Trademark Law: Secondary Meaning

In trademark law, marks are placed along a continuum of distinctiveness. If a mark is classified as not being inherently distinct, the mark must acquire distinctiveness in consumers’ minds to achieve trademark status. That acquired distinctiveness is called a “secondary meaning.” Secondary meaning is a new and additional meaning that attaches to a mark. The public then uses that mark to identify and distinguish a single commercial source. However, if a mark is not used to identify its source, it cannot possibly achieve a secondary meaning.

For a non-inherently distinct mark, such as a descriptive, geographic or personal name, distinctiveness must be acquired in the marketplace to achieve the protectable status of a trademark. For example, to achieve trademark status, the descriptive designation “Fast & Friendly” used to identify a commercial printing service needs to acquire a new, secondary meaning in consumers’ minds as indicating a single source of printing services. The original “primary meaning” describing a place to obtain prompt service with a friendly staff does not disappear because people are able to keep in mind both the primary and the secondary meaning at the same time. The primary meaning continues to describe a quality of the services while the new, secondary meaning identifies a single commercial source.

Secondary meaning does not require proof that consumers know the name of the company that owns the trademark; rather, it requires that consumers associate the mark with a single commercial source. Secondary meaning is also required for marks such as descriptive pictures, shapes, designs, and trade dress.

How is secondary meaning measured? The more descriptive and the less inherently distinctive the mark, the greater the need for evidence of secondary meaning. However, evidence of secondary meaning may consist of direct evidence (in the form of a customer survey) or circumstantial evidence (in the form of the input from the seller). Circumstantial evidence can consist of evidence of sales volume, length of time used, and the quantity and quality of advertising and promotion exposing consumers to the mark.

Also, it is important to note that secondary meaning does not represent a scale of measurement like “miles per hour” or “grams.” Rather, it is a particular point on a scale, i.e., a particular amount of trademark strength, such as the “freezing point of water.”