by Jonathan Schmig
May 11, 2015
Trademark protection in the U.S. requires three things: that the mark be distinctive; that the mark be nonfunctional; and that the mark be used in commerce. Obviously, thereâ€™s a lot to be said of all those topics, but for the purposes of this article, Iâ€™m going to focus on one specific part of just one of them: something called â€śacquired distinctiveness,â€ť alternatively known as â€śsecondary meaning.â€ť
Basically, itâ€™s a safety net. Trademarks require â€śdistinctivenessâ€ťâ€”that is, a valid trademark is one that can distinguish the good or service to which it is affixed from the goods or services of competitors. â€śAppleâ€ť for computers is a very distinctive mark because itâ€™s random (but more on that in a bit), and you can easily distinguish between Apple, Inc.â€™s products and the products of rivals through the use of that â€śAppleâ€ť mark (the word or the logo).
But what to do when your mark isnâ€™t objectively distinctiveâ€”something trademark law refers to as â€śinherently distinctiveâ€ťâ€”but still distinguishes your good or service from competitors? A good hypothetical example might be a company that sells â€śPink Shoes,â€ť a line of shoes that are pink. Objectively speaking, thereâ€™s nothing about that mark that may distinguish the companyâ€™s product from other companies selling pink-colored shoes. But if, over time, the public has nonetheless come to identify the term â€śPink Shoesâ€ť with the products of that specific company, then it has become distinctive and has earned the ability to distinguish and identify source. This is secondary meaning.
A lot hinges on whether a mark has (or needs) secondary meaning. Many jurisdictions require very strong showings of secondary meaning in order to establish it. And that can be extremely difficult if the brand isnâ€™t a famous one like McDonaldâ€™s or Wendyâ€™s.
The Lanham Act (the Bible of U.S. trademark law) doesnâ€™t define secondary meaning, but the Restatement (Third) of Unfair Competition does: a mark has achieved secondary meaning if, â€śas a result of its use, prospective purchasers have come to perceive it as a designationâ€ť that identifies the good or service. (Â§ 13.) By and large, the specifics of and tests for distinctiveness (along with functionality, and use) all derive from cases, not law.
The Lanham Act does have some reference to secondary meaning, most importantly in Â§ 2, which details the types of marks that are prohibited from protection. Some prohibitions are absoluteâ€”Â§ 2(a) denies protection to â€śscandalousâ€ť or â€śdisparagingâ€ť marks (think Redskins); Â§ 2(b) denies protection to marks that are merely a countryâ€™s flag. But others are specifically exempted from such prohibition (by Â§ 2(f)), if they can show they have â€śbecome distinctive.â€ť The most important such exception (and by far the most litigated) is for marks that are â€śmerely descriptive.â€ť
Before diving into that, however, I would like to note three things. One is that there are multiple types of trademarks, including word marks, logo marks, and trade dress. I will discuss them separately, but the analysis can often bleed. Two, is that, in trademark law, the vital inquiry is something called the Primary Significance Test: what matters is that the public associates the mark with the producer, not the product. The mark must be capable of identifying source.
And three is that â€śsecondary meaning,â€ť more than many other aspects of trademark law (and IP law, and law in general), is very fact-specific. As youâ€™re about to see, that is unfortunately the repeating theme of this article. There are very few brightline rules when it comes to analyzing secondary meaning, which has resulted in many courts applying slightly differing standards and frameworks to the cases that come before them.
That said, the Restatement (Third) of Unfair Competition does list a series of factors that most courts will consider to varying degrees. (Â§ 13, Comment (e).) These factors are split among two camps: either â€śdirect evidenceâ€ť (surveys, proof of actual consumer confusion, etc.) or â€ścircumstantial evidenceâ€ť (how long the mark has been in use, ads and promos that highlight the mark, etc.). However, direct evidence is often hard to come by (surveys are expensive, after all), so many cases will hinge on circumstantial factors like length of use and the defendantâ€™s intent in implementing their allegedly infringing mark.
A word mark is a name or slogan. The name can be a business name or a product/service name. â€śLegoâ€ť is a company that sells toys; â€śLegoâ€ť is also the name of the toy that company sells. Competitors, therefore, are precluded from either naming their business â€śLegoâ€ť or from making a product called a â€ślego.â€ť
In the U.S., the most authoritative case we have on the subject of distinctiveness in word marks is Abercrombie, which established the appropriately named â€śAbercrombie spectrum.â€ť According to this spectrum, there are five categories a potential mark could fit into: generic; merely descriptive; suggestive; arbitrary; or fanciful. The first is obviously the worst. If a mark is â€śgeneric,â€ť it cannot be protected as a trademark, period. (For example, a brand of beer called â€śBeer.â€ť) Meanwhile, the latter three (suggestive, arbitrary, and fanciful) are all â€śinherently distinctiveâ€ť: they are marks that are either random or made-up or simply not obvious, so that the mark owner doesnâ€™t need to jump through any extra hoops in establishing whether it is â€śdistinctive.â€ť This would be â€śAppleâ€ť as applied to computers (but not â€śAppleâ€ť as applied to a business selling apples), or â€śKodak,â€ť or â€śPiggly Wiggly.â€ť
The only category left, thenâ€”so-called â€śmerely descriptiveâ€ť marksâ€”is the only one that deals with secondary meaning. A merely descriptive mark is basically exactly what it sounds like. Itâ€™s one step up from something â€śgeneric,â€ť but not quite enough of a leap to get to â€śsuggestive.â€ť And since getting a mark deemed â€śinherently distinctiveâ€ť is less burdensome than having to go through the rigmarole of proving â€śacquired distinctiveness,â€ť any trademark owner would want their mark to be deemed suggestive, rather than merely descriptive.
But what, really, is the difference between the three? Simply put, no one knows. Itâ€™s one of degree. Itâ€™s fact-specific. The swing from suggestive down to merely descriptive and down further to generic is a quick and unclear one.
There is no hard and fast rule as to the proper classification under Abercrombie, but there is some guidance. One 5th Circuit case articulated four different tests that courts have used in trying to figure out if a mark was merely descriptive (and therefore would require a showing of secondary meaning) versus suggestive (and therefore wouldnâ€™t). One such test is the â€śimagination testâ€ť: if the mark â€śrequires imagination, thought, or perceptionâ€ť to connect the mark to the product (in the mind of the consumer), then it is probably suggestive, and not merely descriptive. Something like â€śBlu-Rayâ€ť or â€śCoppertoneâ€ť would satisfy this test and be deemed suggestive.
Again, this is all highly fact-specific, and, worse, itâ€™s all extremely important to determine. If a mark is deemed â€śgenericâ€ť (and not â€śmerely descriptiveâ€ť), then it cannot be protected, regardless of what the public thinks; if a mark is deemed â€śmerely descriptiveâ€ť (and not â€śsuggestiveâ€ť), then it can only be protected by showing that the public identifies the mark with the specific producer, something many courts enforce by an arduous and rigorous standard.
Plus, there are many other factors that go into the analysis. Misspellings are not enough to â€śliftâ€ť a term from generic to merely descriptive (or merely descriptive to suggestive). â€śLiteâ€ť for a light beer, for instance, isnâ€™t protectable. Nor is â€śFish-Friâ€ť for a fish fry.
Just because a mark is really just several otherwise generic marks put together, the new mark is not necessarily automatically generic as well. It could instead be â€śmerely descriptiveâ€ť (or better) as a combination. This is due to the anti-dissection rule in trademark, which generally holds that a mark must be assessed as a whole, and canâ€™t be â€śpicked apartâ€ť during analysis of whether it qualifies as valid.
Additionally, the U.S. has something called the â€śdoctrine of foreign equivalentsâ€ť when it comes to foreign words. A word mark is not â€śmerely descriptiveâ€ť or â€śsuggestiveâ€ť in the U.S. simply by virtue of being a word from another language. (Branding your beer â€śCerveza,â€ť for instance.) You must translate the meaning of the word into English to determine whether the mark is generic or not. The implication, however, is that if the mark is â€śmerely descriptiveâ€ť in the foreign language, even if the foreign jurisdiction does not utilize the Abercrombie spectrum, then it will be analyzed as such in the U.S.
Logos are trademarks that are capable of identifying the product/source without having to use words (although words may sometimes be a part of the logo). Logos, like word marks, can have â€śinherently distinctivenessâ€ť or â€śacquired distinctiveness,â€ť or can be generic. However, the Abercrombie spectrum hasnâ€™t worked as well in the realm of logosâ€”how does one truly decide if a cartoon bear is â€śmerely descriptiveâ€ť versus â€śsuggestiveâ€ť?
For that reason, courts have looked elsewhere for guidance on the determination of logo distinctiveness. One 1977 case listed four factors to consider, including whether the logo was a â€ścommon shapeâ€ť or basic design, and whether it was a mere decoration. But there wasnâ€™t much guidance in figuring out whether secondary meaning was required. That case was more focused on whether inherent distinctiveness existed.
Amazing Spaces was one of many cases that tried to grapple with the question of secondary meaning in the context of logos. No test was articulated, but the (case-specific) factors led the court to the conclusion that the five-pointed star in a circle at issue in the case did not have acquired distinctiveness, in part because even though it had been in use for a long time and was even featured in ads, the ads never pointed specifically to the logo as a mark, but rather used the logo in a backseat role, as â€śdecoration.â€ť Nonetheless, the plaintiff in that case was also seeking trade dress protection, and the trade dress there was protectable, even though the isolated logo was not.
So then, what is trade dress?
Trade dress is basically the overall visual impression or appearance of something that is capable of indicating source. That â€śsomethingâ€ť can be a product package (e.g., detachable labels, or the box a product comes in), a product design (the design of a shoe, or guitar, or phone, or anything), or even a businessâ€™s â€śtotal look-and-feelâ€ť (like, for instance, the design of the building, the menu layout, the uniforms worn, etc.).
Two Pesos, a 1992 Supreme Court case, specifically held that â€śtrade dress,â€ť although not explicitly protected in the language of the Lanham Act, was nevertheless still protectable in trademark law. As a general matter, the case held that trade dress can sometimes be inherently distinctive (that is, it can sometimes be so distinctive that it does not require a showing of secondary meaning), and, in cases where the trade dress is not â€śinherentlyâ€ť distinctive, a showing of secondary meaning will satisfy the distinctiveness analysis.
But, since Two Pesos was virtually silent on any form of test as to determining whether a trade dress qualified as â€śinherently distinctive,â€ť the courts were left to their own devices on that question. Moreover, Two Pesos did not deal with the far more contentious trade dress categories of product design and product packaging.
In 2000, the Supreme Court stepped in again and tried to address that. According to the Court, when a trade dress is product design, it can never be inherently distinctive, and, therefore, it must always show secondary meaning in order to be granted protection. In Justice Scaliaâ€™s opinion, â€śeven the most unusual of product designsâ€”such as a cocktail shaker shaped like a penguinâ€”is intended not to identify source, but to render the product itself more useful or appealing.â€ť
While some might debate the veracity of such a claim, the standard was at least unambiguous. And the implication is that product packaging may be inherently distinctive (but isnâ€™t necessarily). The line between packaging and design is often very blurryâ€”a Coke bottle may be â€śpackagingâ€ť for the soda inside, or it may be â€śdesignâ€ť if the bottle itself is the thing being purchased (e.g., by a collector of soda bottles). Thus, the Supreme Court did at least give one more piece of advice: in close cases, courts should err on the side of product design, and therefore require a showing of secondary meaning.
Jurisdictions since have come up with a multitude of tests trying to figure out exactly when a product is â€śdesignâ€ť versus â€śpackaging.â€ť The question is still very up in the air, and, as with all secondary meaning issues, everything is fact-specific. But the holding that product design can never be inherently distinctive is not exactly a departure from precedent. An earlier Supreme Court case held that color, alone, can qualify for trademark protection, but that it can never be inherently distinctive. Scent marks and sound marks are similarly limited. The Lanham Act even expressly says that geographic marks and surname marks require a showing of secondary meaning.
But still, the question of â€śpackagingâ€ť v. â€śdesignâ€ť is an extremely difficult one to answer. Plus, even if the product in question is deemed â€śpackaging,â€ť that doesnâ€™t automatically circumvent the secondary meaning analysis. And that analysis is riddled with its own difficulties.
Secondary meaning is required when your mark (whether word, logo, design, packaging, or something else) is not â€śinherently distinctive,â€ť but also not â€śgeneric.â€ť When itâ€™s in that grey space, then you must show secondary meaning, by way of proving that the consuming public associates the mark with the producer, thereby proving that the mark as acquired distinctiveness.
But beyond that, even with the intermittent Supreme Court offerings, the test for determining when a mark requires a showing of secondary meaning (that is, when a mark is neither inherently distinctive nor generic) is hazy at best, and it differs among the types of protectable trademarks, and it differs from jurisdiction to jurisdiction. Worse, the test for determining whether a mark that needs secondary meaning has that secondary meaning is even less clear, and also differs among the types of trademarks, and also differs from jurisdiction to jurisdiction.
The only thing that is constant, seemingly, is that all secondary meaning cases are fact-specific. For what thatâ€™s worth.