Keegan & Donato Consulting has extensive experience in conducting acquired distinctiveness surveys that can provide credible evidence of whether a descriptive word, design or trade dress has met the requirements of the Lanham Act and qualifies for USPTO protection.
We are a specialty research consultancy that designs and executes consumer-based surveys for attorneys and their clients in cases involving acquired distinctiveness, secondary meaning, and a wide variety of marketing and commercial litigation issues.
Trademarks are divided into five different categories and ranked in order of their degree of inherent distinctiveness.
- Fanciful marks: These marks consist of an invented combination of letters that have no inherent meaning and are created to identify the owner’s products or services. Well-known examples of fanciful marks include Kodak for photo supplies and Exxon for fuel products.
- Arbitrary marks: These marks have a commonly understood meaning, but the meaning is not related to the goods or services being offered for sale. Well-known examples of arbitrary marks include Camel for cigarettes and Apple for computers.
- Suggestive marks: These marks hint at or suggest the nature of a product or service or one of its attributes without actually describing the product or service. Well-known examples of suggestive marks include Greyhound for a bus line and Coppertone for suntan lotion.
- Descriptive marks: These marks consist of a word or words that describe ingredients, qualities, or design characteristics (including trade dress) of the goods being sold. Descriptive marks are generally not granted trademark protection, but may become protectable if they acquire secondary meaning, such as Best Buy.
- Generic marks: These marks describe a category of product or service, such as “bread” or “clock,” and the public perceives and uses them solely as common nouns or terms. Generic marks cannot be afforded trademark protection.
Trade Dress and Trademark Protection
Trade dress generally involves the design and shape of the materials in which a product is packaged, including features such as size, shape, color or color combinations, texture, or graphics, but may also include the design and shape of the product itself. In 1992, The U.S. Supreme Court approved the practice of brand owners claiming a trademark interest in the way their products look or are packaged.
An unregistered trade dress is entitled to protection under § 43(a) of the Lanham Act if it is distinctive, either inherently or through an acquired distinctiveness (or secondary meaning). A finding of secondary meaning essentially elevates a mark’s status, opening the path to trademark protections that previously may have been unavailable.
Incorporating a consumer research study as part of your trademark litigation can help you prove acquired distinctiveness and secondary meaning, and should be a primary consideration in developing case strategy.
Call Keegan & Donato Consulting at (914) 967-9421 to find out how an acquired distinctiveness survey could help you achieve trade dress protection. We will design a study to target relevant consumers in your client’s market and determine how these consumers perceive your client’s brand.