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Descriptive Trademark and Secondary Meaning

Determining Secondary Meaning

A descriptive mark must acquire a secondary meaning in order to be a valid mark. Fanciful, Arbitrary, and Suggestive terms do not require that the mark have a secondary meaning. The trademark office or a court will use several test to determine whether a mark is descriptive.

  • Dictionary Test – This test seeks to determine the ordinary significance and meaning of the word as demonstrated by a dictionary. This provides evidence of how the general public would encounter the mark.
  • Imagination Test – This examines whether the meaning of the mark is obvious, or whether it requires some level of imagination or thought to determine the represented good or service. If a high degree of cognition is required, then the mark is likely suggestive, rather than descriptive.
  • Competitor Need or Use – If competitors need or actively use the claimed mark for their customers to recognize or understand what their product or service does. This is evidence of descriptiveness of the term, and the presence of secondary meaning for the specific business can make it an enforceable mark. This can also indicate that the mark is generic in nature and not capable of protection.

Determining Secondary Meaning

Secondary meaning requires that the mark draw reference to the business, rather than the product or service itself. Specifically, secondary meaning is present when, “in the minds of the public, the primary significance of the symbol is to identify the source of the product rather than identifying the product itself.” A court may use varies forms of evidence to determine whether secondary meaning exists:

  • Direct Evidence – Direct input from customers, such as through testimony or surveys.
  • Indirect Evidence
    • Whether the business exclusively uses the mark, or how it is used in the market and for how long.
    • To what extent does or has the business advertise the mark as a representation of the business.
    • What presence does the mark have in the market (market percentage, or market awareness of the brand as a result of the mark).
    • Proof that other businesses intentionally copy the mark to achieve market awareness of their business.

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