Asked 3 months ago - Los Gatos, CAFlag
any links to any databases or registers would be appreciated as well.
Descriptive terms can be protected as trademarks only after they acquire distinctiveness (secondary meaning) through use in commerce.
Proof of substantially exclusive and continuous use of your mark in commerce for the five years before the date on which the claim of distinctiveness is made is evidence the USPTO considers to establish secondary meaning under Section 2(f) of the Lanham Act.
Assuming your mark is merely descriptive and you meet the 5-year test, your brand has gained "secondary meaning" status for purposes of registering a trademark on the Principal Register. If the term is generic, it will never be entitled to trademark protection.
If you are looking for a source, the Trademark Manual of Examining Procedure (TMEP) gives guidance.
See TMEP 1212
The answers of the other 3 attorneys are all correct and I agree with them. But the real answer to your question requires a legal conclusion based upon a thorough analysis of the mark, the exact manner and circumstances under which it has been used, for how long, with how much money invested in its use to advertise the associated goods/services and the end result of all that marketing using the mark, i.e. how well the actual and prospective customers of the business would associate that particular business with that particular mark. As Mr. Matthews stated, usually expensive marketing research is used to prove the customer association when secondary meaning is an issue in trademark infringement litigation. And as Mr. Barman and Mr. Paul properly identified, the US Patent and Trademark Office has rules for determining whether a mark has gained sufficient secondary meaning in order to be granted a registration on the Principal Register (as opposed to the Supplemental Register).
Either way, while this question is a good one, the ultimate determination of secondary meaning for a mark is decided by attorneys - i.e. the trademark examining attorney at the USPTO, judges of the Trademark Trial and Appeal Board at the USPTO, state and federal court judges, and the parties own attorneys, and therefore you really need to consult an attorney to receive the real answer to the particular mark about which you are concerned about. And that raises the question that Mr. Matthew asks - why do you need to know this? Because you will need to pay a lawyer to really get an answer upon which you rely. No database or register could tell you definitively whether or not a mark has achieved secondary meaning. Even the USPTO Register which will list registrations claiming secondary meaning in order to have registered on the Principal Register may not have necessarily achieved secondary meaning sufficient to prevent another's use of the mark or defend its own right to use the mark. The claim of secondary meaning on the USPTO Register states only that an examiner thought there might be enough secondary meaning to grant a registration. A court could easily overturn that conclusion.
There is no database or registry of "secondary meaning." A trademark must be distinctive in order to function as an indicator of the source of goods or services. The distinctiveness of a trademark may be either inherent or acquired. An example of an inherently distinctive mark is Exxon for gasoline. Exxon is an arbitrary word that may function as a trademark. A merely descriptive word such as "matchmaker" for a dating service would have to acquire distinctiveness in the relevant market (that is, customers recognize it as your trademark) before it can function as a trademark. A generic term such as "cereal" for cereal can never function as a trademark because competitors need to be able to identify their products generically.
If your competitor has a US trademark registration (on the principal register) for its mark, that trademark is presumed valid and will be presumed to have either inherent distinctiveness or acquired distinctiveness (secondary meaning).
However, a merely descriptive mark can be registered on the supplemental register, but will be not presumed to have acquired distinctiveness (secondary meaning).
In truth, you won't know until a court decides the issue. Whether a brand has gained secondary meaning is a fact intensive inquiry, and when all the facts are on the table it is common for reasonable lawyers and judges to disagree. Importantly, the mere fact that a trademark office examiner allows a trademark to issue based on the five year rule does not mean that a court would agree---trademark examiners often make mistakes on this issue and allow trademarks to issue that are later rejected or limited by a court. If you are involved in a dispute of some kind that requires analysis of the issue of "secondary meaning", or if the issue has arisen because of a rejection by a trademark examiner, you owe it to yourself to retain counsel---if you think you can handle this well on your own you are making a big mistake.
Do your customers associate your brand with your company? That is, in essence, secondary meaning. To prove this in Court, however, most attorneys utilize survey experts (which can be very expensive). Why would you need to determine this fact unless you had a potential infringer?
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