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- Black's Law Dictionary (Fifth Edition) defines the doctrine of secondary meaning for the purpose of trademark law as "[A] ... party through advertising or massive exposure ... [establishing] its trademark in the minds of consumers as an indication of origin from one particular source."
- In an unfair competition context, it is defined by this same work as "[an] association formed in the mind of the consumer which links an individual product with its manufacturer or distributor."
- A descriptive name, word, term, or mark will have achieved secondary meaning when a significant quantity of the consuming public for the goods and/or services in question understand it to refer exclusively to a particular party.
- That is, the term's primary meaning will have become surpassed in prominence by its secondary one.
- This is referred to as the "Primary Meaning Doctrine".
- Secondary meaning is established in a geographically descriptive mark when the mark no longer causes the public to associate the goods with a particular place, but to associate the goods with a particular commercial source.
- For a generic term to satisfy the "Primary Significance Test", it must no longer have the ability to serve as the name for the genus of goods or services involved. This is a very high standard.
- Courts examine the following factors in determining whether a name, word, term, or trademark has acquired secondary meaning:
- The length and manner of use;
- The nature and extent of advertising and promotion; and
- The efforts made in promoting a conscious connection between the name, word, term, or mark and the product, service, or business in the minds of consumers.
- The party seeking to protect a name, word, term, or mark bears the burden of proving that secondary meaning has attached.
(adapted from Boston Beer Co. v. Slesar Brewing Co., 9 F.3d 175 [1st Cir. 1993])
- Consumer surveys, their methodology, the inferences to be drawn from them and their evidentiary weight are frequently in issue when a determination regarding the existence of secondary meaning must be made.
- A mark's acquisition of secondary meaning will allow it to become registered even though registration would otherwise be prohibited under §1052(d) and (e) of the Trademark Act.
- Under §1052(f) of the Trademark Act, proof of substantially exclusive and continuous use of a mark for five years can be considered prima facie evidence that the mark has become distinctive.
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