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Secondary meaning

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Overview Edit

Under U.S. trademark law, the term secondary meaning is proof that a trademark or service mark has become distinctive as applied to the applicant's goods or services in commerce. "This showing requires the trademark holder to establish that 'in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself.'"[1]

"Proof of secondary meaning entails vigorous evidentiary requirements," ultimately, "that a 'substantial portion of the consuming public associates [the mark] specifically with [the plaintiff's] business'" and, furthermore, that "these consumers base purchasing decisions upon seeing the trademark on the product."[2] The existence of secondary meaning is an issue of fact, but, like the classification of a mark, may be decided on summary judgment in an appropriate case.[3]

Purpose and significance Edit

The purpose and significance of secondary meaning may be described as follows:

A term which is descriptive . . . may, through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer. 1 Nims, Unfair Competition and Trademarks at §37 (1947). This is what is known as secondary meaning.

The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer (citations omitted). This may be an anonymous producer, since consumers often buy goods without knowing the personal identity or actual name of the manufacturer.[4]

There are three basic types of evidence that may be used to establish acquired distinctiveness under §2(f):

(1) A claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application (see 37 C.F.R. 2.41(b); TMEP §§1212.04 et seq.);

(2) A statement verified by the applicant that the mark has become distinctive of the applicant's goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made (see 37 C.F.R. 2.41(b); TMEP §§1212.05 et seq.);

(3) Actual evidence of acquired distinctiveness (see 37 C.F.R. 2.41(a); TMEP §§1212.06 et seq.).

The applicant may submit one or any combination of these types of evidence. Depending on the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years' substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness. The applicant may then submit actual evidence of acquired distinctiveness.[5]

References Edit

  1. Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir.2006)(full-text) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982))(full-text).
  2. Flynn v. AK Peters, Ltd., 377 F.3d 13, 20, 71 U.S.P.Q.2d (BNA) 1810 (1st Cir. 2004)(full-text).
  3. See id.
  4. Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 U.S.P.Q. (BNA) 820, 823 (S.D.N.Y. 1972) (full-text).
  5. TMEP §1212; 15 U.S.C. §1052(f).

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