Secondary Meaning

Definition

Secondary meaning refers to the acquired distinctiveness of a trademark or trade dress that was originally non-distinctive or generic. Over time, through extensive use and promotion, a mark can become associated with a specific source or origin in the minds of consumers, gaining legal protection as a trademark even if it was not inherently distinctive.

5 Must Know Facts For Your Next Test

1. Secondary meaning is an important concept in U.S. trademark law, as it allows for the legal protection of marks that were originally non-distinctive.
2. Establishing secondary meaning requires proving that the mark has become uniquely associated with the source of the product or service in the minds of consumers.
3. The level of distinctiveness of a mark is a key factor in determining the scope of trademark protection, with inherently distinctive marks receiving broader protection.
4. Acquiring secondary meaning can be a lengthy and costly process, often requiring extensive advertising, promotion, and consumer recognition over an extended period.
5. Secondary meaning is a crucial consideration in the context of trade dress protection, as the overall visual appearance of a product must acquire distinctiveness to be protected as a trademark.

Review Questions

• Explain how secondary meaning relates to the concept of distinctiveness in U.S. trademark law.
  • In the context of U.S. trademark law, the concept of secondary meaning is closely tied to the spectrum of distinctiveness. Marks that are inherently distinctive, such as arbitrary or fanciful terms, are automatically eligible for trademark protection. However, marks that are initially non-distinctive, such as generic or descriptive terms, can acquire distinctiveness through secondary meaning. This means that over time, through extensive use and promotion, the mark becomes uniquely associated with the source of the product or service in the minds of consumers, allowing it to be legally protected as a trademark despite its lack of inherent distinctiveness.
• Describe the process of establishing secondary meaning for a trademark or trade dress.
  • Establishing secondary meaning for a trademark or trade dress requires demonstrating that the mark has become uniquely associated with a specific source in the minds of consumers. This typically involves providing evidence of extensive advertising, promotion, and consumer recognition over an extended period. Factors that can be considered include the length and exclusivity of use, the amount of sales and advertising expenditures, consumer survey evidence, and the degree of actual source identification by consumers. The more significant the investment and the stronger the consumer association, the more likely a court will find that the mark has acquired secondary meaning and is entitled to trademark protection.
• Analyze the importance of secondary meaning in the context of trade dress protection.
  • Secondary meaning is a crucial consideration in the context of trade dress protection under U.S. trademark law. Trade dress refers to the overall visual appearance and packaging of a product, including its size, shape, color, texture, graphics, and design. Unlike inherently distinctive trademarks, trade dress is generally not eligible for automatic protection and must acquire distinctiveness through secondary meaning. This means that the trade dress must become uniquely associated with the source of the product in the minds of consumers, rather than merely serving an aesthetic or functional purpose. Establishing secondary meaning for trade dress can be a significant challenge, as it requires demonstrating that the overall appearance of the product has become a source identifier rather than just an attractive design. The importance of secondary meaning in trade dress protection underscores the need for companies to carefully develop and promote the distinctive elements of their product packaging and design.

Related terms

Inherent Distinctiveness: The inherent ability of a trademark or trade dress to immediately identify the source of the product or service, without requiring secondary meaning.

Trade Dress: The overall visual appearance and packaging of a product, including its size, shape, color, texture, graphics, and design.

Generic Term: A word that merely describes the general class or category of the product or service, and cannot function as a trademark.