Secondary Meaning Surveys

Trademarks fall along a spectrum of distinctiveness. Generic terms sit at one end and cannot work as marks. Fanciful coined words sit at the strong end. Suggestive marks hint at a quality of the product, and descriptive marks state it outright. Competitors need to be able to use common descriptive words, so a descriptive mark can become protectable only through sustained, exclusive use that teaches consumers to see it as a brand.

Section 2(f) of the Lanham Act allows registration of an otherwise unregistrable mark that has become distinctive in commerce. For registration under Section 2(f), the USPTO may accept five years of substantially exclusive and continuous use as prima facie evidence in appropriate cases. Acceptance is not automatic, and further evidence may be required, particularly for highly descriptive terms.

The central question is whether the public’s primary understanding of a term is that it identifies a source, rather than the product itself. Courts commonly look at the length and exclusivity of use, advertising, sales volume, evidence of copying, and direct evidence that consumers associate the term with one source. No single factor controls.

Direct consumer perception is different in kind. It speaks to the central question itself, while the other factors only support inferences about it.

Secondary meaning exists in consumers’ minds. A survey measures it directly, while circumstantial evidence has to work backward from commercial activity. Assuming secondary meaning from advertising or longevity alone can mislead.

Shari Diamond’s Reference Guide on Survey Research, published by the Federal Judicial Center, is a common framework for judging surveys. It covers defining the universe, asking neutral questions, administering the survey, and the statistics.

Universe selection is where many surveys go wrong. A survey about industrial cleaning equipment, for example, should sample industrial purchasers, not the general public. A wrong universe is a common and damaging error.

A survey can also defeat a claim of secondary meaning. In Trademark Trial and Appeal Board proceedings and in district court, a defendant can commission a survey showing that consumers read the term as descriptive or generic. That result can limit a plaintiff’s reliance on the mark in infringement or dilution claims.

Decades of promotion can still fall short if consumers continue to read the term descriptively.

Courts tend to give real weight to surveys that follow Diamond’s criteria: a proper universe, neutral design, controlled administration, and reliable statistics. Weaker surveys may be admitted but discounted, or excluded under Daubert v. Merrell Dow Pharmaceuticals, Inc.

Whether to commission a survey, and how carefully it is done, can affect how a case turns out. Consumer research is a real tool of proof, not decoration.