Recognize the book? Familiar with the bird? Can the outline of an egg-laying vertebrate be protected as a trademark—and a book cover as trade dress?
The answer—per Bach v. Forever Living Products (FLP)—is yes. In Bach, it was established that the defendant (FLP) had used “copyrighted photographs from Jonathan Livingston Seagull as their corporate logo, and … copyrighted excerpts from Jonathan Livingston Seagull … in their advertising, promotional, and training materials, in communications with their independent distributors, in their sale and distribution of FLP products, and in the advertising, marketing and promotion of Forever Resorts recreational properties.” The plaintiff, author Richard Bach, had never registered any trademarks in connection with Jonathan Livingston Seagull. Generally, when no trademark has been registered, the plaintiff bears the burden of proving the validity and protectability of his or her unregistered marks. In this case Bach was able to meet that burden by establishing that his book’s images and text had acquired something called secondary meaning. In this article, the second in a series focused on trademarks and trade dress, we detail the doctrine of secondary meaning and its ramifications for businesses.
What is Secondary Meaning?
As discussed in our previous article, “The Quest for Distinctiveness in Trademark and Trade Dress Law,” terms and symbols used by companies as elements of their trademark (mark) or trade dress (dress) fall into various categories with varying degrees of legal protection. The first three categories—fanciful, arbitrary, and suggestive terms—are inherently distinctive and are automatically protected. Conversely, those that are generic receive no legal protection. Descriptive terms, however, occupy a middle ground and must acquire secondary meaning before they can be protected.
To maintain an action for infringement, a plaintiff must demonstrate that (1) its mark and/or dress are distinctive of its product’s source, (2) its mark and/or dress is nonfunctional, and (3) a likelihood of confusion exists between its product and the allegedly infringing defendant’s product. The key issue is distinctiveness, with the crucial test being “whether the mark serves as an indicator of source.” When distinctiveness is not inherent (because, for example, a term or image is not fanciful, arbitrary, or suggestive), that term or image can acquire distinctiveness only by acquiring a secondary meaning.
Defining Secondary Meaning
Secondary meaning exists when a term that otherwise describes a product has become so affiliated with a specific product’s maker that it has taken on a second meaning. Importantly, “[a]cquired distinctiveness is known as ‘secondary meaning’ not because it is second in importance or in impact, but because it is a meaning acquired second in time . . . to the original primary meaning of the designation.” As explained by trademark expert J. Thomas McCarthy, “secondary meaning requires only that customers associate the word or symbol with a single, albeit anonymous, commercial source. The more descriptive and the less inherently distinctive the word, symbol, or trade dress, the greater the quantity and quality of evidence of secondary meaning must be to prove that level of distinctiveness necessary to achieve trademark, service mark, or trade dress status.”
Acquiring Secondary Meaning
Generally, there are two ways to acquire secondary meaning: first, if a term or image is used exclusively and continuously for five years; second, if evidence demonstrates that the term or phrase has become uniquely associated with a particular company. Such evidence can include direct consumer testimony or survey evidence; records that demonstrate the exclusivity and length of use of a term or image; the amount and manner of advertising; the amount of sales and number of customers; the term or image’s established place in the market; or proof of intentional copying by the defendant. However, not all words and images qualify for protection even if they acquire secondary meaning; these include national symbols, some names, and those that are immoral or scandalous.
In Bach, the plaintiffs were able to demonstrate secondary meaning had accrued such that their mark and dress should be protected from unauthorized use: “Plaintiffs have submitted . . . that Jonathan Livingston Seagull is one of the most widely read novels of all time. [It has] sold over 13 million copies, spent 38 weeks at Number 1 on the New York Times best-seller list, and has been translated into more than 20 languages. Plaintiffs also [established] that FLP intentionally plagiarized the Jonathan logo and used it to attract and retain its distributors and to motivate them to sell its products. For example, FLP used the same image of a white seagull on a blue background, and called that logo ‘Jonathan,’ on its sales folders, banners, flags, and website.” On these bases, the court found in favor of the plaintiffs and held FLP had infringed on their rights.
Next we discuss the various categories of marks recognized by the USPTO, focusing on descriptive marks and their relationship to secondary meaning.
A relatively high degree of legal protection is automatically awarded to fanciful, arbitrary, and suggestive terms used as marks, since there is minimal risk that consumers will mistake the source of a product when confronted with them. By comparison, a term or symbol used as a trademark is descriptive and needs secondary meaning if it describes an ingredient, quality, characteristic, function, purpose, or particular use of the relevant goods and/or services. Such marks may describe a particular product’s qualities (like Easy Off ), a recognizable feature (Yellow Pages), or a comprehensive attribute (such as Super Glue).
Using (and protecting) a descriptive mark can be risky. In Genesee Brewing v. Stroh Brewing, the plaintiff used the phrase Honey Brown on its lager product while the defendant used Honey Brown on its ale product. The court stated: “When a [second] producer creates a new product, trademark law will not grant the [first] producer the exclusive right to label its product with words that are necessary to describe (italics added) that new characteristic.” The court ultimately held that the defendant had the right to add honey to its brown ale and call it exactly what it was: Honey Brown ale.
As noted in our earlier article, a logo that includes a geographic reference may also be considered descriptive and therefore require secondary meaning. For example, in Great Southern Bank v. First Southern Bank, the plaintiff sued the defendant—which had opened its doors two years later and 20 miles away—for using the term Southern in its corporate name. The court held that Southern is geographically descriptive, “not inherently distinctive,” of the origins of goods and services. Specifically, “geographically descriptive names used as names of businesses require proof of secondary meaning for legal protection.” The court explained, “[D]escriptive geographical terms are in the public domain in the sense that every seller should have the right to inform customers of the geographical origin of his goods.” Thus, the plaintiff couldn’t stop the defendant from using Southern.
However, in another geography case, Tortoise Island Homeowners Ass’n v. Tortoise Island Realty, the plaintiffs (a homeowners’ association) sued the defendant (a realty company) for trademark infringement. The defendant argued that the plaintiff needed to prove that secondary meaning had attached to Tortoise Island to prevent use of the phrase. There, the appellate court found that Tortoise Island was not descriptive but was a name that had been devised for the subdivision by the developer in reference to the many species of tortoises in the area. Therefore, it was an arbitrary moniker that did not require a showing of secondary meaning for protection.
Why are descriptive terms treated so differently from fanciful, arbitrary, and suggestive marks? In a word: competition. Because descriptive terms can be used to describe many products and their sources, to grant a particular marketer the exclusive right to use them could confer an unfair advantage. However, descriptive terms can be protected as trademarks if, after time and advertising, they become uniquely associated with a single company. “Given that competitors can only be prohibited from using a descriptive term once it achieves secondary meaning, a plaintiff in a trademark infringement case has the burden of establishing secondary meaning,” i.e., that it “has become distinctive of the applicant’s goods in commerce.”
In 1969 the term Park’N Fly was accepted and filed by the USPTO despite the fact that it seemed to be descriptive of airport parking. Nearly six years later, Park’N Fly filed an affidavit with the USPTO to establish the incontestable status of the mark. Incontestable status provides “conclusive evidence of the registrant’s exclusive right to use the registered mark” and prevents others from legally using it. Subsequently, Park’N Fly sued defendant Dollar Park’n Fly, Inc. for trademark infringement. Dollar counterclaimed that the phrase Park’N Fly was “merely descriptive” and should be disallowed as a mark. However, the Supreme Court held that “the holder of a registered mark may rely on incontestability to enjoin infringement.” Thus, “incontestability” trumped any independent analysis of the mark’s descriptiveness.
Despite this holding, we agree with the defendants that Park’N Fly probably is a descriptive phrase that should not have been protected without proof of secondary meaning. This case clearly illustrates the problem of permitting the registration of descriptive marks. What should the defendant have named his business—Leave auto here ‘N get on plane? To distinguish among competitors, additional terms can easily be inserted, such as Dollar (Dollar Park’n Fly), Discount (Discount Park’n Fly), or even Dave (Dave’s Park’n Fly).
This last example raises the next important topic: personal names.
Generally, “personal names are regarded as in the same category as descriptive terms” and “are placed by the common law into that category of noninherently distinctive terms which require proof of secondary meaning for protection.” The underlying logic is that no one should be prohibited from using his or her name to promote a product or service just because someone else used it first. One particularly notorious case arose when NBA Hall-of-Famer Kareem Abdul-Jabbar sued Miami Dolphins’ running back Karim Abdul-Jabbar (the former Sharmon Shah) to stop him from using his very similar name because of the potential for confusion. Their settlement dictated that Karim could use only the name Abdul on his jersey, not Abdul-Jabbar, as long as he continued to play for the Dolphins. In 2000, probably to avoid any further hassles, Karim changed his name to Abdul-Karim al-Jabbar.
The lasting impact of the Bach case and Jonathan as an unregistered trademark is that the bird can be protected, but “only upon a showing of secondary meaning.” But, “whether a [mark] has acquired secondary meaning is a question of fact.” Secondary meaning arises and attaches when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Lastly, the burden of proving secondary meaning rests with the plaintiff, but usually only becomes an issue with descriptive marks. By comparison, fanciful, arbitrary, and even suggestive marks can almost always be automatically protected through registration.
In “Protecting Descriptive Brands: Why it’s Important and How to Do It,” our next and final article in this series, we discuss how to prove that secondary meaning has attached to your trademark, should you need to.
 Bach v. Forever Living Prods. U.S., Inc., 473 F.Supp.2d 1110, 1118 (W.D. Wash. 2007).
 “Headquartered in Scottsdale, the Forever Resorts family of companies owns and operates more than 65 unique vacation and entertainment properties.” Forever Resorts, About Forever Resorts, http://foreverresorts.com/aboutus.cfm (last visited Aug. 1, 2010).
 There are several “seagull” trademarks registered with USPTO, such as “Seagull Sam” (for gaming software), “Seagull Scientific” (for a bar code reader), and “Seagull on a Stick” (for beef, chicken, and seafood on a skewer). See USPTO, Trademark Electronic Search System, http://tess2.uspto.gov/ (last visited Aug. 1, 2010).
 See Yellow Cab of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 927 (9th Cir. 2005) regarding protectability.
 “The Ninth Circuit defines ‘secondary meaning’ as ‘the mental association by a substantial segment of consumers and potential consumers between the alleged mark and a single source of the product.'” Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985).
 See Lanham Act § 43(a).
 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
 See Scalise, David, Alexa Koenig, and Brandon Carr. “The Quest for Distinctiveness in Trademark and Trade Dress Law: What It Means and How to Get It.” Graziadio Business Review 14, no. 1 (2011). https://gbr.pepperdine.edu/2011/02/the-quest-for-distinctiveness-in-trademark-and-trade-dress-law/.
 Deborah Buckman, “When is trade dress ‘inherently distinctive’ for purposes of trade dress infringement actions under § 43(a) of Lanham Act (15 U.S.C.A. § 1125(a))—Cases after Two Pesos,” 161 A.L.R. Fed. 327, 343 (2000).
 See Time, Inc. v. Petersen Publ’g Co., 173 F.3d 113 (2d Cir. 1999).
 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:1 (4th ed. 2003).
 See Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1151 (9th Cir.1999).
 15 U.S.C. § 1052 (a)-(d), (f).
 Bach, 473 F.Supp. 2d at 1124.
 The mark “Easy Off” was filed on April 23, 2010 for oven cleaner; in 2008 for abrasive paste for nails; “EZ Off” in 2008 for plastic end fittings for use with gas springs and dampers; “EZ Off” in 2007 for jar and bottle openers; “EZ Off” in 2007 for computer software for permitting parental control of computer use; and “EZ-Off+” in 2004 for wallpaper remover. Id.
124 F.3d 137 (2d Cir. 1997).
 Great Southern Bank v. First Southern Bank 625 S.2d 463, 467 (Fla. 1993).
 Id. at 468.
 790 So.2d 525 (Fla. 2001).
 Id. Had prior inhabitants given the area the name “Tortoise Island,” the phrase would have been a geographic reference and not protectable.
 See ProVideo coalition, Off-the-Clock Tech Lawyer, http://provideocoalition.com/index.php/ckramer/story/ how_to _pick_and_register_a_trademark_part_one/ (last visited Aug. 5, 2010).
 Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978).
15 U.S.C. § 1052 (e)-(f).
 Filed in 1969 (mark now expired). See USPTO, Trademark Electronic Search System, http://tess2.uspto.gov/ (last visited Aug. 1, 2010). Incontestable status provides “conclusive evidence of the registrant’s exclusive right to use the registered mark. . . .” Lanham Act §§ 15, 33(b).
 Lanham Act §§ 15, 33(b).
 Park’n Fly, Inc. v. Dollar Park And Fly, Inc. 469 U.S. 189, 205 (1985).
 J. Thomas McCarthy, Trademarks and Unfair Competition 13-3 (3d ed. 2010).
 See Lanham Act § 2; 15 U.S.C. § 1052(c).
 See Com. v. Thompson, 563 Pa. 661 (Pa. 2000).
 See Soweco Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir. 1980).