AGAINST SECONDARY MEANING.

• Author: Fromer, Jeanne C.

INTRODUCTION 212 I. THE ROLE OF SECONDARY MEANING IN TRADEMARK LAW 216 A. Prootectability 219 B. Trademark Scope 227 II. THE DANGERS OF ENSHRINING SECONDARY MEANING 230 A. Ease of Establishing Secondary Meaning 230 B. Perils of Raising the Bar for Secondary Meaning 234 C. Improperly Presuming Secondary Meaning 236 D. Coexistence of Secondary Meaning and Primary Meaning. 241 E. Businesses' Existing Incentives to Develop Secondary Meaning. 245 III. PRIMARY MEANING AS THE GAUGE OF PROTECTABILITY 249 IV. SLIDING SCALE FOR SECONDARY MEANING IN ASSESSING SCOPE 259 CONCLUSION 264 INTRODUCTION

BOOKING.COM for online travel booking services. "FOR WALK-ING" (with quotation marks) used on Off-White footwear. VAGISIL for vaginal-health products. All of these terms have been involved in recent trademark disputes, a core issue being that protection for these terms arguably runs contrary to trademark law's goals of fair competition and consumer protection because of how closely associated each term is conceptually with the category of goods or services for which it is being used. (1) (In fact, BOOKING.COM touted this close conceptual connection in its widely seen Super Bowl ad this year in which it refers to its name as "lit" for literal. (2)) In particular, giving one business exclusive rights in these marks can prevent competing businesses from using these or similar terms, granting the markholder an outsized competitive advantage. (3)

Even so, each instance also underscores how trademark protection turns on consumers' perception that a word or symbol is a trademark signifying goods or services, known in trademark law as "secondary meaning"--that is, meaning in addition to its linguistic primary meaning. With regard to BOOKJNG.COM, the Supreme Court held that even though "[a] generic name--the name of a class of products or services--is ineligible for federal trademark registration," BOOKING.COM is protectable because "[c]onsumers... do not perceive the term... to signify online hotel-reservation services as a class" but rather as a term with secondary meaning. (4) That is, a "generic.com" term is not always generic and might be protectable based on the presence of secondary meaning. (5) For "FOR WALKING," the Patent and Trademark Office (PTO) refused to register the mark to Off-White on the ground that it is descriptive of footwear despite the fashion business's argument that "the use of the quotation marks changes the commercial impression and therefore creates a non-descriptive mark." (6) Off-White can nonetheless overcome this refusal and register the mark if it responds by submitting sufficient evidence that the term has secondary meaning. (7) As to VAGISIL, the Fourth Circuit recently allowed the markholder to oppose the trademark registration of VAGISAN for competing products even though the mark was closely associated conceptually with vaginal-health products because of the strong secondary meaning of VAGISIL. (8)

More generally, trademark law premises protection for a term or symbol on either a showing of secondary meaning or an irrebuttable presumption that the term or symbol has secondary meaning. It does so through its rules of distinctiveness, allowing marks that are descriptive of the goods or services they signify to be protectable upon a showing of secondary meaning and protecting marks that are suggestive of the goods or services they signify, arbitrary in relation to them, or coined terms without any further showing on the reasoning that these marks intrinsically possess secondary meaning. (9) The law also awards broader scope to marks that have well-established secondary meaning. (10) Atop that, trademark law makes it easy to establish secondary meaning, especially for deep-pocketed businesses."

Yet these rules that base protection and trademark scope on secondary meaning undermine trademark law's goals when there is a close conceptual connection between the mark and the associated goods or services, as in the examples just noted. As discussed herein, this close conceptual connection can exist regardless of whether the law classifies the mark as descriptive, suggestive, arbitrary, or fanciful. (12) When this close conceptual connection exists, a business securing trademark rights in such a mark will inherently possess a tremendous commercial advantage over its competitors. All else being equal, the business can lure in customers more easily than competitors using a less conceptually related mark and it can assert its trademark rights to prevent competitors from choosing a mark that is similar to its advantageous mark. (13) That is precisely antithetical to trademark's goals of fair competition and consumer protection in allowing businesses to distinguish themselves via their marks as source indicator and repository of goodwill. (14) Indeed, trademark protection in this scenario does the contrary by creating unfair competition and consumer harm. (15)

Even so, recent scholarship has sought to make secondary meaning yet more important in trademark law and enshrine it as the basis for protecting just about any term as a mark, even otherwise generic terms like COMPUTER COMPANY for a computer company. (16) The Supreme Court, in its ruling on BOOKING.COM, seems headed in the same direction. (17) The move to enshrine secondary meaning seems to be about grounding trademark protection in what consumers actually perceive as terms indicating product source. Yet it is too easy--especially for well-resourced firms--to show that consumers perceive terms as source-indicating, including for marks whose protection undermines trademark law's goals. Making it harder to establish secondary meaning as a way to promote the law's goals in turn creates undesirable competitive consequences, making it too tough for new entrants or smaller businesses to establish secondary meaning. (18) Additionally, the law conclusively presumes secondary meaning for certain marks where that frustrates trademark's goals. (19) Moreover, even when marks have secondary meaning, they retain their primary meaning, which might be closely related enough conceptually to the associated goods or services that protection impairs trademark law's goals. (20) To the extent that establishing secondary meaning is an independent goal trademark law deems worth encouraging, legitimate businesses have strong incentives external to trademark law to develop secondary meaning anyhow. (21) For these reasons, trademark law should not be centered on secondary meaning because the consecration of secondary meaning counters trademark law's fundamental goals of fair competition and consumer protection.

This Article thus advocates against enshrining secondary meaning as a basis of protectability in trademark law. In its place, the Article proposes recentering distinctiveness doctrine on the primary meaning of terms as the gauge of protectability. That is, a word, image, or other symbol should be protectable as a trademark only when there is enough conceptual distance between the primary meaning of that symbol and the goods or services for which it is being used. Recentering distinctiveness on primary meaning and moving away from secondary meaning would better promote trademark law's goals by encouraging businesses to choose certain marks and avoid others at the outset. Furthermore, because it is difficult to eradicate considerations of secondary meaning from assessment of the scope of trademark rights, the Article recommends that a sliding scale of secondary meaning be established for that assessment. A sliding scale would make the requisite showing of secondary meaning directly proportional to the size of a business's footprint as a way to navigate between the relevance of assessing secondary meaning for scope and the problematic consequences of doing so.

Part I explores the role of secondary meaning in trademark law with regard to both protectability and scope of protection. Part II turns to the dangers of enshrining secondary meaning based on current doctrine, consumer understandings of source indications, and incentives external to trademark law to develop secondary meaning. Part III proposes instead recentering trademark distinctiveness doctrine on primary meaning as the gauge of protectability. Part IV presents a sliding scale for secondary meaning in assessing the scope of trademark rights.

1. THE ROLE OF SECONDARY MEANING IN TRADEMARK LAW

   Words, symbols, logos, and sometimes a product's design or packaging may be protected under trademark law. (22) According to the Lanham Act, these are protectable under federal law so long as they are "used by a person" in commerce "to identify and distinguish his or her goods... from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." (23) Federal law similarly protects marks that designate services. (24) Distinctive marks used in commerce are protectable, either via registration and enforcement, (25) or through a provision allowing enforcement of unregistered marks. (26) Federal law protects trademark registrants against another's "use in commerce [of] any reproduction... of [their] registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive." (27) Unregistered marks are similarly protected. (28)

   Trademark law originated to protect indications of an article's source by guarding producers from competitors' illegitimate interference with their trade. (29) The law has broadened beyond these narrower purposes to also emphasize protecting consumers from confusion to foster fair competition. (30) The increased production capacity for goods ushered in by the Industrial Revolution boosted instances of advertising to the public to distinguish goods, which popularized trademarks as identifiers of the source of...