SECONDARY MEANING IN TRADEMARK DISPUTES
Ivan Hoffman, B.A., J.D.
Register your trademarks! (Read “Should I Register My Trademarks?”)
For those who fail to register their trademarks, claims for infringement become significantly more difficult to win for numerous reasons but among the most onerous of such reasons is that a claimant has to prove that the marks have achieved a “secondary meaning.” This can be difficult and often expensive to prove.
A case involving university colors related to a school’s football program illustrates the issue. In Board of Supervisors etc. vs. Smack Apparel Co. etc. , the Fifth Circuit Court of Appeals had to decide whether the said colors of Louisiana State University, University of Oklahoma, Ohio State University and University of Southern California were protected by trademark rights even though the colors were not the subject of trademark registrations.
Each school had for many years used a particular 2-color scheme and that scheme was used in merchandising materials, among other uses. In the words of the Court:
The defendants sold and distributed other merchandising materials which were carried in the same stores as the schools’ materials and often sold next to the schools’ materials. The defendants’ materials used the schools’ colors along with other information including information about the school’s game records. The schools brought suit.The schools use these color schemes in many areas associated with university life, including on campus signs and buildings, on printed brochures, journals, and magazines, and on materials sent to potential donors. The Universities also use the color schemes extensively in connection with their athletic programs,
particularly on team uniforms, resulting in wide-spread recognition of the colors among college sports fans. Each university operates a successful collegiate
football program, and the respective football teams have appeared on numerous occasions in nationally televised football games that have been viewed by
millions of people.
The schools also grant licenses for retail sales of products, including tshirts, that bear the university colors and trademarks. In recent years, the total annual sales volume of products bearing the school colors along with other identifying marks has exceeded $93 million for all the Universities combined. The Universities hold registered trademarks in their respective names and commonly used initials. They do not, however, possess registered trademarks in their color schemes. [emphasis added]
The Court stated:They alleged that Smack’s shirts infringed their unregistered trademarks by “combining Plaintiffs’ Marks with references to, inter alia, . . . (a) well-known and highly-publicized athletic events in which a University participated; (b) a University’s opponent in the referenced athletic event; (c) the geographic area in which the referenced event takes place; (d) titles and honors bestowed as a result of the referenced athletic event; (e) a University’s earlier athletic successes and accomplishments; and (f) the geographic area in which the University is located or associated.”
The Court then addressed the issue of secondary meaning.The Lanham Act provides that a trademark may be “any word, name, symbol, or device, or any combination thereof” that is used or intended to be used “to identify and distinguish” a person’s goods “from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”15 A mark need not be registered in order to obtain protection because “[o]wnership of trademarks is established by use, not by registration.” Union Nat’l Bank of Tex., Laredo v. Union Nat’l Bank of Tex., Austin.16 The marks at issue in this case are unregistered, and, as noted by the district court, were described by the Universities as “color schemes in the context of merchandise that makes reference to the Plaintiff Universities or their accomplishments and is directed to their fans and other interested consumers.”17
The protectibility of unregistered marks is governed generally by the same principles that qualify a mark for registration under the Lanham Act. Two Pesos, Inc. v. Taco Cabana, Inc.18 The key is whether the mark is “capable of distinguishing the applicant’s goods from those of others.”19 Marks are generally classified as (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.20 The parties here do not articulate a classification for the marks at issue, but the briefs show that they, and indeed the district court, have treated the marks as descriptive. This type of mark is not inherently distinctive because it does not inherently identify a particular source of the product; instead, it requires secondary meaning to be protected under the Lanham Act.21 [emphasis added]
The parties correctly agree that a color scheme can be protected as a trademark when it has acquired secondary meaning and is non-functional. Qualitex Co. v. Jacobson Prods. Co.22 Although the parties discuss color at length in their briefs, the Universities do not claim that every instance in which their team colors appear violates their respective trademarks. Instead, the claimed trademark is in the colors on merchandise that combines other identifying indicia referring to the Universities. It is appropriate therefore to consider not only the color but also the entire context in which the color and other indicia are presented on the t-shirts at issue here.
The Court went on to analyze the said factors:Secondary meaning “occurs when, ‘in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.’” Wal-Mart Stores, Inc. v. Samara Bros., Inc.25 [emphasis added] The inquiry is one of the public’s mental association between the mark and the alleged mark holder. Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co.26 A mark has acquired secondary meaning when it “has come through use to be uniquely associated with a specific source.” Pebble Beach Co. v. Tour 18 I Ltd.27 We have applied a multi-factor test for determining secondary meaning. The factors include: “(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant’s intent in copying the trade dress.”28 These factors in combination may show that consumers consider a mark to be an indicator of source even if each factor alone would not prove secondary meaning.
It is worthy to note that this case was decided at the trial court level on a motion for summary judgment. Issues related to secondary meaning are questions of fact that require proof of all the elements above and, as indicated previously, this can require great expense on the part of the claimant. In this instance, however, the evidence was seemed legally so compelling that the claimants were entitled to a judgment based on the motion for summary judgment and this was affirmed on appeal. Do not be fooled however into believing that that result will follow in every instance since it is unlikely to be so.The record shows that the Universities have been using their color combinations since the late 1800s.30 The color schemes appear on all manner of materials, including brochures, media guides, and alumni materials associated with the Universities. Significantly, each university features the color schemes on merchandise, especially apparel connected with school sports teams, and such prominent display supports a finding of secondary meaning.31 The record also shows that sales of licensed products combining the color schemes with other references to the Universities annually exceed the tens of millions of dollars.32 As for advertising, the district court held that the Universities “advertise items with their school colors in almost every conceivable manner . . . .”33 It is not clear from the summary judgment evidence where and how the Universities advertise their merchandise, but they certainly do use their color schemes and indicia in numerous promotional materials aimed at students, faculty, alumni, and the public in general, which strengthens the conclusion that the color schemes and indicia viewed in context of wearing apparel also serves as an indicator of the Universities as the source or sponsor of the apparel. Furthermore, the district court correctly observed that the school color schemes have been referenced multiple times in newspapers and magazines and that the schools also frequently refer to themselves using the colors.34 The district court did not specifically refer to any consumer-survey evidence or direct consumer testimony, but it noted that Smack admitted it had incorporated the Universities’ color schemes into its shirts to refer to the Universities and call them to the mind of the consumer. Thus, Smack itself believed that the Universities’ color schemes had secondary meaning that could influence consumers, which further supports the conclusion that there is secondary meaning here.35 Given the longstanding use of the color scheme marks and their prominent display on merchandise, in addition to the well-known nature of the colors as shorthand for the schools themselves and Smack’s intentional use of the colors and other references, there is no genuine issue of fact that when viewed in the context of t-shirts or other apparel, the marks at issue here have acquired the secondary meaning of identifying the Universities in the minds of consumers as the source or sponsor of the products rather than identifying the products themselves.
We think this conclusion is consistent with the importance generally placed on sports team logos and colors by the public. We have previously noted, although not in the context of secondary meaning, that team emblems and symbols are sold because they serve to identify particular teams, organizations, or entities with which people wish to identify. See Boston Prof’l Hockey Ass’n v. Dallas Cap & Emblem Mfg., Inc.36 We think this desire by consumers to associate with a particular university supports the conclusion that team colors and logos are, in the minds of the fans and other consumers, source indicators of team-related apparel. By associating the color and other indicia with the university, the fans perceive the university as the source or sponsor of the goods because they want to associate with that source.
The Court then went on to discuss likelihood of confusion and functionality as well as laches issues but those issues are beyond the scope of this article. It also found that the defendants were not entitled to the defense of “nominal fair use” but this too is beyond the scope of this article. You can read about that kind of defense in “Fair Use of Trademarks” on my site.
Registration of trademarks provides prima facie evidence of the validity of the subject marks and, after 5 years, the marks can become incontestable. This often can save a claimant from the uncertainty of establishing their marks as well as significant costs in an attempt to establish the same.
Register your trademarks!
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