Secondary meaning or acquired distinctiveness arises when a word or a design element was not inherently distinctive at the time of adoption of the mark, but later develops secondary meaning through use in commerce so that it is uniquely associated with one specific source. There is no precise rule for determining secondary meaning. Secondary meaning arises in three primary situations: (1) an applicant for trademark registration alleges its mark has acquired distinctiveness; (2) a plaintiff in an opposition or cancellation proceeding may claim secondary meaning in support of its claim for relief; and (3) a defendant faced with a claim that its mark is merely descriptive can raise secondary meaning as an affirmative defense.
In the first situation, an applicant may know its mark is descriptive of its goods or services and still is seeking registration on the Principal Register. If this is the case, the applicant should clearly state in its application that it is seeking registration pursuant to 2(f) based on a case of secondary meaning. The Applicant would have the burden of proof to establish secondary meaning.
In the second scenario, if a plaintiff in an opposition or cancellation proceeding is asserting a likelihood of confusion claim under Lanham Act §2(d), the plaintiff is required to have a proprietary right in the trademark they are asserting in their claim. This means they must have a federal trademark registration or prove that the mark has acquired secondary meaning. If the plaintiff's mark is not distinctive there is no basis to find likelihood of confusion. In an opposition proceeding, an applicant claiming acquired distinctiveness has the burden of proof. However, in a cancellation proceeding, challenging a mark on the Principal Register, the petitioner has the burden of proof to overcome the presumption of validity to show the mark is not distinctive, by a showing of a preponderance of evidence.
In the third scenario, the defendant can prove its mark is not merely descriptive if it has acquired distinctiveness. Secondary meaning is a question of fact. The Federal Circuit has declared that it will only reverse the Trademark Trial and Appeal Board's determination of secondary meaning if the decision is not supported by substantial evidence.
Determining how much evidence will be required to prove secondary meaning will first require you to know where your trademark falls on the continuum between suggestiveness and descriptiveness. See our web page entitled, Protecting Your Trademark, for an overview of the five basic trademark categories, including suggestiveness and descriptiveness. A word that is highly suggestive of the goods or services is less likely to be perceived as an identifier of source and there will be a heavier burden of proof to demonstrate the mark has acquired distinctiveness. The converse is true as well, if the mark is close to being suggestive, then less evidence is required to prove secondary meaning. This is often overlooked by practitioners and yet critical in the analysis. The same can be said for trade dress. A product feature that is relatively common in the trade is going to require a higher evidentiary threshold to prove secondary meaning. See our web page entitled, What Is Trade Dress And How Can It Be Protected?
Lastly, an applicant is often well advised to argue secondary meaning in the alternative to avoid possibly making an admission against interest. Such an argument would include the statement that the proposed mark is inherently distinctive without any showing of secondary meaning, but in the alternative if the mark identified in the application is not inherently distinctive, it has acquired secondary meaning and should register under Section 2(f) of the Lanham Act. If this argument is made, then on appeal the Trademark Trial and Appeal Board will treat each issue separately. The Board encourages applicants to argue secondary meaning in the alternative because it promotes judicial economy. The lawyers at our firm are experienced in determining if a mark is inherently distinctive. Please feel free to contact one of our New York trademark attorneys for a courtesy consultation.