How Does One Establish Secondary Meaning In A Trademark Infringement Case?

Overview of Trademarks And Establishing Secondary Meaning In Trademark Infringement Cases

Categories of Trademarks

In order to serve as a trademark, a trademark must be distinctive. In other words, it must be capable of identifying the source of a particular good or service. In making this determination, the lawyers focusing on trademark law group marks into four categories:

  1. arbitrary or fanciful;
  2. suggestive,
  3. descriptive, or
  4. generic.

The degree of legal protection will depend on the category in which marks falls within.

An arbitrary or fanciful trademark is a trademark that bears no logical relationship to the underlying product. For example, the words “Toyota,” “Chevron,” and “Verizon” bear no inherent relationship to their underlying products (respectively, cars, gasoline, and telephones.) Arbitrary or fanciful marks are inherently distinctive and are given a high degree of protection.

A suggestive trademark is a trademark that evokes or suggests a characteristic of the underlying good. For example, WorkPerfect is suggestive of a word processing program, but it does not specifically describe the underlying product. So, too, with the word “coppertone” and sun-tan lotion. Some exercise of imagination is needed to associate the words with the underlying products. At the same time, however, the word is not totally unrelated to the underlying product. Suggestive marks are inherently distinctive and are given a high degree of protection.

A descriptive trademark is a trademark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients). For example, “Holiday Inn,” “All Bran,” and “Vision Center” all describe some aspect of the underlying product or service (respectively, hotel rooms, breakfast cereal, optical services). They tell us something about the product. Descriptive marks are not inherently distinctive and are protected only if they have acquired “secondary meaning.” Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage.

Finally, a generic trademark is a trademark that describes the general category to which the underlying product belongs. For example, the term “Computer” is a generic term for computer equipment. Generic marks are entitled to no protection under trademark law. Thus, a manufacturer selling “Computer” brand computers (or “Apple” brand apples, etc.) would have no exclusive right to use that term with respect to that product. Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product. Giving a single manufacturer control over use of the term would give that manufacturer too great a competitive advantage. Under some circumstances, terms that are not originally generic can become generic over time (a process called “genericity“), and thus become unprotected.

Establishing Secondary Meaning for Descriptive Marks

As discussed above, the owner of a descriptive trademark must establish “secondary meaning” in order to have the trademark protected by trademark law. Secondary meaning means that the consuming public primarily associates that trademark with a particular producer, rather than the underlying product. Thus, for example, the term “Holiday Inn” has acquired secondary meaning because the consuming public associates that term with a particular provider of hotel services, and not with hotel services in general. The public need not be able to identify the specific producer; only that the product or service comes from a single producer.

In determining whether a trademark has acquired secondary meaning, the courts consider several factors: Direct Evidence

  1. direct consumer testimony and
  2. consumer surveys; and Circumstantial Evidence
  3. exclusivity, length, and manner of use,
  4. amount and manner of advertising,
  5. amount of sales and number of customers,
  6. established place in the market,
  7. proof of intentional copying.

“Proof of intentional copying” is often used to show secondary meaning, particularly in cases where a former employee or business partner left the plaintiff’s company to start a competing business. In those cases, the trademark lawyer representing the plaintiff may argue that, even in the absence of consumer testimony and consumer surveys, the relationship with the trademark defendant shows that he or she intentionally sought to capitalize on the plaintiff’s trademark. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609 (9th Cir. 1989) (“proof of copying strongly supports an inference of secondary meaning”); Audio Fidelity, Inc. v. High Fidelity Recordings, Inc., 283 F.2d 551, 557-58 (9th Cir. 1960); Cosmos Jewelry Ltd. v. Po Sun Hon, Co., 2004 WL 1515943, *9 (C.D. Cal. 2004) (“There is no logical reason for the precise copying save an attempt to capitalize upon a secondary meaning that is in existence”) (citations and quotations omitted).

If the trademark plaintiff chooses to obtain a consumer survey, the survey need not be based on the general public – but only the relevant group of consumers – i.e., consumers who use the particular product. See Centaur Communications, Ltd. v. A/SM Communications, Inc., 830 F.2d 1217 (2d Cir. 1987) (“it is only necessary to show that a substantial segment of the relevant group of consumers made the requisite association between the product and the producer”) (emphasis added); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:46 (4th ed. 2009) (secondary meaning “not need be proven among the general public if a product is targeted at only a specific segment of the general public”).

The area of law relating to trademarks and trade names is a complicated area requiting expertise. Our Los Angeles lawyers focus on trademark and other forms of intellectual property. Please call our trademark lawyers for more information.

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