What is secondary meaning?
Secondary meaning arises when consumers have come to identify a trademark with a certain product over time. When this happens, a descriptive mark that a business would not have been able to register initially may achieve trademark status. The descriptive mark may be subject to registration at some time in the future after sufficient use has been made to prove secondary meaning under trademark law.
Proving a Descriptive Mark Is Used Enough to Have Secondary Meaning
A trademark attorney can help you gather the evidence you’ll need to meet the threshold required to establish secondary meaning. The evidence may include advertising and sales volume totals or the results of consumer surveys. Some examples include Xerox for copy machines, Bufferin for buffered aspirin and ChapStick for a lip balm, which were all descriptive, but ultimately achieved registration.
The primary case that recognized secondary meaning protection was Zatarian’s, Inc. v. Oak Grove Smokehouse, Inc. In this case, Zatarian’s had claimed trademark rights to the term fish-fri that were being infringed upon by other companies creating a similar product. The court found that the Zatarian’s term had gained secondary meaning rights in New Orleans where it originated. Therefore, the term could not be used by other companies as the name for their product.
Court Rulings on Secondary Meaning and Descriptive Marks
Descriptive terms are ordinarily not protectable as trademarks. They may be protected, however, if they have acquired a secondary meaning for the consuming public. The concept of secondary meaning recognizes that words with an ordinary and primary meaning of their own "may by long use with a particular product, come to be known by the public as specifically designating that product."
In order to establish a secondary meaning for a term, a plaintiff "must show that the primary significance of the term in the minds of the consuming public is not the product but the producer." The burden of proof to establish secondary meaning rests at all times with the plaintiff. This burden is not an easy one to satisfy, for a high degree of proof is necessary to establish secondary meaning for a descriptive mark.
Proof of secondary meaning is an issue only with respect to descriptive marks. Suggestive and arbitrary or fanciful marks are automatically protected upon registration, and generic terms are not protected even if they have acquired secondary meaning.