It is also important to note that the secondary meaning is not a measurement scale like “miles per hour” or “grams”. Rather, it is a specific point on a scale, i.e. a certain brand strength, such as the “water freezing point”. As a concept, the secondary meaning recognizes that words with their own regular and distinctive meaning can become synonymous with a particular product. The general public then identifies a product specifically by this secondary meaning. The applicant must also prove that the primary meaning of the secondary meaning is related to the manufacturer and not to a product. A relevant example would be Apple. Although the word apple has a primary meaning, many people also recognize it for its second meaning. And this secondary meaning is specific to a brand of computers, not just computers in general. Under 15 U.S.C.A. Section 1052(a) to (d), (f), immoral or scandalous marks, national symbols and names of living persons cannot obtain trademark protection, even by secondary importance. Surnames are generally not registered trademarks, but a surname may be worthy of protection if it acquires secondary meaning (Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145, 1955 WL 6450 [Com`r 1955]).
In trademark law, trademarks are placed along a continuum of distinctiveness. If a trademark is classified as inherently indistinguishable, it must acquire distinctiveness in the minds of consumers to obtain trademark status. This acquired distinctiveness is called “secondary meaning”. The secondary meaning is a new and additional meaning attached to a trademark. The public then uses this mark to identify and distinguish a unique commercial source. However, if a mark is not used to identify its source, it cannot reach a secondary meaning. Black`s Law Dictionary (fifth edition) defines the doctrine of secondary meaning for trademark law purposes as follows: “[A]. Party through advertising or mass exposure. [Establing] its trademark in the minds of consumers as an indication of origin from a specific source. In a context of unfair competition, it is defined by the same work as an “association formed in the mind of the consumer and linking a single product to its manufacturer or distributor”.
Both definitions refer to marks that would otherwise be descriptive or geographically descriptive without their increased consumer awareness. A descriptive name, word, term or trademark will have acquired secondary meaning if a significant proportion of the consumer public understands that the goods and/or services in question refer exclusively to a particular party. That is to say, the primary meaning of the term will have been surpassed by its secondary importance. This is called the “primary theory of meaning.” A secondary meaning exists in a geographically descriptive mark when the mark no longer leads the public to associate the product with a specific place but with a specific commercial source. For a generic term to fulfil the `primary importance criterion`, it can no longer be used as a designation for the type of goods or services concerned. This is a very high standard. Courts consider the following factors in determining whether a name, word, term or trademark has acquired secondary meaning: the duration and nature of the use; the nature and extent of the advertising and promotion; and The effort to promote a conscious connection between the name, word, concept or brand and product, service or business in the minds of consumers. The onus is on the party seeking to protect a name, word, term or trademark to prove that a secondary meaning is attached. (from Boston Beer Co.
v. Slesar Brewing Co., 9 F.3d 175 [1st Cir. 1993]) Consumer surveys, their methodology, the conclusions to be drawn and their weight of evidence are often questionable when it comes to determining whether there is secondary importance. The acquisition of a secondary meaning of a mark permits its registration, although registration is otherwise prohibited under Section 1052(d) and (e) of the Trademark Act. Under Article 1052(f) of the Law on trade marks, proof of the essentially exclusive and continuous use of a trade mark for five years may be regarded as prima facie evidence that the trade mark has become distinctive. For this purpose, the additional registration in the register is usually used. “Secondary meaning”. Merriam-Webster.com Legal Dictionary, Merriam-Webster, www.merriam-webster.com/legal/secondary%20meaning.
Retrieved 11 November 2022. These four criteria are not absolute. In other words, the owner of a trademark might fail one, but as long as the trademark meets the majority of the criteria, it can still be declared secondary. Full trademark protection is provided when the U.S. Patent and Trademark Office registers the trademark in the Master Trademark Registry. Suggestive, arbitrary and imaginative marks distinguish a product from other products and are automatically eligible for the master registry. Descriptive and generic marks generally do not qualify for inclusion in the main register. For example, a person cannot claim the right to the word “fine” in relation to a product because the word is only descriptive. However, a descriptive or generic mark may be entered in the supplementary register, which gives the trademark owner a certain degree of trademark protection. If the trademark acquires secondary importance after five years of continuous and exclusive use in the marketplace, it may be listed in the primary registry (15 U.S.C.A. § 1052(f)). Why do you think the USPTO requires a descriptive mark to get a secondary meaning in order for the mark to be a registered trademark? What do you think of the above tests to determine describability and secondary meaning? Can you think of other methods to demonstrate descriptivity? Can you think of other factors you need to look at to determine if a brand has gained secondary importance in the market? In determining whether a mark has acquired secondary meaning, courts generally consider four factors: To be a mark that has acquired secondary significance, the mark must have become recognizable as a mark for certain services and/or goods from a single source.
That particular mark may later be eligible for registration once there is sufficient use to give you the opportunity to prove secondary meaning under applicable trademark law. A descriptive mark must acquire secondary meaning to be sufficiently distinctive to be protected by trademark law. Arbitrary, imaginative and suggestive terms do not require the mark to have a secondary meaning, as they have a sufficiently distinctive character. The first step in the analysis is to determine whether the mark is truly descriptive of the product or service. The trademark office or a court will use several tests to determine whether a trademark is descriptive (arbitrary and imaginative, suggestive or generic). A mark of secondary meaning appears when consumers have begun to identify a mark with a particular product over time. A descriptive mark that a company might not have been able to register initially can now obtain trademark status as a result of this association. The onus is on the party seeking to protect a name, word, term or trademark to prove that a secondary meaning is attached.