Secondary Meaning - United States Trademark Law Overview

Secondary Meaning

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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."

Both definitions are with regard to marks that, absent their heightened renown among consumers, would otherwise be descriptive or geographically descriptive.

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:
1. The length and manner of use;
2. The nature and extent of advertising and promotion; and
3. 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.
  - Registration on the Supplemental Register is typically used for this purpose.

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