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Against Secondary Meaning

Jeanne Fromer

Trademark law premises protection and scope of marks on secondary meaning, which is established when a mark develops sufficient association to consumers with a business as a source of goods or services in addition to the mark’s linguistic primary meaning. In recent years, scholars have proposed that secondary meaning play an even more central role in trademark law than it already does. Yet enshrining secondary meaning in the law undermines the ultimate goals of trademark law: promoting fair competition and protecting consumers.

The dangers of enshrining secondary meaning include the problematic doctrine that has built up to assess it or presume it, including the ease of establishing secondary meaning and inaccurate categorizations for assessing protectability and scope; the competitive inequalities secondary meaning creates which hurt smaller and newer businesses; and neglect of competitive harms caused by protecting marks whose primary meaning is too conceptually related to the associated goods or services. Alongside these dangers, businesses intrinsically have the incentive to establish secondary meaning regardless of whether trademark law requires it, making its enshrinement less necessary than the law and scholars suppose. Trademark law therefore ought to dethrone secondary meaning from its central role in establishing protectability and scope. Instead, primary meaning ought to be used to gauge protectability by assessing how conceptually related a mark is to its associated goods or services. Secondary meaning should also serve a more carefully tailored role in assessing scope, with a sliding scale of secondary meaning. These adjustments would address the dangers caused by the current role of secondary meaning and would help restore trademark law’s promotion of fair competition and consumer protection.