Acquired distinctiveness transforms non-distinctive marks into protectable ones through marketplace recognition. This concept is crucial for brands seeking trademark protection, as it allows descriptive marks to gain legal significance and registration on the Principal Register.

Several factors contribute to establishing secondary meaning, including length of use, advertising efforts, sales volume, and consumer recognition. Case studies like Zatarain's and Two Pesos highlight the importance of consistent branding and market presence in proving acquired distinctiveness.

Understanding Acquired Distinctiveness and Secondary Meaning

Acquired distinctiveness and secondary meaning

• Acquired distinctiveness transforms non-distinctive marks into distinctive ones through marketplace recognition (Coca-Cola, Xerox)
• Secondary meaning creates consumer association between mark and specific source (McDonald's golden arches)
• Legal significance enables protection for otherwise non-protectable marks, allows Principal Register registration, provides enforcement basis against infringers

Factors for secondary meaning

• Length and exclusivity of use evaluates duration and continuity in commerce (Tiffany & Co. since 1837)
• Amount and manner of advertising considers promotional efforts, media types, and geographic scope (Nike's "Just Do It" campaigns)
• Volume of sales examines quantity of goods/services sold and market share (iPhone sales figures)
• Direct consumer testimony utilizes surveys and anecdotal evidence demonstrating recognition
• Intentional copying by competitors indicates mark's value and recognition (knockoff Louis Vuitton bags)
• Unsolicited media coverage includes press articles or reviews mentioning the mark (Apple product launches)
• Consumer surveys measure brand recognition through scientifically conducted polls

Establishing and Protecting Acquired Distinctiveness

Case studies of secondary meaning

• Zatarain's, Inc. v. Oak Grove Smokehouse, Inc. demonstrated long-term use of "Fish-Fri" for seafood batter mix, extensive advertising, and significant sales figures
• Two Pesos, Inc. v. Taco Cabana, Inc. established trade dress protection for inherently distinctive restaurant decor without requiring secondary meaning proof
• Strategies for establishing secondary meaning include consistent mark use, comprehensive branding, consumer surveys, and maintaining advertising and sales records

Inherent vs acquired distinctiveness

• Inherently distinctive marks receive immediate protection upon use in commerce (Kodak, Exxon)
• Acquired distinctiveness requires proof of secondary meaning, typically for descriptive marks (American Airlines)
• Scope of protection often broader for inherently distinctive marks
• Registration process simpler for inherently distinctive marks, no proof of use required
• Enforcement challenges greater for marks with acquired distinctiveness
• Both types require continued use to maintain protection, acquired distinctiveness may need ongoing evidence of secondary meaning