To be treated as a trademark a mark must have a certain quantity of distinctiveness. A mark that is not inherently distinctive is entitled to legal protection only if the mark acquires a secondary meaning that distinguishes the goods/services it represents from the goods/services of another. A descriptive mark that is initially unregistrable may achieve trademark status and be subject to registration after sufficient use has been made to prove secondary meaning.
Secondary meaning arises when consumers have come to identify a trademark with its source over time. Acquired distinctiveness and secondary meaning are different terms for the same thing. That distinctiveness can be inherent (inherent distinctiveness) in the mark or it can be developed in the minds of the consumers (acquired distinctiveness). Acquired distinctiveness may be thought of as consumer recognition of the trademark as an identifier of source, sponsorship, affiliation, or other business relationship.
Establishing Secondary Meaning
Evidence may need to be gathered in order to meet the threshold required to establish secondary meaning. The evidence may consist of advertising and sales volume or consumer surveys. Secondary meaning attaches to a trademark when a majority of the public considers a term or logo to be an indicator of source and quality of a product, rather than merely descriptive of that product. Secondary meaning develops after long, continuous and exclusive use. It takes significant amounts of advertising and promotion to develop and maintain public awareness of brand or trademark identity in a descriptive mark.
The Lanham Act
The Lanham Act substituted the word ”distinctive” for the common law phrase ”secondary meaning” as being more readily understandable, but the term of art ”secondary meaning” retains its legal vitality. A mark which would not have been registrable under the 1905 Trademark Act because it was essentially descriptive, laudatory, geographically descriptive, or primarily merely a surname became registrable under the Lanham Act upon a showing that it had acquired distinctiveness through use as a trademark.
The following are the three basic types of evidence that may be used to establish acquired distinctiveness under the Lanham Act:
A claim of ownership of one or more prior registrations on the Principal Register of a mark which is the same as the mark in the pending application for goods or services which are the same or related to those named in the pending application.
A statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce thereof by the applicant for the five years before the date on which the claim of distinctiveness is made.
Actual evidence of acquired distinctiveness.
Protection Against Other Users of Confusingly Similar Marks
Proof that a descriptive mark has acquired secondary meaning will not automatically confer protection against other users of confusingly similar marks. Instead, the plaintiff must also demonstrate that its mark acquired secondary meaning prior to the other’s first use. The rationale for this is that a descriptive mark without secondary meaning does not designate source. If the senior user cannot demonstrate that its mark had acquired secondary meaning prior to the junior user’s first use, then the senior user cannot prove any infringement because there was no likelihood of confusion when the junior user began using a similar mark. However, a plaintiff may not have to prove that its mark acquired secondary meaning prior to an infringer’s first use in each and every geographical pocket if the plaintiff can demonstrate that its mark acquired secondary meaning nationally among a substantial portion of consumers and that the junior user was aware of the senior user’s mark.
Registration
If matter is inherently distinctive as a trademark, it is registrable on the Principal Register without evidence that it is recognized as a mark. If not inherently distinctive, a mark may be registered on the Principal Register only upon proof of acquired distinctiveness or secondary meaning. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services in commerce, then the matter in question is registrable on the Principal Register pursuant to the Lanham Act.