Section 12.22

• Jurisdiction: New York

d. Establishing Secondary Meaning

Under the Lanham Act, the USPTO will determine whether the designer has achieved secondary meaning based on proffered evidence. Necessarily, the designer must demonstrate acquired distinctiveness of the subject element through a minimum of five years of substantially exclusive and continuous use.¹³⁶⁶ Additional evidence should include advertising expenditures,¹³⁶⁷ annual sales,¹³⁶⁸ unsolicited press coverage, scope of distribution, a record of past enforcement,¹³⁶⁹ and even consumer surveys,¹³⁷⁰ all such documentation attached to the designer's affidavit.

The affidavit should also include statements about the origination of the distinctive feature (emphasizing its nonfunctional nature), the scope of distribution in store fronts and chain stores, and any use by celebrities (aside from paid endorsements, which would be included under advertising expenses). If this feature relates to luxury goods, the affidavit should mention the price range for those goods; this will help establish a sophisticated consumer base who relies on such indicia as a red sole or ornamental stripes to determine quality.

One quick caveat: applying for secondary meaning will also serve as an admission that the mark is not inherently distinctive (i.e., suggestive, fanciful, or arbitrary). Therefore, if the application fails, the designer could not simply apply for registration with the argument that the mark, not having "acquired" distinctiveness was really just distinctive all along. Always consider submitting an application for the mark as inherently distinctive first.

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Notes:

^[1366] 15 U.S.C. § 1052(f).

^[1367] Trademark Manual of Examining Procedure (T.M.E.P.) 1212.06(b) Advertising Expenditures, 2007 WL 3004474.

^[1368] In re Boston Beer Co. L.P., 198 F.3d 1370 (Fed. Cir. 1999).

^[1369] Coach Leatherware Co., Inc. v. Ann Taylor, Inc., 933 F.2d 162, 169 (2d Cir. 1991).

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