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DAMIEN ALLEN: Good afternoon and welcome to Traverse Legal Radio. My name is Damien Allen from Studio A today, and we are speaking on the phone with Brian Hall. Brian is an attorney with Traverse Legal, PLC. Brian’s practice focuses on trademark matters, including trademark clearances and registrations, oppositions and cancellation proceedings in front of the TTAB, licensing issue and federal court litigation. Brian also regularly handles domain dispute resolution, internet law matters and related business representation matters. Today we are talking about the requirements for a secondary meaning of descriptive trademarks, and I guess the first thing I need to say is Welcome to the show Brian.
BRIAN A. HALL: Thanks a lot, Damien. I am happy to be here.
DAMIEN ALLEN: And after that, I guess I need to know what a descriptive trademark is.
BRIAN A. HALL: Well, when we’re talking about trademarks let’s keep in mind that in order to have a protectable trademark, there is a couple things you need. The first is you need to use a mark in commerce, meaning you need to either be planning on selling something and, therefore, marketing it, advertising it, etc., or actually using that mark in interstate commerce, meaning between more than one state. Those two requirements really are necessary to get the mark within the United States Patent and Trademark Office. The other side of the coin is that mark needs to be distinctive. Distinctiveness is a term of art under trademark law, and what it means is that the mark merely cannot be something that’s generic. If I’m going to want to use a mark let’s say apples, and I’m selling apples to the public, that’s a generic meaning, it’s not something that I can I have exclusive right to use. Where it becomes an issue is when you get into the next levels of distinctiveness, and when I say that I mean a descriptive mark, a suggestive mark, an arbitrary mark, a fanciful mark, etc. And there are really two categories of distinctiveness. The first is what’s known as acquired distinctiveness, which is what we’ll be talking about mostly today. And the other is inherent distinctiveness. When I’m talking about acquired distinctiveness that means that the mark is not naturally distinctive enough to be entitled to trademark protection. There’s one category that really is what acquired distinctiveness refers to, and that’s marks that are merely descriptive to start, but over time acquire secondary meaning so as to have acquired distinctiveness.
DAMIEN ALLEN: What would be a couple of examples of that?
BRIAN A. HALL: If you look at how different marks that are used out there today, the easiest way to determine if a mark has acquired distinctiveness is to go to the United States Patent and Trademark Office database. For example, if a trademark applicant files a trademark application, the United States Patent and Trademark Office’s examining attorney reviews that application and makes the determination as to the distinctiveness of the mark. If they deemed that the mark is descriptive, they can either refuse the registration on the principal register on the basis of that descriptiveness, or they can require that the applicant prove that the mark has acquired distinctiveness, therefore entitling it to registration on the principal register. The best way to really determine it is to go out there and see what the USPTO has said about particular marks, but the difficulty is, and you raise a good issue Damien, is that it’s difficult at times to know whether a mark is merely descriptive so as to allow anybody else out there to use it, or if it has acquired the necessary distinctiveness so as to give the owner of it exclusive rights to it, which would make anybody else’s use of it possibly trademark infringement.
DAMIEN ALLEN: What are some of the criteria that would allow this to be set up that way?
BRIAN A. HALL: If you think about the things that an examining attorney or court of law will look at in determining whether or not a mark has acquired distinctiveness, you’re really looking at that secondary meaning determination. And there are a whole slew of factors that a court will look at. For example, there are really four major things they look at, and some of them are what’s known as direct evidence, and some are what’s known as circumstantial evidence, but really the factors are whether actual purchasers of the product bearing the claimed trademark associate that trademark with the one the producer. That would be one factor. Another factor is the degree and manner of advertising under that claimed mark. Another factor is the length and the manner of use of that claimed trademark, and finally whether the use of the claimed trademark has been exclusive. Those are really the four main areas that a court will look at to determine whether or not a descriptive mark has acquired that secondary meaning to such an extent that they could trademark rights that are enforceable against others.
DAMIEN ALLEN: Are there any other criteria that could help set up the secondary meaning of that trademark?
BRIAN A. HALL: I do not think that’s an exhaustive list. Those are the four factors that have been set forth by various courts. But within each of those factors, there’s multiple things that could lend additional evidence so as to argue that it has met one of the factors and therefore all four to acquire secondary meaning. For example, the first factor which looks to whether actual purchasers of the product bearing that claimed trademark associate that trademark with one single source of goods or services. In that regard, there’s a couple pieces of direct evidence that are common to help establish that. One would be consumer survey. A survey that allow someone to go out there and question the general public about the particular mark, about what they deem the goods and services to be that are associated with that mark, and whether, quite frankly, they deem one single source as the entity that offers those goods or services. Surveys are really the number one most important pieces of direct evidence to establish secondary meaning. While testimony from consumers or accounts from consumers talking about those type of issues are valuable, nothing is better than an independent third party survey that shows that it’s more likely than not that the mark does have secondary meaning.
DAMIEN ALLEN: What happens if you can’t establish a secondary meaning?
BRIAN A. HALL: Well, if you cannot establish that your trademark has secondary meaning, that means that you cannot claim that the mark has acquired distinctiveness. Recall what we talked about at the outset that in order to have a protectable trademark you need to use it is commerce and it needs to be distinctive. If you can’t prove secondary meaning of a descriptive mark, you simply have a mark that’s not worthy of trademark protection. The important thing to keep in mind, Damien, is that this can change over time. If today I use a mark and it hasn’t acquired distinctiveness, that in no way precludes me from, over an appreciable amount of time, coming back and showing that. indeed, purchasers associate me as being the source of the particular trademark or service mark. A determination by a court of law that you don’t have secondary meaning in a mark is important, and it’s something that cannot be overlooked but it does not stop or preclude me from down the line, and again there needs to be an appreciable amount of time, it can’t be most likely three months later or even a year later. There needs to be that more evidence next time around to show that consumers associate in their minds that mark with a particular source.
DAMIEN ALLEN: What’s the best way to establish secondary meaning?
BRIAN A. HALL: That’s a good question, especially from a practical standpoint as an individual or business entity looking to select a mark to use as a trademark or service mark. As an attorney, I always say, choose a mark that inherently distinctive so you can avoid this whole issue. The reality is consumers tend to favor marks at times that give them an impression right away about what the goods or services are, and oftentimes individuals or businesses select marks for that reason. If you are going to choose a mark that’s descriptive or arguably descriptive, there are things that you can do to lend credence to your secondary meaning argument. One would be just use over a long period of time. There’s actually a presumption in the United States Patent and Trademark Office said that if you’ve used a mark five years or more, it could automatically be qualified for acquired distinctiveness. Passage of time is important. Another important aspect is the amount of money you spend on advertising and the effect of that advertising. It’s not just going out there and spending a million dollars a year to put your mark and the goods associated with that mark out in the world for the consumers to see, it’s also making sure that what you’re doing is effective, and if you have a descriptive mark, that users don’t look at that mark as something that merely describes good or service or quality of your good or service, but rather describes you as the source offering that particular good or service. So, passage of time, advertising and then any of the other circumstantial evidentiary items that we talked about earlier. If you can prevent others from using that mark because you believe you have acquired distinctiveness or if you’re one of the only ones that uses that mark, that exclusivity tends to favor establishment of secondary meaning.
DAMIEN ALLEN: Is there anything else you’d like to comment on this, Brian, before we take off?
BRIAN A. HALL: I just think it’s important to note that determining whether a mark is inherently distinctive or one that is descriptive and, therefore, needs to have acquired distinctiveness through secondary meaning is one that’s really best reserved for a trademark attorney or trademark lawyer. This is such a intricate area of trademark law that it’s important to rely upon experienced trademark counsel so that they can provide the best information as to (1) whether your mark is distinctive at the outset, (2) how to make your mark acquire distinctiveness through secondary meaning, and (3) the practical pitfalls to avoid should you be involved litigation with a mark that’s arguably descriptive.
DAMIEN ALLEN: For more information on trademark matters and litigation and requirements and just any old question you can think of on this, you can listen to the continuing series of Traverse Legal Radio interviews on this subject with Attorney Brian A. Hall from Traverse Legal Radio. Thank you very much for joining us today, Brian.
BRIAN A. HALL: Thank you, Damien. It was fun.
DAMIEN ALLEN: This is Damien Allen from Studio A. This is Traverse Legal Radio. Everyone have a great afternoon.