Tuesday, February 12, 2013

Secondary meaning in trademarks.

In the preceding posts, I mention how secondary meaning is a way in which geographically descriptive or deceptively misdescriptive trade names (“marks”) can gain federal trademark protection. I do not delve into the meaning of “secondary meaning.”

Secondary meaning is basically recognition in the marketplace. If a mark is not suggestive, arbitrary or fanciful enough to merit federal trademark protection initially, recognition in the marketplace is a way that a mark can overcome that obstacle. The more descriptive a mark is, the more evidence of secondary meaning is required.

Secondary meaning is established when the primary significance of a mark among consumers is to identify the source of the product rather than the product itself. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982). When a markholder claims secondary meaning for an otherwise unregistrable trademark, the way an applicant substantiates his or her assertion is through:

- Affidavits or declarations
- Depositions or other evidence showing duration of use of the mark in commerce
- Advertising expenditures in connection with use in commerce
- Letters or statements from the trade or public averring recognition in the marketplace.

37 C.F.R. § 2.41(a). There are occasions when a bad mark can overcome descriptiveness, geographic descriptiveness or deceptive misdescriptiveness, but substantial evidence of secondary meaning is required. I cannot foresee a situation when establishing secondary meaning would be easier than having an inherently distinctive trade name from the beginning.

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