I used to think I would go to prison if I created evidence. Then I became an IP litigator, and learned that companies can use advertising and public relations to "create" evidence of secondary meaning for descriptive trademarks, service marks, and trade dress. Taking these steps as soon as a new piece of intellectual property is introduced will help companies build the moat around their brand. It will also help internal legal 'cost centers' provide tangible value to a company's brand. However, it is important for in-house counsel and marketing teams to work together to create evidence of secondary meaning, which will take trademarks and trade dress from unprotectable to valuable intellectual property.
As IP practitioners know, secondary meaning is consumer perception that a mark or trade dress identifies the source of particular goods or services. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.
There are two types of trademarks and service marks, inherently distinctive marks and descriptive marks. A descriptive mark, which identifies a quality of a good or service, is not protectable unless there is proof of secondary meaning. Additionally, product configuration trade dress always requires proof of secondary meaning. And the burden of demonstrating secondary meaning "is substantial and requires a high degree of proof" (Test Masters Educ Servs v. Singh, 428 F.3d 559, 567 (5th Circuit 2005)).
A 2022 case from the Federal Circuit (SoClean v Sunset Healthcare Sols 52 F.4th 1363) showed how important secondary meaning can be. In that case, a company had registered trade dress. A registration creates a presumption of valid protection. The problem was that the USPTO made a mistake in granting the registration.
To obtain its registration, the plaintiff relied solely upon its five years of continuous use of the product configuration. However, the USPTO's Trademark Manual of Examining Procedure requires additional evidence of secondary meaning for product configurations. According to the USPTO's rules, five years of use alone is not sufficient to prove secondary meaning. The examiner allowed the registration to issue without any additional evidence of secondary meaning.
After the registration was granted, the company sued for trade dress infringement and sought a preliminary injunction against further sales of a competitor's filter. The defendant...
