What is Secondary Meaning/Acquired Distinctiveness?
When it comes to choosing a trademark, it is important to understand that trademarks are categorized on the Spectrum of Distinctiveness. There are five categories of marks from weakest to strongest: generic, descriptive, suggestive, arbitrary and fanciful. Generic terms may not be trademarked.
Descriptive marks, which are the second weakest, may become eligible for trademark protection under the Lanham Act if they acquire a secondary meaning (i.e. acquires distinctiveness). A secondary meaning is when a descriptive term having a common meaning, takes on a different meaning so that, over time, in the minds of the public, the term becomes synonymous with an owner’s specific goods or services. An owner is required to prove that the term’s secondary meaning is associated with the owner and not the goods or services in general. An example of a descriptive mark that has acquired a secondary meaning is SHARP for the brand of televisions. While the general public knows the meaning of the term “sharp” as a general descriptor, that is descriptive of the picture on the television, it has acquired a secondary meaning, and is now associated with the specific brand of televisions, not just televisions in general.
When determining whether or not a mark has acquired distinctiveness the courts consider four factors: (1) the length and nature of a mark’s use, (2) the nature and extent of advertising and promotion of the name, (3) the efforts of the owner to promote a conscious connection between the name and the business and (4) the degree of actual recognition by the public that the name designates the owner’s product or service.
Regarding the length and nature of a mark’s use, the mark must be used for a minimum period of five years exclusively and continuously in order to be considered eligible for protection. However, even if the owner has met the five-year minimum period of exclusive and continuous use, it is not a guarantee that the Trademark Office and courts will accept that the mark has acquired distinctiveness.
In terms of the second factor, the Trademark Office and courts consider the extent to which the owner advertised and promoted the name in connection with his/her goods or services. Examples of what courts consider when assessing this factor include the geographical extent of the advertisements and promotional efforts, advertising expenditure reports and the number of sales or consumers in correlation with the advertisements and promotions.
The third factor, the owner’s efforts to promote a conscious connection between the name and the business, relates to what steps the owner has taken to make his/her mark synonymous with his/her goods or services. Promotional films highlighting the product or service’s unique strengths and qualities in connection to the mark are an example of this.
Finally, the fourth and often most telling factor is the degree of actual recognition by the public that the name designates the owner’s product or service. Actual recognition can be proven through direct evidence such as consumer testimonies and market surveys. Testimonies or signed statements by other providers in the industry are powerful indicators of actual recognition as well.
Though these are the four criteria that the Trademark Office and courts assess when considering if a mark has acquired secondary meaning, there are no absolutes. Meaning, an owner who can provide minimal evidence to support each of the four components may be denied protection, while an owner who can provide strong evidence for three of the four components may be deemed eligible for protection. If the Trademark Office or a court fails to find secondary meaning strong enough for federal protection, an owner can continue to use his/her mark under common law use.