Written By: Jordan Hameen
If a proposed trademark or service mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness or “secondary meaning,” that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce.[1] “The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods.”[2] Establishing secondary meaning requires that “the primary significance of the term in the minds of the consuming public is not the product but the producer.”[3]
The author is disgusted by the heightened level of connectivity produced by widely used social media platforms. The author sees this phenomenon as a disease plaguing the nation’s consumer privacy concerns, but this connectivity is also aiding brand recognition for black owned businesses. Between Facebook, Instagram, and YouTube, average individuals can connect with thousands of people in a uniquely intimate way in a matter of seconds. This enables growing brands to reach a large number of consumers in a short time. Thus, technology is changing the ability to establish acquired distinctiveness, and the accompanying legal test should be flexible enough to accommodate this progression.
Prior to social media platforms, scholars noticed that technology was changing the way companies achieved trademark recognition. According to trademark specialist Thomas McCarthy, “With the advent of massive advertising campaigns on television and the Internet, a new trademark may achieve wide usage and ‘secondary meaning’ within a matter of days or weeks, compared to the many years required in the days of more leisurely advertising.”[4]
In the past few months, the nation has placed a spotlight on the police brutality and systemic racism that has plagued the United States for decades. In light of the circumstances, numerous companies have pledged a heightened commitment to inclusion and equality.[5] Yet, “[i]n the days following the death of George Floyd, Brooklyn-based entrepreneur Aurora James was skeptical of the deluge of corporate support for the Black community.”[6] In a handwritten note posted to her personal Instagram page, James made a simple request of retailers: Commit to having 15% of suppliers be black-owned businesses.[7] Subsequently, several large companies, including Sephora, West Elm, and Rent the Runway, took on this challenge and committed to the 15% pledge.[8] Instagram pages and hashtags were created and dedicated to highlighting black-owned businesses.[9] Now, consumers can search #backownedbusinesses and find a rich bank of brands on the Instagram “explore” page very easily. Here, social media served as a valuable tool for generating trademark and trade dress recognition for numerous black-owned businesses.
Social media provides a much-needed space for businesses owned by marginalized communities to establish secondary meaning, and the USPTO should aid this process by providing a more standardized legal test. “Previously employed multi-factor tests used to determine secondary meaning did not consider social media as a contributor. . .Such tests, which are outdated and need to be reconsidered, favor larger entities with sufficient financial capital to invest in traditional advertising and publicity.”[10] These tests place small businesses trying to break into the market at a disadvantage and “fail[] to reflect the shift that social media has caused in terms of how brands market their goods and services to consumers.”[11]
Also, the most pressing question is how quickly can these emerging businesses “acquire distinctiveness?” “Under the traditional formulation for evaluating proof of secondary meaning, the answer may all too often be ‘not quickly enough.’”[12] If changes are not made, these companies may find themselves defenseless against infringement.
“Courts have been hesitant to consider an applicant’s website traffic metrics as evidence of secondary meaning. It is clear that, although metrics that record website traffic provide concrete information to applicants and domain name managers, the hard numbers are missing the link between consumers and the source that allows for a showing of secondary evidence — that is, the link that connects the product and its source in the minds of consumers.”[13]
Yet, “[c]lose examination of the underlying judicial rationale for that formulation [] demonstrates that while the courts have not quantified the tools, metrics, or methodologies by which to measure social media impact of brand building, there is ample basis for courts to revise the traditional formulation and make allowance for the digital, new media era.”[14] When “secondary meaning is defined solely by criteria requiring large budgets, such as substantial advertising expenditures, many years in the market, or ‘substantial’ sales, it is clear that start-ups . . . will almost inevitably fail to prove acquired distinctiveness.”[15] Therefore, these small businesses entering the field will be blocked out of establishing secondary meaning due to a lack of advertising resources. Creating change to systematic oppression is difficult, but we must analyze all practices put in place and determine what we must do as a nation to make real improvements beyond the creation of a hashtag.
[1] Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580, (Fed. Cir. 1988).
[2] TMEP (Oct. 108) §1212 Acquired Distinctiveness or Secondary Meaning, USPTO, https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e10316.html [https://perma.cc/J7TM-JPHV].
[3] Id.
[4] Thomas McCarthy, § 15:56 Length of Use for Secondary Meaning in Speeded-up Economy, 2 McCarthy on Trademarks and Unfair Competition (5th ed.).
[5] Louise Connelly, This Instagram Post Could Unlock Hundreds of Millions of Dollars for Black-owned Businesses, CNBC (Aug. 9, 2020.10:00 AM), https://www.cnbc.com/2020/08/09/how-this-instagram-post-could-unlock-millions-for-black-owned-businesses.html [https://perma.cc/28M2-5ZJM].
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Caroline Mrohs, How Many Likes Did It Get? Using Social Media Metrics to Establish Trademark Rights, 25 Cath. U.J.L. & Tech. 154, 155 (2016).
[11] Id.
[12] Ronald Coleman, Fashion Dos: Acknowledging Social Media Evidence as Relevant to Proving Secondary Meaning, 106 Trademark Rep. 776, 777 (2016).
[13] Mrohs, supra note 10, at 154, 173.
[14] Coleman, supra note 11, at 776, 777.
[15]Id.
