Top Tips for Creating Trademark and Trade Dress Protection Evidence

This article was written for World Trademark Review and was published March 15, 2023. 

I used to think I would go to prison if I created evidence. Then I became an IP litigator, and learned that companies can use advertising and public relations to “create” evidence of secondary meaning for descriptive trademarks, service marks, and trade dress. Taking these steps as soon as a new piece of intellectual property is introduced will help companies build the moat around their brand. It will also help internal legal ‘cost centers’ provide tangible value to a company’s brand. However, it is important for in-house counsel and marketing teams to work together to create evidence of secondary meaning, which will take trademarks and trade dress from unprotectable to valuable intellectual property.

As IP practitioners know, secondary meaning is consumer perception that a mark or trade dress identifies the source of particular goods or services. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.

There are two types of trademarks and service marks, inherently distinctive marks and descriptive marks. A descriptive mark, which identifies a quality of a good or service, is not protectable unless there is proof of secondary meaning. Additionally, product configuration trade dress always requires proof of secondary meaning. And the burden of demonstrating secondary meaning “is substantial and requires a high degree of proof” (Test Masters Educ Servs v. Singh, 428 F.3d 559, 567 (5th Circuit 2005)).

A 2022 case from the Federal Circuit (SoClean v Sunset Healthcare Sols 52 F.4th 1363) showed how important secondary meaning can be. In that case, a company had registered trade dress. A registration creates a presumption of valid protection. The problem was that the USPTO made a mistake in granting the registration.

To obtain its registration, the plaintiff relied solely upon its five years of continuous use of the product configuration. However, the USPTO’s Trademark Manual of Examining Procedure requires additional evidence of secondary meaning for product configurations. According to the USPTO’s rules, five years of use alone is not sufficient to prove secondary meaning. The examiner allowed the registration to issue without any additional evidence of secondary meaning.

After the registration was granted, the company sued for trade dress infringement and sought a preliminary injunction against further sales of a competitor’s filter. The defendant presented evidence that the registration should not have been allowed. On appeal, the Federal Circuit said that evidence did not matter. The presumption came from the registration. What the defendant did not do was put on proof to rebut the presumption of secondary meaning. Because of this failure, the Federal Circuit upheld the injunction.

That case makes clear that both sides to a suit are going to need to gather and present evidence for or against a secondary meaning finding. Secondary meaning can be the difference between an injunction shutting down a competitor or a finding of no protection for a company’s mark or trade dress.

That effect plays out every day. In 2022, Amazon Technologies was denied trademark protection for TRUEMESH after that term was found to be descriptive because there was not sufficient proof of secondary meaning.

How is secondary meaning proven in the United States?

The USPTO considers three basic types of evidence:

• • Prior registrations: A claim of ownership of one or more active prior registrations on the Principal Register of the same mark for goods or services that are sufficiently similar to those identified in the pending application.
  • Five years’ use: A verified statement that the mark has become distinctive of the applicant’s goods or services by reason of the applicant's substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made.
  • Other Evidence: Other undefined “appropriate evidence” of acquired distinctiveness.

Federal courts use a different and more robust process. In determining whether secondary meaning exists, courts look to the:

• • Length and manner of use of the mark.
  • Volume of sales.
  • Amount and manner of advertising.
  • Nature of use of the mark in newspapers and magazines.
  • Consumer-survey evidence.
  • Direct consumer testimony.
  • Defendant’s intent in copying.

Some of those elements depend on the facts as they exist. However, for the amount and manner of advertising and nature of the use of the mark in newspapers and magazines elements, companies can “create” their own evidence.

Creating advertising evidence

Not all advertising evidence counts as proof of secondary meaning.

Courts only look at advertising that promotes the mark or trade dress: “The question is not the extent of the promotional efforts, but their effectiveness in altering the meaning of [the mark or trade dress] to the consuming public” (Aloe Crème Laboratories v Milson (423 F. 2d 845, 850 (5th Circuit, 1970))).

Some of the most well-known brands have perfected a model for creating evidence that courts will consider.

Coca-Cola’s bottle is one of the most famous pieces of trade dress in existence. Almost every Coca-Cola ad features that bottle in some form. Coca-Cola cans include a picture of the bottle’s shape. By taking marks or trade dress and using them consistently in all advertising, it helps create a link between the bottle shape and the producer of Coca-Cola.

Courts have explained exactly what a company needs to do to create advertising evidence to support a finding of secondary meaning – the advertising must use the mark in a context that causes consumers to associate the mark with a single entity. Effective advertising therefore emphasises the mark or the particular trade dress (Yankee Candle v Bridgewater Candle, 259 F.3d 25, 44 (1st Circuit 2001)).

Perhaps no company is better at this than McDonald’s. The fast food giant’s advertising almost always features its ‘golden arches’. McDonald’s has used a series of billboards that only say phrases such as “just missed us,” “on your left,” and “on your right,” but also featured a portion of the golden arches mark. That kind of advertising emphasises the mark. Further, because it uses the mark as the only indication of source, excluding the company name, it is strong evidence that there is a connection between the golden arches and the brand. McDonald’s takes a similar tack with its french fry packaging which has, over the years, featured only the golden arches without using the brand name.

The three big tips the cases show for advertising that is effective at creating evidence of secondary meaning are:

• • Consistent consumer-facing ads featuring the mark or specific parts of the trade dress.
  • Using the mark in a context that associates it with a single source.
  • Using the mark or trade dress as a stand-in for the brand name.

Creating earned media evidence

The law of secondary meaning has not caught up with the 21st century. The cases talk primarily about the use of marks and trade dress in newspapers and periodicals. A better way to think about this element of proof is earned media.

Having spent a lot of time with marketers, I know most modern marketing plans include four quadrants:

• • paid media;
  • owned media;
  • earned media, and;
  • rented media.

Generally, paid advertising and self-promoted social media fall under the advertising element for proof of secondary meaning. The newspaper and periodical element encompasses earned media, which is news coverage and consumer-created organic social posts.

In deciding what earned media is helpful in proving secondary meaning, courts have the same concerns as with advertising: does the earned media create a connection between the mark or trade dress and consumer’s perception of the source of goods or services? (APP Grp (Can) v Rudsak USA, No. 21-CV-7712, (SDNY 10 August 2022).

While third parties are the ultimate decision-makers in how marks and trade dress will be used in earned media, there are steps marketers can take to promote descriptive marks and trade dress in the press.

A great marketing and public relations team can affect the decisions made by others. Instagrammable spaces in and around retail stores drive huge amounts of organic social posts. Tourist areas often have lines for the best walls to social media pictures. By creating a photo background that features a mark or trade dress, companies can drive consumer social posts that feature the mark or trade dress.

As newspapers and other news outlets cut staff, marketers have an easier time controlling what identifiers and pictures get used with news stories. Submitted photos should always contain the marks or trade dress companies are trying to promote. By getting the mark or trade dress featured in news stories, marketers can create evidence of secondary meaning. Courts have specifically found that when news coverage used a descriptive mark as shorthand for the brand itself, that was proof of secondary meaning. That is something good communications can promote or at least put in the minds of reporters.

Finally, having a marketer present at all photo shoots can ensure that at least the suggestion of including the mark or trade dress featured in the coverage will be made. This is especially easy when a location includes one of those walls that is a perfect setup for pictures.

The takeaways for earned media are:

• • Make it easy for consumers to feature descriptive marks and trade dress in social media posts.
  • Influence media coverage to include descriptive marks and trade dress and to refer to the brand by those marks.
  • Cases live and die by evidence of secondary meaning. In-house counsel working with marketing teams to create evidence of secondary meaning can short-circuit the problems that many companies face when trying to protect their marks.