17. What is the process for determining whether a descriptive mark is sufficiently distinctive?
A descriptive mark must acquire a secondary meaning in order to be sufficiently distinctive to be protected by trademark law. Arbitrary, fanciful, and suggestive terms do not require that the mark have a secondary meaning, as they are sufficiently distinctive by their nature. The first step in the analysis is to determine whether the mark is indeed descriptive of the product or service. The trademark office or a court will use several tests to determine whether a mark is descriptive (as apposed to arbitrary and fanciful, suggestive, or generic).
• 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, the mark is likely suggestive rather than descriptive.
• Competitor Need or Use – Do competitors need to actively use the claimed mark for their customers to recognize or understand what their product or service does. If so, this is evidence of descriptiveness of the term, and the strong 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.
The next step is to determine whether the trademark has achieved secondary meaning that is separate from its descriptive nature. 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 various forms of evidence to determine whether secondary meaning exists:
• Direct Evidence – Direct input from customers, such as through testimony or surveys.
• Indirect Evidence – Indirect evidence may include:
⁃ Exclusivity – Whether the business exclusively uses the mark, or how it is used in the market and for how long;
⁃ Advertisement – To what extent does or has the business advertised the mark as a representation of the business;
⁃ Market Presence – What presence does the mark have in the market (market percentage or market awareness of the brand as a result of the mark); and
⁃ Competitor Use – Proof that other businesses intentionally copy the mark to achieve market awareness of their business.
• Discussion: Why do you think the USPTO requires a descriptive mark to achieve secondary meaning for the mark to be protectable under trademark law? How do you feel about the above-referenced tests for determine descriptiveness and secondary meaning? Can you think of any other methods of demonstrating descriptiveness? Can you think of any other factors to review when determining whether a mark has achieved secondary meaning in the market?
• Practice Question: Dominique runs a small sewing shop. She uses the name, The Sewing Shop to represent her business. She now seeks to trademark the name federally by filing with the USPTO. What analysis will the USPT undertake to determine whether the mark is capable of trademark protection?