Secondary meaning arises when consumers associate an otherwise descriptive word, name, slogan, symbol, or design with a single source. Do you need a secondary meaning survey to show a descriptive word or phrase has been elevated in the minds of consumers to identify a specific brand?
Keegan & Donato Consulting is a specialty research consultancy in beautiful Rye, New York. We provide a comprehensive suite of services, including consulting on litigation strategy for plaintiff and defendant clients, consumer research studies, expert reports, testimony in trademark and trade-dress litigation, testimony at deposition and trial, and rebuttal of opposing parties’ surveys when applicable.
Principals Mark Keegan and Tony Donato offer wide-ranging strategic and analytical skills in intellectual property litigation and have collaborated extensively with plaintiffs and defendants in support of trademark infringement and trade dress litigation and on cases involving marketing, business, and financial issues.
What is Secondary Meaning?
Ordinarily, it’s not possible for descriptive marks to receive trademark protection unless they have acquired “secondary meaning” through sufficient advertising or exposure.
Secondary meaning occurs when significant numbers of consumers are presented with a mark that consists of words that have an ordinary meaning of their own and associate that mark with a particular supplier of goods or services.
A good example is the word “Apple.” The term primarily refers to a sweet, edible fruit, but consumers also associate it with its secondary meaning, which is specific to a hardware and software brand best known for its personal computers, smartphones, and digital devices.
Other examples include Xerox® for copy machines and Band-Aid® for adhesive bandages. These names were initially generic descriptions. After decades of use in the marketplace, however, they achieved trademark status because the manufacturers proved that a link was established in the minds of consumers – a secondary meaning – between the products and their sources.
Why You Need an Expert
The example below illustrates the importance of hiring an experienced expert who can clearly and concisely explain their methodology and can withstand cross-examination.
In Valador, Inc v. HTC Corporation, 1:16-cv-1162 – Dist. Court, E.D. VA (2017), the plaintiff, a NASA contractor, alleged that the defendant, one of the world’s largest cell phone makers, violated its trademark on 3-D rendering software (“VIVE”) by marketing a virtual reality headset with a similar name (“HTC Vive”).
To support its claim of likelihood of confusion, the plaintiff hired a consultant who purported to be an expert in marketing, marketing research, and conducting market surveys but whose qualifications and capabilities turned out to be inadequate.
The Court determined the expert was “not qualified to present his proffered opinions” and excluded the survey results in their entirety, finding that the survey “(1) failed to evaluate the proper universe of respondents; (2) did not replicate market conditions; (3) neglected to use a control group; (4) eschewed the recognized methodologies for conducting trademark confusion surveys; and (5) asked improperly leading questions. These fundamental flaws, taken together, render the survey so unreliable as to be inadmissible.”
Contact Keegan & Donato Consulting at (914) 967-9421 when you need a secondary meaning survey. We can help you develop a robust strategy in your trademark case.