What is secondary meaning?
For a mark to be protected as a trademark, it must be distinctive. If the mark is not inherently distinctive, it can acquire the necessary distinctiveness through the development of secondary meaning. Secondary meaning shows that the mark has some meaning to the public beyond the obvious meaning of the terms or images of mark itself. In other words, if the primary significance of the mark in the consuming public’s mind has become the source of the goods or services, rather than the product itself, it has acquired secondary meaning.
The issue of secondary meaning most often comes up during infringement lawsuits or in opposition or cancellation proceedings before the Trademark Trial and Appeal Board. There are two principal ways that secondary meaning can be established/shown in these types of situations. The first way is where a federally registered trademark has become incontestable through exclusive and continuous use for five years – such an incontestable mark is deemed to have the requisite secondary meaning. In addition, however, a trademark owner can show that a mark has acquired secondary meaning by supplying evidence of the public’s perception of the mark. There are a variety of factors that can be looked at here, including (but not limited to): (i) the amount and type of advertising which incorporates the mark; (ii) the volume of sales of the associated product; (iii) the length and manner of use of the mark; (iv) direct consumer testimony; and (v) surveys.
However, it should be understood that when discussing whether a mark has acquired secondary meaning, the focus is not on what things the owner has done, but on how effective those things were - thus, surveys are very important because they show the impact of the mark’s owner’s actions on the consuming public. That is, surveys can show whether a spectrum of the consuming public recognizes the mark as being distinctive.
Examples of marks that were not originally protectable but which have since been found to have acquired the necessary secondary meaning including KOOL (for menthol cigarettes) and CHAP STICK (for lip balm).