Secondary Meaning

Posted by on Jul 23, 2013

Terms that are merely descriptive are not usually protectable under the Lanham Act as trademarks.  For example, one could not get a trademark on the term “FRIED CHICKEN” because the term simply describes an entire class of product.  If that was the end of the discussion, this would, all in all, be a fairly simple and clear rule.  However there is one major exception to this rule – when the descriptive term has acquired secondary meaning.

Secondary meaning is always dependent on the consuming public.  The rationale behind allowing terms with secondary meaning to be eligible for trademark protection is as follows.  Certain words, with an ordinary (descriptive) meaning of their own “may [after] long use with a particular product, come to be known by the public as specifically designating that product.” Volkswagenwerk Aktiengesellschaft v. Rickard.

It is important to know that in litigation the burden is upon the party asserting trademark protection via secondary meaning to establish that the primary significance of the term to the public is not the actual product but rather is the producer or manufacturer of the product.  What does this actually mean?  The asserting party has the difficult task of showing consumers associate the term with the company that makes the product rather than the product itself.  Note that secondary meaning is only a relevant issue for descriptive marks (the weakest form of mark) – suggestive, arbitrary and fanciful marks automatically get protected because of a presumption of secondary meaning and generic terms are flat-out not protectable.

The case of Zatarain’s v. Oak Grove Smokehouse sheds some light on the situation.  In the opinion the justices give a clear articulation of the standard for the relatively high burden for the showing of secondary meaning in a merely distinctive mark.  Some examples are “Alo” – a term that came to mean products containing extracted gel of the aloe vera plant as well as “Vision Center” which came to mean the business actually providing ophthalmological care.  As said in Zatarain’s, the distinction between distinctive terms and generic ones (see previous post on genericness) is always one of degree, leading to a sort of interesting “trademark lifecycle” of a popular but merely distinctive term acquiring secondary meaning, enjoying great success, and eventually becoming an unenforceable generic term for an entire genus of products.

Here the court examined the term “Fish-Fri.”  The standard is to use both direct and circumstantial evidence.  Citing a 5th circuit line of reasoning, the court articulated factors such as “amount and manner of advertising, volume of sales, and length and manner of use that may serve as circumstantial evidence.”  However these factors do not individually or collectively settle the issue.  The real focus, and what these factors help shed light on, is the actual meaning to the consuming public.  In a display of pithy wit, the court suggests it is not the amount of dollars spent on advertising but their actual effectiveness on the consumer in altering the meaning of the term.  In a future post we will discuss the fair use defense, also mentioned in this case.  Please also see generally the excellent discussion of these matters in Merges, Menell, and Lemley – Intellectual Property in the New Technological Age, 4th ed.