orchard Apple orchard is just describing what it is.

For that reason, you would probably not be able to trademark Apple Orchards.

Some other descriptive trademark examples would be things like “Car Repair” for a garage or “Coders” for a company of software developers.

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What does it mean to prove a secondary meaning?

There is one way that a descriptive-sounding name can acquire trademark protection: achieving a secondary meaning. Some companies have a secondary meaning analysis done. Essentially, the name has achieved secondary meaning when it has become associated with a specific company rather than just the thing described.

Using “Car Repair” as our example, the only way that that garage could get trademark protection would be if the company could show that car repair represented not what garages tend to do but specifically that company, “Car Repair.” If the company could show that in its area of operation people thought of the company specifically when they said “Car Repair” a trademark could be granted.

When is a mark said to have acquired a secondary meaning?

A mark has acquired secondary meaning when the mark makes people think of a specific company rather than the service or product it describes. This can be limited to the area where the mark is present.

In the case of trade dress, sometimes secondary meaning in trade dress must be acquired before that trade dress can be protected. The design of the coke bottle or the shade of magenta that T-Mobile uses may not be protected unless the association between the brand and the trade dress becomes strong enough.

These are examples of acquired distinctiveness, the definition of which is roughly the same as secondary meaning. A seemingly descriptive mark can be trademarked if it has acquired enough distinctiveness to be unique and protectable.

Do Companies Try to Trademark General Terms?

When registering a trademark, especially when trying to force others to change their name, logo, etc., you may need to prove customers associate that name with you. In 2018, many Hawaii locals got a shock when a Chicago restaurant owner tried to trademark “Aloha Poke.” He then started sending cease-and-desist letters to restaurants, not just in Chicago, but in Hawaii.

In this case, there were stores that refused to change their names as there was no likelihood of confusion. Others spent thousands updating their business names in response to the letters. In short order, it led to a movement to legally protect Native Hawaiian terms and “cultural intellectual property.” One might also make the argument that nobody outside of that area of Chicago would associate “Aloha Poke” with his shop. Similarly, a Hawaiian photographer previously attempted to claim copyright on a hula dancing photo, and Disney filed a copyright on a Hawaiian chant in one of their movies. Unlike the Apple computer brand we all know, “Aloha” is not so distinctive to one brand in the minds of consumers.

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How Do You Prove a Descriptive Mark Is Used Enough to Have Secondary Meaning?

A trademark attorney can help you gather the evidence you’ll need to meet the threshold required to establish secondary meaning. The evidence may include advertising and sales volume totals or the results of consumer surveys. Some examples include Xerox for copy machines, Bufferin for buffered aspirin and ChapStick for a lip balm, which were all descriptive, but ultimately achieved registration.

The primary case that recognized secondary meaning protection was Zatarian’s, Inc. v. Oak Grove Smokehouse, Inc. In this case, Zatarian’s had claimed trademark rights to the term fish-fri that were being infringed upon by other companies creating a similar product. The court found that the Zatarian’s term had gained secondary meaning rights in New Orleans where it originated. Therefore, the term could not be used by other companies as the name for their product.

What Do Trademark Courts Say?

Descriptive terms are ordinarily not protectable as trademarks. They may be protected, however, if they have acquired a secondary meaning for the consuming public. The concept of secondary meaning recognizes that words with an ordinary and primary meaning of their own “may by long use with a particular product, come to be known by the public as specifically designating that product.” In order to establish a secondary meaning for a term, a plaintiff “must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.”

The burden of proof to establish secondary meaning rests at all times with the plaintiff. Actual consumer confusion is just one of many elements. This burden is not an easy one to satisfy, for a high degree of proof is necessary to establish secondary meaning for a descriptive mark. You may also be asked to provide additional evidence.

This is an issue only with respect to descriptive marks. Suggestive and arbitrary or fanciful trademarks are automatically protected upon registration, and generic terms are not protected even if they have acquired secondary meaning.

Is Secondary Meaning Trademark Registration Right for Your Company?

Acquiring secondary meaning is the only way that a descriptive mark can achieve trademark protection. In order to have acquired a secondary meaning, the mark must have acquired distinctiveness from the service or product offered. In other words, the business must show that the mark that seeks protection is associated with their business and not merely what the mark seems to describe.

If you feel your business has met the requirements of state or federal trademark law, always work with an experienced attorney. An expert can navigate the U.S. Patent and Trademark Office to make the process easier for you. They can also tell you when your trademark may not meet the requirements for claims of ownership and trademark.

Did we cover all the topics and answer all your questions?

Trademark and intellectual property law can be complicated and confusing. If you have more questions about your specific legal needs, you can search for a trademark attorney by putting your ZIP code into our search tool below.

References:

1. https://www.nytimes.com/2019/06/24/smarter-living/how-a-brand-name-becomes-generic.html
2. https://cyber.harvard.edu/metaschool/fisher/domain/tmcases/zatar.htm\
3. https://www.bitlaw.com/source/tmep/1212.html

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