Secondary Meaning

Secondary Meaning

A doctrine of trademark law that provides that protection is afforded to the user of an otherwise unprotectable mark when the mark, through advertising or other exposure, has come to signify that an item is produced or sponsored by that user.

Under trademark law a mark associated with a marketed product generally cannot receive full trademark protection unless it is distinctive. Trademark protection gives the holder of a mark the exclusive right to use that mark in connection with a product.

Full trademark protection is given when the U.S. Patent and Trademark Office places the mark on the principal register of trademarks. Suggestive, Arbitrary, and fanciful marks distinguish a product from other products, so they automatically qualify for the principal register. Descriptive and generic marks ordinarily do not qualify for the principal register. A person may not, for example, claim the right to the word "fine" in connection with a product because the word is merely descriptive. A descriptive or generic mark may, however, be placed on the supplemental register, which gives the holder of the mark a certain measure of trademark protection. If the mark acquires a secondary meaning after five years of continuous, exclusive use on the market, the mark may be placed on the principal register (15 U.S.C.A. § 1052(f)).

A descriptive or generic mark attains a secondary meaning if the producer so effectively markets the product with the mark that consumers come to immediately associate the mark with only that producer of that particular kind of goods. To illustrate, assume that an apple grower markets red apples under the term "Acme." Because the term is generic, it would not qualify for full trademark protection at first. If, however, customers immediately recognize Acme apples as the apples produced by that grower, after five years the producer may prevent all others from using the mark "Acme" in connection with red apples.

Under 15 U.S.C.A. § 1052(a)–(d), (f), immoral or scandalous marks, national symbols, and names of living figures cannot acquire trademark protection, even through secondary meaning. Surnames generally are not given trademark protection, but a surname may qualify for protection if it acquires a secondary meaning (Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145, 1955 WL 6450 [Com'r 1955]).

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References in periodicals archive ?
Once secondary meaning for a surname has been established, it can be registered and used to stop others from using their own name in connection with similar goods or services, provided such use might cause consumer confusion.
Schroeder claims that evening (erev in Hebrew) and morning (boker in Hebrew) have a secondary meaning as well.
Absent evidence that a scent mark has attained secondary meaning (an expensive feature both to establish and ultimately to prove), the Trademark Manual of Examining Procedure provides that scent marks are registrable on the Principal Register under Section 2(f) or on the Supplemental Register.
Descriptive marks are arguably capable of protection only after acquiring of secondary meaning and we consider such marks as constituting a risky investment for brand owners on the basis that acquiring secondary meaning requires substantial investment.
In trademark cases, surveys commonly are used to establish secondary meaning and likelihood of confusion.
And then there is the secondary meaning, that is much more open to interpretation and much more personal, which is the 'how' to go about doing this: Which aspects of society or behavior are sexist or uphold patriarchy?
In addition, the Judge ruled that Converse has no common law trademark rights in the Chuck Taylor midsole because the design is not distinctive, not famous and has failed to acquire secondary meaning.
In the nineteenth century the "irony mark," a small, elevated, backward-facing question mark, was unsuccessfully proposed to signify that a sentence has a secondary meaning, such as irony or sarcasm.
distinctive or has acquired secondary meaning (and is thus protectable)
proof of secondary meaning before registering them as standard character
That immediately took on a secondary meaning, a sexual connotation.
The appeals court said GSMI "has presented a preponderance of evidence to prove its claim over the mark 'ginebra,' and that the same has acquired a secondary meaning in trademark laws.

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