Brand developers and business owners should carefully consider the word or mark that consumers will identify with a good or service. Before investing resources in developing a brand, consideration of what makes a trademark or service mark (collectively referred to as “Mark”) “strong” and easier to enforce and defend, or “weak” and more difficult to enforce and defend is important. Many times, Marks develop over time and Mark owners may be forced to defend or enforce their rights to a Mark that was originally a “weak” Mark. This article will briefly discuss the spectrum of strong to weak Marks also known as the “Spectrum of Distinctiveness” and the concept of “secondary meaning”.
To understand the concept of secondary meaning it is important to understand the trademark law concept of the Spectrum of Distinctiveness. The Spectrum of Distinctiveness helps describe the strength of Marks under U.S. trademark law. Trademarks can be categorized on the Spectrum of Distinctiveness as having the following levels of strength or distinctiveness, from strongest to weakest:
a. Fanciful Marks consist of made up terms that have no relation to the goods being described (e.g., EXXON for petroleum products).
b. Arbitrary Marks consist of existing terms that contribute no meaning to the goods being described (e.g., APPLE for computers).
c. Suggestive Marks consist of terms that suggest meaning or relation but that do not describe the goods themselves (e.g., COPPERTONE for suntan lotion).
d. Descriptive Marks consist of terms that describe either the goods or a characteristic of the goods. Often it is very difficult to enforce trademark rights for descriptive Marks unless the Mark has acquired a secondary meaning (e.g., SHOELAND for a shoe store).
e. Generic Terms consist of terms that are the accepted and recognized description of a class of goods or services (e.g., computer software, facial tissue). Generic terms cannot be protected.
Secondary meaning is an important concept for trademark owners because courts see secondary meaning “as a means by which otherwise unprotectable marks may obtain protection.” Univ. of Ga. Athletic Ass’n. v. Laite, 756 F.2d 1535, 1540 (11th Cir.1985). A descriptive Mark, which is on the weak end of the Spectrum of Distinctiveness, may be protected only where the descriptive Mark has acquired secondary meaning.
In determining whether a Mark has acquired secondary meaning courts will tend to look at four factors. Those four factors are (1) the length and manner of the Mark’s use; (2) the nature and extent of advertising and promotion for the Mark owner’s business; (3) the efforts made by the Mark owner to promote a conscious connection in the public’s mind between the Mark and the Mark owner’s business; and (4) the extent to which the public actually identifies the name with the Mark’s good or service. Gulf Coast Commercial Corp. v. Gordon River Hotel Assocs., No. 2:05CV564-FTM-33SPC, 2006 WL 1382072, at *9 (M.D. Fla. May 18, 2006) (quoting Coach House Rest., Inc. v. Coach and Six Rests., Inc., 934 F.2d 1551, 1559 (11th Cir.1991)).
Secondary meaning can be difficult to prove when a Mark is descriptive and or geographically descriptive. Gulf Coast Commercial Corp. No. 2:05CV564-FTM-33SPC, 2006 WL 1382072, at *8 (citing Vision Center v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir.1979)). Courts have found that surveys or other quantifiable proof are some of the best ways to prove secondary meaning. As the former Fifth Circuit noted in Aloe Creme Labs., Inc. v. Milsan, Inc., “[s]hort of a survey, [establishing secondary meaning is] difficult of direct proof.” 423 F. 2d 845, 848 (5th Cir. 1970).
The patent and trademark attorneys assist clients in all stages of the brand development process. We enjoy meeting with clients during the brand development process to help them select the strongest mark for the goals. However, it is never too late to involve one of our attorneys in the process. While it may easier for a Mark owner to enforce and defend strong Marks, in certain cases merely descriptive marks may be unavoidable. To learn more about what can be done to protect merely descriptive or geographically descriptive marks, please contact one of the attorneys at The Plus IP Firm. Also, to learn more about Derek Fahey, the author of this article, please click HERE.