Trademark law protects a brand name or a symbol used to distinguish goods or services from competitors. However, descriptive marks can’t ordinarily receive trademark protection unless they have acquired “secondary meaning” through advertising or exposure. Keegan & Donato Consulting consumer surveys can help you establish secondary meaning, a crucial step in your trademark litigation.
Keegan & Donato Consulting is a specialty research consultancy in beautiful Rye, New York. 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?
Secondary meaning occurs when significant numbers of consumers are presented with a trademark that consists of words that have an ordinary meaning of their own, a mark they associate with a particular supplier of goods or services.
A good example is the word “Apple.” The term ordinarily refers to a sweet, edible fruit. Still, 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 secondary meaning was established in the minds of consumers between the products and their sources.
How a Survey Can Help
A secondary meaning survey can be used in trademark infringement cases to determine whether a particular trademark has acquired a secondary meaning.
The process involves questioning consumers about the trademark, such as what product or service it represents, where they have seen the trademark, and what comes to mind when they see it.
The survey results are analyzed to determine whether the trademark has acquired a secondary meaning and is protectable. If a plaintiff can show that the defendant’s use of the mark will likely cause confusion among consumers, the plaintiff may be entitled to injunctive relief and damages.
A Notable Court Decision
One of the most notable court cases that relied on a secondary meaning survey was the case of Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). In this case, Taco Cabana, a Mexican restaurant chain, sued Two Pesos, a competing Mexican restaurant chain, for trademark infringement. The plaintiff claimed that Two Pesos, the defendant, had copied its distinctive trade dress, which included a festive and colorful decor.
The Supreme Court relied on a secondary meaning survey conducted by Taco Cabana to determine that its trade dress had acquired a secondary meaning. The Court held that the plaintiff’s trade dress was protectable because it had acquired a secondary meaning and that the defendant had infringed on Taco Cabana’s trade dress.
Secondary-meaning surveys can be an essential tool in trademark infringement cases. Contact Keegan & Donato Consulting at (914) 967-9421. Our team can work on a fixed-rate or hourly basis based on your needs and will help you design a methodologically sound consumer study.