Choosing and protecting a brand is fraught with peril. The road to success is often contingent upon due diligence in selecting a proprietary name. It’s not a simple task. You expect your trademark (mark) and trade dress (dress) to serve two important functions: (1) to identify and distinguish your products in the marketplace, and (2) to make a clear connection between your products and their ultimate source—you. Of course, you also hope to minimize any legal obstacles. Importantly, the federal government has a companion role in safeguarding trademarks and can better help you after you register your mark with the United States Patent and Trademark Office (USPTO).
Unfortunately, some marks and dress are encumbered with legal issues from their inception, especially if it’s unclear whether they are even eligible for registration. The nature of naming and the consequences of poor planning can be fatal to a company’s brand. For example, as discussed in our two earlier articles, although a mark that is considered arbitrary, fanciful, and/or suggestive can easily be registered with the USPTO, the USPTO will refuse to register (and thus protect) your brand if your brand is deemed generic. There is a fourth, “descriptive” category that you may find yourself needing to make the case that your brand should be protected. This category includes those terms and images that are not generic but are also not inherently eligible for protection. Such terms and images can be protected only if you can establish that they have acquired distinctiveness, i.e., that something called secondary meaning has been established. Secondary meaning is when your descriptive brand no longer simply describes your products, but has become linked with the unique source that produced it—you. (See Secondary Meaning in Trademark and Trade Dress Law: What It Is and What You Need to Know for further reading.)The purpose of this article is to discuss various routes to proving that your descriptive brand has acquired secondary meaning, should the need arise.
Distinctiveness and Secondary Meaning
Miller Brewing Company offers an excellent example of the dangers of using a generic or descriptive term as a component of an attempted trademark. Miller began filing trademark infringement actions against competitors for their use of the word light (for beer) as early as October 1975. The company was already juggling seven cases into discovery when it sued Heileman Brewing in 1976. Heileman was certainly not the first offender to use the term on beer bottles, but may have been the most threatening.
In Miller Brewing Co. v. Heileman Brewing Co., Miller’s attempts to protect its monetary investment in lite and light ultimately proved as slippery as a beer-covered floor. The court ignored the different connotations for light (color versus low-cal), sidestepped Miller’s phonetic spelling (lite), and declared light to be a common descriptor that could be used by soft drink and cigarette companies alike.
Miller tried to rely on three trademark registrations to establish the mark’s distinctiveness. The registrations specified the intended use of lite to signify “beer with no available carbohydrates.” However, these registrations, although usually quite powerful, ultimately held no sway with the court because Miller was now using lite in conjunction with beer that had some available carbohydrates. Thus, the court reasoned that the registrations were inapplicable to the current case, and thus “Miller’s brand name . . . must be evaluated under the common law of trademarks without the benefit of registration.” Even after acknowledging the tremendous popularity of the low-calorie beer and Miller’s substantial advertising and production investments, the court held that “because ‘light’ is a generic or common descriptive word when applied to beer, neither that word nor its phonetic equivalent may be appropriated as a trademark for beer.” In other words, light described what the product was, not who had produced it, and therefore couldn’t function (or be protected) as a trademark. When the term you use is found to be generic, even secondary meaning cannot help you.
If your mark is descriptive (that is, it illustrates the process or function of your product instead of merely describing what it is), you may have better luck. However, your mark will still not be registrable on the Principal Register unless and until you can demonstrate that secondary meaning has been attached.
Consider the curious case of Chapstick, a troubled tale of trademark travails. The name Chapstick is an excellent descriptor of a stick for mitigating chapping and thus may seem like a perfect brand. But, again that’s the problem—you can’t register names that signify things, just their sources.
Due to Chapstick’s popularity (a good thing), the term has arguably become generic (not a good thing). However, the term is still a registered descriptive trademark, with rights exclusively owned by Pfizer. The numerous trademark filings for Chapstick are accompanied by distinct marketing efforts to gain public recognition through secondary meaning.
Other terms that are descriptive and require secondary meaning are surnames—such as Sanchez Sandals or Campbell Computers—and geographic terms. For example, in Scott Paper v. Scott Liquid Gold, the plaintiff sued for exclusive use of the surname “Scott.” The appellate court considered whether Scott Paper, which manufactures paper products, had acquired “a secondary meaning of such significance as to bar its use on noncompeting products,” such as the furniture polish produced by Scott Liquid Gold. In reaching its decision for the defendant, the court explained that:
Secondary meaning exists when the trademark is interpreted by the consuming public to be not only an identification of the product, but also a representation of the product’s origin. . . . Once a trademark . . . achieves secondary meaning, competitors can be prevented from using a similar mark . . . to minimize confusion of the public as to the origin of the product and to avoid diversion of customers misled by a similar mark.
The court ultimately determined that Scott Liquid Gold was free to continue using the surname Scott.
As for geographical terms, Des Moines Donuts would probably be denied registration. But if we added arbitrary words to create Des Moines Demon Dynamite Donuts, the phrase might be registrable. And Pluto Pizza would probably qualify because no reasonable person would presume pizzas are actually made on the former planet.
Although you can register purely descriptive marks on the Supplemental Register, a purgatory of sorts for descriptive trademarks, a five-year waiting period plus sufficient evidence of secondary meaning is necessary to move the mark to the Principal Register—where more legal rights accrue. How to prove secondary meaning has been difficult for the courts—and for the companies involved due to a lack of clear standards. However, what is clear is that strategic advertising, careful documentation of consumer attitudes, and continued policing of one’s brand are usually rewarded.
Establishing Secondary Meaning
There are two ways to establish that a descriptive term has acquired secondary meaning. First, the USPTO can accept “as prima facie evidence that the mark has become distinctive,” which is evidence that a mark has been used “on or in connection with the applicant’s goods in commerce” for a continuous five-year period prior to the use of any potentially offending mark. If this five-year use can be demonstrated, the mark is presumably distinctive and can be registered (barring a few exceptions).
Alternately, you must generate sufficient evidence to demonstrate that your brand uniquely identifies your company. When considering whether your brand has become distinct, a court may consider: (1) the extent of advertising, (2) the length of use, (3) the exclusivity of use, (4) any copying, (5) customer surveys, (6) customer testimony, (7) the use of your mark in trade journals, (8) your company’s size, (9) the extent of your sales, (10) the number of customers, and (11) actual confusion. All these factors bear on the likelihood that the relevant public has come to associate your mark with you.
Direct evidence is evidence that consumers actually connect your products with you and thus demonstrates their state of mind. Here, customer testimony can be especially helpful. Seek out consumers who have purchased or are about to purchase your product and ask them for information. Companies have accomplished this with online surveys and by adding comments sections to their websites. Social networking sites have become an increasingly popular means to establish such evidence. For example, Herbal Essences has a Facebook page that elicits customer testimony. Especially powerful are testimonies that explain that customers wanted to buy your product but mistakenly bought someone else’s because they were confused by the similarities between the two companies’ marks and/or dress.
Quasi-direct evidence can be established through surveys, which at least one court has found to be the “most persuasive evidence” of secondary meaning. Such surveys must be professionally conducted to be persuasive and thus can be quite expensive. Most importantly, a “survey must use the right frame of reference, that is, the group whose associations or attitudes are at issue.” Therefore, the focus should be on existing and/or prospective buyers, not just the general public. Ultimately, surveys remain the gold standard and should be carefully considered, particularly if your case is less than clear-cut.
Thankfully, surveys need not be perfect. In Centaur Communications Ltd. v. A/S/M Communications, Inc., despite flaws in a survey designed to test consumer confusion, it still informed the court’s decision because there “was no reason not to apply the basic principle in the context of secondary meaning.” What matters most is “direct evidence of consumer association” by a substantial number of prospective buyers.
Circumstantial evidence has to suffice when survey and testimonial evidence isn’t available. The most common circumstantial evidence is proof of a company’s efforts to advertise its brand. Advertising indicates the company has expended so much time and capital that an inference can be made that the public now recognizes its brand. For example, in Cartier v. Sardell, the court considered the amount of money that had been spent on advertising to help determine whether secondary meaning had attached to their use of the term tank with watches.
Yet dollar amounts aren’t everything. Advertising characteristics are also important. For example, advertising should alert consumers to the producer’s mark or dress. This is sometimes called “look for” advertising (as in “look for the Golden Arches, you’ll know it’s McDonald’s”). Thus, a manufacturer who continually points to product features such as red knobs on a gas range and describes them as an “exclusive . . . distinctive (Wolf) feature,” provides some evidence of secondary meaning.
Functional equivalents to advertising are also considered by courts and can be relatively inexpensive to establish. For example, evidence of trips undertaken for the purpose of selling advertising space, like advertising itself, can be helpful because such trips serve to put the product before the relevant group of consumers.
Finally, experimental research may be helpful. One of the first cases to accept experimental research on consumer perception was an infringement case involving two soft drink companies. Plaintiff Coca-Cola successfully defended its trademark (filed in 1886) against defendant Chero-Cola (filed in 1911) with expert testimony from an experimental psychologist who conducted an experiment to demonstrate the trademarks “were so similar as to be likely to cause confusion … and ultimately deceive the consumer.”
Whether you are contemplating a new product’s design, initiating a marketing campaign, or otherwise trying to increase sales, protecting (and promoting) your brand is paramount. When distinctiveness is uncertain, proof of secondary meaning becomes critical for trademark protection. Conscientious consumer surveys and pinpoint testimony from potential and actual buyers should be systematically collected. A company must be able to defend its marks and dress to ensure the continued, strong association consumers have between the company’s products and their source.
 There are several “namer” companies, such as “Eat My Words: Fresh Names and Taglines To Go” (specializing in brands such as Spoon Me (frozen yogurt) and I Have a Bean (coffee)). Also see Landor, Inc., a more mainstream company, responsible for creating marks for BP and the U.S. Department of Homeland Security.
 Throughout this article, brand and logo are used interchangeably with trademark, trade dress, and their variants.
 3,327 trademark-related cases were filed in 2009 alone. See Justia.com, Dockets & Filings, http://dockets.justia.com/search?after=2009-01-01&before=2009-12-31.
 According to Paul Higgins of Sughrue Mion, a Washington, D.C.–based law firm, “[your] name is crucial. … You don’t want to start down a dead end [at] the beginning.” See also Constance Loizos, How to Open a Yoga Studio Part 2: Naming Your Baby, http://www.yogajournal.com/for_teachers/1009.
 The Lanham Act (1) protects the owner’s goodwill and investment in marks, and (2) prevents consumers from being confused as to the origin of marks. See Henry Cheeseman, Business Law 111 (6th ed. 2003).
 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 (Winter 2011). https://gbr.pepperdine.edu/2011/02/the-quest-for-distinctiveness-in-trademark-and-trade-dress-law/ and “Secondary Meaning in Trademark and Trade Dress Law What It Is and What You Need to Know.” Graziadio Business Review 14, no. 2 (Spring 2011). https://gbr.pepperdine.edu/2011/06/secondary-meaning-in-trademark-and-trade-dress-law/.
 Breweries also use light to signify lesser alcohol content.
 Miller Brewing Co., 561 F.2d at 77.
 Ibid. at 79.
 From 1973 through 1976, Miller expanded its annual sales of “lite” beer from 50,000 barrels to 4,000,000 and increased annual advertising expenditures from $500,000 to $12,000,000. Ibid.
 Miller Brewing Co., 561 F.2d at 77.
 See J. Thomas McCarthy’s seminal treatise on trademarks for the “Who Are You—What Are You” test. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:1 (4th ed. 2003). McCarthy explains that “[a] mark answers the buyer’s questions ‘Who are you? Where do you come from?’ . . . But the name of the product answers the question ‘What are you?’” Ibid.
 See Matthew Harrison, Protecting Your Intellectual Property: A Look at Trademark, http://www.photo sandthelaw.com/2009/07/13/hello-world (last visited Aug. 15, 2010).
 See USPTO, Trademark Electronic Search System, http://tess2.uspto.gov/ (last visited Aug. 1, 2010) (search term “Chapstick”).
 See 15 U.S.C. § 1052(e)(4).
 Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978).
 15 U.S.C. §1052(e).
 Ibid. at § 1052(f).
 McCarthy on Trademarks § 15:4; Ride the Ducks, L.L.C. v. Duck Boat Tours, Inc., 75 U.S.P.Q.2d 1269, 1274 (E.D. Pa. 2005).
 See Vision Sports, Inc. v. Melville Corp., 888 F.2d 609 (9th Cir. 1989); McCarthy on Trademarks § 15:30.
 Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 118 (2d Cir. 1984).
 Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1223-1224 (2d Cir. 1987).
 Ibid. at 1224.
 Cartier, Inc. v. Sardell Jewelry, Inc., 2008 U.S. App. LEXIS 19277, at *1 (2d Cir. 2008).
 Thomas & Betts, Inc. v. Panduit, Inc. 138 F.3d 277 (7th Cir. 1998).
 McCarthy on Trademarks § 15:30.
 Wolf Appliance, Inc. v. Viking Range, Inc., 686 F.Supp.2d 878 (W.D. Wisc. 2010).
 Coca-Cola Co. v. Chero-Cola Co., 51 App.D.C. 27 (D.C. Cir. 1921); Irving B. Weiner and Allen K. Hess, The Handbook of Forensic Psychology 11 (2d ed. 1999).