A trademark acquires secondary meaning when the consuming public primarily associates the trademark with the source of the goods or services rather than the goods or services themselves. This typically occurs through extensive and exclusive use of the trademark in the marketplace over a significant period of time. Additionally, advertising and promotional efforts can also contribute to the development of secondary meaning. Once a trademark has acquired secondary meaning, the United States Patent & Trademark Office (USPTO) may approve registration on the Principal Register whereby the trademark will be entitled to a broad scope of protection.
Achieving secondary meaning in a non-distinctive mark can be challenging. Examples of non-distinctive marks include descriptive terms, personal names, geographically descriptive terms, laudatory terms, slogans, trade dress, or even colors.
Requirements for Establishing Secondary Meaning
There are several requirements that must be met in order to establish secondary meaning in a trademark:
The mark must have been in use for a significant period of time, usually at least five years, in connection with the goods or services for which registration is sought.
The mark must be distinctive and not merely descriptive of the goods or services.
The consuming public must primarily associate the mark with the source of the goods or services, rather than the goods or services themselves.
Advertising and promotional efforts by the trademark owner should have been extensive and focused on creating an association between the mark and the source of the goods or services.
Consumer surveys can be used as evidence to show that a substantial portion of the consuming public associate the mark with a particular source.
Any other relevant evidence that would indicate that secondary meaning has been acquired.
The standard for establishing secondary meaning is high and requires a showing of a high degree of consumer recognition and association of the mark with the source of the goods or services.