Trademarks that aren't inherently distinctive, like descriptive trademarks, must have secondary meaning to be protected under US Intellectual Property Laws. Secondary meaning occurs when the particular trademark transcends public awareness such that people, in general, don't associate it with the product category, but with the actual specific company/brand. For example, most people associate Apple with the specific company rather than with computers in general.
In the Zatarain's, Inc. v. Oak Grove Smokehose, Inc. case, the court spells out the factors that determine whether or not a trademark has reached secondary meaning. They are:
- Amount and manner of advertising that the company has done
- The actual volume of sales
- How long the trademark has been used, and in which manner it has been used
- Feedback by consumers on what they associate the trademark with
These factors are not absolute. You can fail one or two, but as long as your trademark passes a majority of the factors, it can be held to have secondary meaning.
In other words, if you have been using the trademark for a long period of time, and used it such that it's strongly associating your company with it, then you could have established secondary meaning—even if consumers report they don't associate the trademark with your company.
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