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Trademarks and Secondary Meaning

Secondary meaning is a doctrine within trademark law. It affords protection to the user of an otherwise unprotectable descriptive mark. This protection is granted when the mark, through advertising or exposure, comes to signify a product or an event sponsored by that user. Descriptive marks are terms which are useful in describing the underlying product, however giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage. Therefore, a descriptive mark can acquire secondary meaning, which happens when the consuming public primarily associates that mark with a particular producer.

An example of secondary meaning is Holiday Inn®. The words "holiday" and "inn" can both refer to the same subject, a vacation motel or hotel services in general. In 1953 it was Holiday Inn’s® goal to associate their name with hotel services, or “mainly providing lodging” as the trademark application said. But today the trademark Holiday Inn® has secondary meaning because the consuming public associates Holiday Inn® with its producer and not with hotel services in general.

The court in Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983) faced the challenge of determining what factors qualify a trademark as to having secondary meaning and came up with four factors, they are:

(1) the amount and manner of advertising;
(2) the volume of sales;
(3) the length and manner of the term's use; and
(4) results of consumer surveys.

As you can see, if the Trademark Office challenges a mark on the grounds of secondary meaning the trademark owner would have to provide qualified information to the Examiner showing them why they qualify for secondary meaning status. For a mark to acquire a secondary meaning there must be at least five years of continuous, exclusive use on the market. At which point a trademark application can be filed with the United States Patent and Trademark Office and the mark may be placed on the principal register (15 U.S.C.A. § 1052(f)).

If you have any questions about secondary meaning please feel free to contact trademark attorney George Leone.

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