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Secondary Meaning

mark trademark protection register

A doctrine of TRADEMARK law that provides that protection is afforded to the user of an otherwise unprotectable mark when the mark, through advertising or other exposure, has come to signify that an item is produced or sponsored by that user.

Under trademark law a mark associated with a marketed product generally cannot receive full trademark protection unless it is distinctive. Trademark protection gives the holder of a mark the exclusive right to use that mark in connection with a product.

Full trademark protection is given when the U.S. PATENT AND TRADEMARK OFFICE places the mark on the principal register of trademarks. Suggestive, ARBITRARY, and fanciful marks distinguish a product from other products, so they automatically qualify for the principal register. Descriptive and generic marks ordinarily do not qualify for the principal register. A person may not, for example, claim the right to the word "fine" in connection with a product because the word is merely descriptive. A descriptive or generic mark may, however, be placed on the supplemental register, which gives the holder of the mark a certain measure of trademark protection. If the mark acquires a secondary meaning after five years of continuous, exclusive use on the market, the mark may be placed on the principal register (15 U.S.C.A. § 1052(f)).

A descriptive or generic mark attains a secondary meaning if the producer so effectively markets the product with the mark that consumers come to immediately associate the mark with only that producer of that particular kind of goods. To illustrate, assume that an apple grower markets red apples under the term "Acme." Because the term is generic, it would not qualify for full trademark protection at first. If, however, customers immediately recognize Acme apples as the apples produced by that grower, after five years the producer may prevent all others from using the mark "Acme" in connection with red apples.

Under 15 U.S.C.A. § 1052(a)–(d), (f), immoral or scandalous marks, national symbols, and names of living figures cannot acquire trademark protection, even through secondary meaning. Surnames generally are not given trademark protection, but a surname may qualify for protection if it acquires a secondary meaning (Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145, 1955 WL 6450 [Com'r 1955]).

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