Understanding Secondary Meaning: Transforming Descriptive Marks into Distinctive Brand Identifiers Through Consumer Recognition

Not all trademarks are created equal. For inherently distinctive marks, the path toward trademark protection is often a routine matter of filling out the necessary paperwork. For descriptive marks, trademark protection is sometimes simply not an option.

Some descriptive marks can be elevated to distinctive marks by acquiring “secondary meaning,” opening the path to trademark protections. Keegan & Donato can help prove secondary meaning among relevant consumers by conducting a consumer research study to determine perception of your client’s brand.

Proving secondary meaning is often a crucial step in trademark litigation, as it establishes a mark’s distinctiveness.

Types of trademarks and their pathways towards trademark protection:

Distinctive Marks

Distinctive marks are trademarks that are inherently unique and immediately recognizable as identifying a specific source. These include fanciful, arbitrary, and suggestive marks, which enjoy stronger legal protection due to their originality. Unlike descriptive or generic marks, distinctive marks stand out in the marketplace, reducing the potential for a likelihood of confusion and solidifying their role as powerful brand identifiers.

Descriptive marks provide information about a product’s features, qualities, or purpose, making them less inherently unique. These marks often include references to geographic locations, ingredients, or product functions. Because they directly describe the goods or services they represent, descriptive marks can face challenges in standing out as identifiers of a single source in the marketplace.

Through consistent use and brand building within their market, some descriptive marks can acquire distinctiveness among consumers. When this happens, the mark is said to have acquired “secondary meaning.” This occurs when relevant consumers associate an otherwise descriptive mark with a single source. Secondary meaning is a powerful indicator that a mark is no longer descriptive and has been elevated in the minds of consumers as a distinctive identifier of a brand.

Proving secondary meaning is often a crucial step in trademark litigation. A finding of secondary meaning essentially elevates a mark’s status, opening the path to trademark protections that previously may have been unavailable. For this reason, allocating sufficient attention to the issue of secondary meaning should be a primary consideration in strengthening your case. Call us to find out how a secondary meaning study can help you develop a robust case strategy.

Conducting a consumer research study is a common approach toward proving secondary meaning.

Keegan & Donato Consulting will design a study to target relevant consumers in your client’s market and determine how these consumers perceive your client’s brand.

Do you have a case that involves secondary meaning?

Would your case benefit from knowing if relevant consumers associate your client’s otherwise descriptive mark with a single source?
Call us to find out how a consumer research study can strengthen your case.
Litigation Surveys & Survey Rebuttals to Help Drive Your Case Strategy Forward

Areas of Expertise

Likelihood of confusion

We use an experimental design (test vs. control) approach to deliver robust, statistically reliable evidence regarding likelihood of confusion.

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Strength of Mark

Survey evidence is a useful tool in proving (or disproving) the strength of a contested mark. Our tailored approach ensures that the most appropriate method is selected for your case.

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Secondary Meaning

Has your client’s mark acquired secondary meaning among consumers? Our survey evidence will provide the answer.

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Acquired distinctiveness

From product design to color, our survey evidence will help you determine how trade dress impacts consumers and your case.

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Lanham Act claims

We have extensive experience conducting surveys to test a wide variety of Lanham Act claims, including likelihood of confusion, secondary meaning, trade dress, and others.

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Consumer perception

Survey evidence can provide crucial information regarding how consumers perceive marks, product designs, colors, websites, and other stimuli.

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Consumer understanding

Our surveys provide thorough insights into how consumers process and understand marketing messages, labeling claims, disclaimers, and other communications.

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Rebuttal work

We have extensive experience rebutting surveys submitted by opposing experts covering a wide range of issues.

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