Secondary Meaning in Board Proceedings
The terms "secondary meaning" and "acquired distinctiveness" are used interchangeably. For basic information pertaining to these concepts, see our firm pages entitled, What Is Acquired Distinctiveness & Secondary Meaning and Situations Where The Issue Of Secondary Meaning Arises. This page will review some of the issues encountered when involved in a proceeding before the Trademark Trial and Appeal Board. Whether a mark has acquired secondary meaning is a question of fact. In an opposition proceeding (a proceeding that occurs before the mark registers), an applicant claiming the mark has acquired distinctiveness has the burden to prove secondary meaning by a preponderance of the evidence. However, once the mark registers (even if it registers under 2(f) of the Lanham Act.), there is a presumption under the law that the mark is valid and either inherently distinctive or has acquired distinctiveness. Therefore, in a cancellation proceeding, the petitioner has the burden to overcome the presumption of validity by demonstrating, by a preponderance of the evidence, that the mark has not acquired distinctiveness. To challenge a registered mark on grounds that the mark is merely descriptive, a petitioner must bring the action before the mark is five years old.
How much evidence will be required to demonstrate secondary meaning will depend on how descriptive the mark is when evaluated. The rationale for this rule is that a mark that is highly descriptive is less likely to be perceived by consumers as a source indicator, and will carry a heavier burden to prove secondary meaning. At what point and time is relevant for assessing secondary meaning will depend on whether the proof is being submitted in an opposition or cancellation matter. For example, in an opposition proceeding, the Board will consider facts after the mark was adopted, and after the filing date of the application up until the close of the testimony period. In a cancellation proceeding, the petitioner must show either that the mark was merely descriptive as of the date of registration or as of the time the issue is under consideration by the Board.
Evidence of secondary meaning can be circumstantial or direct. The primary methods to show secondary meaning are (1) ownership of prior registrations of the same mark; (2) substantially exclusive and continuous use of the mark in commerce for five years or more (third-party use of the mark undermines a claim for secondary meaning); (3) through circumstantial evidence such as the amount of sales, length of time used, manner of use (exclusivity of use), unsolicited media coverage; and use in advertising (amount of advertising expenditures); and (4) by introducing direct evidence, such as consumer surveys, declarations or affidavits of consumers.
Another matter that could be introduced into evidence (assuming it exists) is intentional copying. This could be probative of secondary meaning as long as the term being copied is not descriptive. If the term is descriptive of the goods or services, the third party copying may be attempting to inform the consumer of certain qualities. Copying a generic or descriptive term or a functional design is allowed. Conversely, if the term is fanciful, arbitrary or suggestive the copying could be an effort of a third party to take advantage of the trademark owner's goodwill and reputation. Another factor that may be considered is enforcement of trademark rights. Proof of enforcement is not necessarily evidence of secondary meaning because the third-party user may have agreed to refrain from use only to avoid time consuming and costly litigation, but will be considered.
Lastly, prominent use of a trademark is an additional factor to review. Evidence showing use of the mark in a manner that will allow the relevant public to view the mark as a brand is important proof of secondary meaning. See Roux Laboratories, Inc. v. Clairol, Inc. 427 F.2d 823, 166 USPQ 34 (CCPA 1970), where it was held that the phrase HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE had acquired secondary meaning. It's important to note that use of the ™ or ® symbols in connection with the goods or services is evidence of the mark owner's efforts to educate the consumer that the term is a trademark for its goods or services and/or to purposely indicate the mark stands for a single source. See General Foods Corp. v. MGD Partners, 224 USPQ 479 (TTAB 1984), where the Board held the use of the mark HIGH YIELD for coffee acquired distinctiveness due the use of the ™ symbol in conjunction with the mark in large font on the packaging, and this caused consumers to recognize it as a brand and not a descriptive term. Whether a mark will be deemed to have developed secondary meaning will depend on a variety of factors, if you have questions about the inherent or commercial strength of your mark, please contact the firm for a courtesy consultation.