The secondary meaning doctrine in trademark law allows marks that are not inherently distinctive to still obtain common law trademark rights and a trademark registration at the USPTO.
In order for something to obtain trademark rights, it must be inherently distinctive or have acquired distinctiveness. Acquired distinctiveness is commonly referred to as “secondary meaning.” The reason why it is called secondary meaning is because the trademark may consist of descriptive or non-distinctive elements, but over time those elements acquire a secondary meaning that allows consumers to know who produces the product or offers the services under the trademark.
Inherently distinctive trademarks are fanciful or arbitrary trademarks, such as KODAK for cameras or APPLE for computers. However, for descriptive, surname, and color trademarks, trademark owners must show their trademarks have a secondary meaning in order to receive any trademark protection.
Definition of "secondary meaning" in the Restatement (third) of Unfair Competition
Proving Secondary Meaning
In order to receive trademark protection for non-distinctive trademarks, trademark owners must show their trademark has gained secondary meaning. To prove secondary meaning, the trademark owner must provide evidence that relevant consumers, when they encounter the trademark, think of the manufacturer of the product or provider of the services used in connection with the trademark. The best way to offer this sort of evidence is by conducting surveys of relevant consumers that show they view the relevant trademark as a source identifier. In addition, trademark owners must show that they exclusively used the trademark in the relevant area for common law trademark rights and nationwide to receive a United States Patent and Trademark Office (USPTO trademark registration. Other relevant evidence to show secondary meaning includes how many years the trademark has been used and how many sales and revenue were made using the trademark.
Descriptive Trademarks and Secondary Meaning
Descriptive trademarks are not considered inherently distinctive and therefore require trademark owners to show secondary meaning. An example of a descriptive trademark case before the Trademark Trial and Appeal Board that was appealed to federal courts involved the trademark QUICK-PRINT for printing services. The QUICK element of the trademark is descriptive of the services they provide, which is speedy printing services. And the PRINT element of the trademark is generic for printing services. In order to gain trademark rights, the owner of QUICK-PRINT would need to prove it has a secondary meaning.
In proving QUICK-PRINT had acquired secondary meaning, the owner of the trademark submitted evidence to the USPTO that the trademark was used for twenty years and that customers associated the trademark with the store itself and not as a merely descriptive term. Ultimately, the trademark application was rejected because there was too much evidence of other companies using same or similar trademark across the United States. As important as it is to show customers view a descriptive trademark as a source identifier, it is crucial to be using the descriptive trademark exclusively.
Color Trademarks and Secondary Meaning
Similar to descriptive trademarks, color trademarks are not inherently distinctive. In order to receive trademark protection for the color on a product, the trademark owner must prove the color has a secondary meaning among consumers that allows them to identify the owner of the trademark. One of the most famous color trademarks is the color pink for home insulation, which is owned by Owens Corning. For more about color trademarks, visit our blog on the topic.
Trademark registration for the color pink of home insulation, as seen on the USPTO TESS database and the specimen submitted with the latest renewal
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