®
Official Journal of the International Trademark Association
Using Daubert-Kumho Gatekeeping
to Admit and Exclude Surveys in Lanham Act
Advertising and Trademark Cases
Richard J. Leighton
“Did He Really Say That?”
Survey Evidence in Deceptive Advertising Litigation
William W. Vodra
Randall K. Miller
Assessing Trademark Significance:
Genericness, Secondary Meaning and Surveys
Vincent N. Palladino
Experimental Design and the Selection of Controls
in Trademark and Deceptive Advertising Surveys
Jacob Jacoby
Litigation Surveys—Social “Science” as Evidence
Michael Rappeport
Vol. 92
July-August, 2002
No. 4
Vol. 92 TMR
857
ASSESSING TRADEMARK SIGNIFICANCE:
GENERICNESS, SECONDARY MEANING
AND SURVEYS
By Vincent N. Palladino∗
I. INTRODUCTION
The notion that secondary meaning and genericness are
opposite sides of the same coin follows logically from the nature of
trademarks. If a term has trademark significance (secondary
meaning), it cannot be a generic term, and if a term is generic it
cannot have trademark significance. There is, however, far from
unanimous support in the law for this straightforward notion. On
the contrary, the de facto secondary meaning doctrine rejects the
opposite sides of the same coin concept, holding that a term that
acquires secondary meaning cannot be protected as a trademark if
the term is generic.
This article considers the relationship between secondary
meaning and genericness, including surveys that are designed to
explore those issues. Part II maintains that in multiple product
situations secondary meaning and genericness are opposite sides of
the same coin and application of the de facto secondary meaning
doctrine is misplaced. Part III discusses two survey formats that
reflect the view that secondary meaning and genericness are
opposite sides of the same coin in multiple product situations. Part
IV considers the difficulty of assessing trademark significance in
unique product situations. It also considers how the observations
made in Parts II and III can contribute to the design of a survey
intended to assess trademark significance in those situations.
II. TRADEMARK AND
NON-TRADEMARK SIGNIFICANCE
A. Overview
The issue in a trademark case involving an allegedly generic
term is a neutral one: is the term a trademark, or is it not a
trademark because it is generic. Because secondary meaning is a
synonym for trademark significance, that neutral question
∗ Partner in the firm of Fish & Neave, New York, New York, Associate Member of
the International Trademark Association; former Editor-in-Chief of The Trademark
Reporter®; member of Brand Names Education Foundation (BNEF); Co-chair of the BNEF
Ladas Memorial Award Subcommittee; member of the Publishing Board.
858
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becomes: does the term have secondary meaning or does it not
because it is generic.
This notion that secondary meaning and genericness are
opposite sides of the same coin finds support in the law. On the
other hand, the de facto secondary meaning doctrine rejects this
view. These conflicting views can be reconciled by applying the
opposite sides of the same coin approach in multiple product
situations and limiting the de facto secondary meaning doctrine to
unique product situations.
This approach not only reconciles two conflicting branches of
the law, it also allows the genericness doctrine to serve the
purpose for which it is designed. The genericness doctrine assures
that all producers of a type of product may employ a term they
need to use in marketing that type of product. However, the de
facto secondary meaning doctrine requires application of the
genericness doctrine even when multiple producers of a type of
product do not need to use a term in marketing their products.
Accordingly, the doctrine should not be applied in multiple product
situations.
B. The Relationship Between Trademarks
and Non-Trademarks
A trademark is “any word, name, symbol, or device, or any
combination thereof” that a person uses or in good faith intends to
use in commerce “to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by
others and to indicate the source of the goods, even if that source is
unknown.”1 By identifying the goods of one producer and
distinguishing them from the goods of others, a trademark
indicates the source of goods.2 Certain words are not trademarks
because they do not perform this function. Non-trademarks include
words that merely describe some characteristic or feature of goods3
and words that are the generic names of goods.4
Permitting one party to own a trademark, which identifies the
goods of that party and distinguishes them from the goods of
others, promotes competition.5 Conversely, permitting one party to
appropriate non-trademarks impedes competition, because those
1. 15 U.S.C. § 1127 (Supp. 2001). See also United Drug Co. v. Theodore Rectanus Co.,
248 U.S. 90, 97 (1918); McLean v. Fleming, 96 U.S. 245, 254 (1878).
2. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163, 34 U.S.P.Q.2d 1161, 1163
(1995) (“to identify and distinguish the goods—i.e., ‘to indicate’ their ‘source’”; “identifies
and distinguishes a particular brand (and thus indicates its ‘source’)”) (emphasis added).
3. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:16
at 11-21 to 11-23 (4th ed. 2002).
4. Id., § 12:1 at 12-3 to 12-4.
5. Trademarks are said to be the “essence of competition.” S. Rep. No. 79-1333 (1946),
reprinted in 1946 Code Cong. Ser. 1274, 1275.
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859
who compete with that party in the sale of a type of goods should
be free to use terms that describe6 or name7 the type of goods they
sell. Although both descriptive terms and generic terms differ from
trademarks and both serve the competitive need described above,
the law does not treat these two types of non-trademarks in
precisely the same way.
1. Trademarks and Descriptive Terms
A descriptive term can become a trademark when, in the
public mind, it acquires the distinctiveness that characterizes a
trademark, namely, the ability to indicate source by identifying the
goods of one producer and distinguishing them from the goods of
others:
[D]escriptive words on a product . . . can come to indicate a
product’s origin. In this circumstance, trademark law says
that the word . . . , although not inherently distinctive, has
developed “secondary meaning.”8
Implicit in this principle are three concepts. First, as applied
to goods, a trademark and a descriptive term are mutually
exclusive in that a descriptive term lacks the source-indicating
distinctiveness that characterizes a trademark. Second, a
descriptive term has an initial non-trademark meaning. Third, a
descriptive term can acquire secondary trademark meaning with
respect to certain goods.
When a descriptive term has been converted into a trademark
for certain goods, a party other than the trademark owner may not
use the descriptive term as a trademark under circumstances that
are likely to cause confusion.9 However, a party other than the
trademark owner may use the descriptive term “otherwise than as
a mark . . . fairly and in good faith . . . to describe the goods . . . of
such party.”10 For example, even if one party establishes
6. See, e.g., 2 McCarthy, § 11:18 at 11-26 to 11-27 (“[A]ll sellers should be free to
truthfully use [descriptive] terms to describe their merchandise. . . . No one seller should be
allowed the exclusive right to describe a product by its primary characteristic, and thus
preempt or limit competitors’ use of the term to describe their own products.”).
7. Vincent N. Palladino, Genericism Rationalized; Another View, 90 TMR 469, 471
(2000) (“fundamentally, the genericness doctrine prohibits exclusive appropriation by one
party of a term that others need to use in order to compete in a market for goods or
services”) (citing 2 McCarthy, § 12:2).
8. Qualitex, 514 U.S. at 163, 34 U.S.P.Q.2d at 1162-63 (certain authorities omitted).
Accord Restatement (Third) of Unfair Competition § 13 (1995) [hereinafter referred to as
Restatement Third] (a designation acquires secondary meaning when it “has become
distinctive, in that, as a result of its use, prospective purchasers have come to perceive it as
a designation that identifies goods” in a certain way, namely, as goods “produced or
sponsored by a particular person, whether known or anonymous”).
9. E.g., Centaur Communications v. A/S/M Communications, 830 F.2d 1217,
4 U.S.P.Q.2d 1541 (2d Cir. 1987).
10. 15 U.S.C. § 1115(b)(4) (1998).
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trademark rights in CLEAR for bottled water, another party may
describe its brand of bottled water as appearing “clear as a lake on
a bright summer day.”
2. Trademarks and Generic Terms
Like a descriptive term and a trademark, a generic term and a
trademark are mutually exclusive.11 However, in certain other
respects, the relationship between trademarks and generic terms
differs from the relationship between trademarks and descriptive
terms.
First, unlike a descriptive term, a generic term does not
necessarily have an initial non-trademark meaning; some generic
terms have an initial non-trademark meaning,12 while other
generic terms were initially trademarks.13 Still others were chosen
as trademarks, but were challenged as generic before it was clear
whether or not they were regarded by the public as trademarks.14
Second, because a generic term does not necessarily have an
initial non-trademark meaning, one cannot necessarily inquire as
to whether it has acquired a secondary trademark meaning. That
inquiry is relevant only to the first category of generic terms,
namely, generic terms that have an initial non-trademark
meaning.15 In the case of a generic term that was initially a
trademark,16 the question is whether the term has lost its initial
trademark meaning, not whether it has acquired a secondary
trademark meaning. In the case of a term chosen as a trademark,
but challenged as generic while its status is in doubt,17 the
question does not fit neatly into either of the first two categories.
11. 2 McCarthy, § 12:1 at 12-4. This is not to say that a term may not have a dual
significance, being regarded by some members of the public as a trademark and by others as
a generic term. It also does not exclude the possibility that occasionally a term may be a
“hybrid,” functioning as a brand name while also being used as a shorthand designation for
a type or category of product. However, the law requires one to assess the primary
significance of even dual and hybrid terms. See Jerre B. Swann & Vincent N. Palladino,
Surveying “Genericness”: A Critique of Folsom and Tepley, 78 TMR 179 (1988).
12. E.g., Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 811, 49 U.S.P.Q.2d 1458,
1461 (2d Cir. 1999) (holding that “hog” was generic before plaintiff claimed it was its
trademark).
13. E.g., Houghton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (Comm’r Pat. 1950)
(canceling registration of ELEVATOR).
14. See, e.g., the disputes that arose soon after “LA” was first used for beer.
G. Heileman Brewing Co. v. Anheuser-Busch Inc., 676 F. Supp. 1436, 6 U.S.P.Q.2d 1481
(E.D. Wis. 1987), aff’d, 873 F.2d 985, 10 U.S.P.Q.2d 1801 (7th Cir. 1989); Anheuser-Busch
Inc. v. Stroh Brewery Co., 750 F.2d 631, 224 U.S.P.Q. 657 (8th Cir. 1984).
15. See supra n.12. That the inquiry is relevant does not mean that the law readily
affords such terms trademark status. On the contrary, the de facto secondary meaning
doctrine refuses to afford such terms trademark status. See infra n.36.
16. See supra n.13.
17. See supra n.14.
Vol. 92 TMR
861
Rather, the question is more nearly whether the term—such as
“LA” for beer—is perceived as a trademark as the first user
intended or as a generic term despite the first user’s intent, when
its status is challenged.
As in the case of a descriptive term that acquires
distinctiveness, a term that is one party’s trademark and thus is
not a generic term may not be used by another party as a
trademark under circumstances that are likely to cause
confusion.18 However, there is no “fair generic use” right that
parallels the fair descriptive use right. If a term is one party’s
trademark, e.g., TEFLON for non-stick coating, another party may
not use the term “teflon” as the generic name of such party’s nonstick coating otherwise than as a trademark fairly and in good
faith.19
C. The Central Question in the Relationship
Between Trademarks and Generic Terms
In all three categories of generic terms,20 the real question is a
neutral one: is the term at issue a trademark, or is it not a
trademark because it is generic, i.e., does the term identify the
goods of one party and distinguish them from the goods of others,
or does it not.21 Logically, the answer to this question should not
turn on how the term started out and what became of it over time.
18. E.g., Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 216 U.S.P.Q. 579 (9th Cir.
1982).
19. This is not to say that a term may not be a trademark for one product and a generic
term for another. For example, IVORY can be a trademark for soap although “ivory” is a
generic term for the material that makes up an elephant tusk. The absence of a fair generic
use right may reflect the fact that exceedingly few terms with an initial generic meaning
acquire trademark significance. See supra n.15. Thus, the law sees no real need to preserve
the public’s right to use the trademark in its initial non-trademark sense. Moreover, even in
those rare cases where a generic term acquires trademark significance, the acquired
trademark significance supercedes the initial generic significance. Once the term is a
trademark for a product, there is no other sense in which the term may fairly be used
because the term was initially only a generic name for a product, not a term in the language
that existed apart from the product it named.
20. See supra nn.12-14.
21. The closest approximation of this principle is probably Learned Hand’s well-known
statement that the “single question . . ., in all these cases, is merely one of fact: What do the
buyers understand by the word for whose use the parties are contending?” Bayer Co. v.
United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921). Some courts have said that Hand’s
remark applies only to “cases of an invented or coined term which later has allegedly fallen
into generic usage.” 2 McCarthy, § 12:11 at 12-27. However, logically, at least, there is no
reason why a generic term having an initial (non-trademark) meaning could not acquire a
secondary (trademark) meaning. The undoubted rarity of such an occurrence should not be
confused with legal impossibility. See Jerre B. Swann, Genericism Rationalized, 89 TMR
639, 653-54 (1999).
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For example, a term can be generic whether it lost its trademark
significance or never had such significance in the first place.22
Logic also suggests that the concept of secondary meaning
ought to have little or no place in the genericness inquiry if by
secondary meaning we mean simply the process whereby a term
lacking trademark significance acquires that significance over
time. The concept of acquired distinctiveness, or secondary
meaning, is irrelevant to genericness cases that involve a loss of
trademark significance,23 and it does not clearly apply to
genericness cases that involve a challenge to the status of a term
whose significance is in doubt from the outset.24 Even in
genericness cases where the secondary meaning concept might be
said to apply,25 the question of how a previously generic term
acquired trademark significance is really subsidiary to whether, at
the end of the day, the term has such significance, i.e., is the term
a trademark, or is it generic.
Secondary meaning, however, is not the process whereby a
term lacking trademark significance acquires that significance
over time. Rather, it is the result of that process, namely, the
association of a term with goods from a single source that enables
the term to serve as a trademark by identifying the products of one
company and distinguishing them from the products of others.26 As
a synonym for trademark significance, secondary meaning has a
central place in the genericness inquiry. The central neutral
question in such an inquiry is: does a term have trademark
significance, or secondary meaning, or does it not because it is
generic. Viewed that way, secondary meaning and genericness are
opposite sides of the same coin.
D. Logic and the Law
The logic of the “trademark—secondary meaning/nontrademark—genericness” inquiry discussed above, including the
notion that secondary meaning and genericness are opposite sides
of the same coin, finds support in some authorities, but is rejected
by others.
22. Some courts do draw a distinction between these categories in assigning the burden
of proving that a term is generic. 2 McCarthy, § 12:12 at 12-30.
23. See supra n.13.
24. See supra n.14.
25. See supra nn.12 and 15.
26. See, e.g., 2 McCarthy, § 15:48 at 15-77 to 15-78 (“The test of secondary meaning is
the effectiveness of the effort to create it, and the chief inquiry is directed towards the
consumer’s attitude about the mark in question: does it denote to him ‘a single thing coming
from a single source?’”) (emphasis added) (quoting inter alia Carter-Wallace, Inc. v. Procter
& Gamble Co., 434 F.2d 794, 167 U.S.P.Q. 713 (9th Cir. 1970); Vincent N. Palladino,
Secondary Meaning Surveys In Light of Lund, 91 TMR 573, 580-83 (2001) (discussing
authorities)).
Vol. 92 TMR
863
1. Support for Opposite Sides of the Same Coin
The Restatement Third, Unfair Competition ties both
secondary meaning and genericness to public perception of the
term at issue, suggesting that these concepts are, in effect,
opposite sides of the same coin:
Secondary Meaning (§13)
[A designation acquires secondary meaning when] prospective purchasers have come
to perceive it as a designation
that identifies goods [produced
or sponsored by a particular
person, whether known or
unknown].27
Genericness (§15)
If prospective purchasers have
come to perceive a trademark
[a designation that identifies
goods produced or sponsored by
a particular person, whether
known or unknown] . . . primarily as a generic designation
for the category, type, or class
of the goods . . . with which it is
used, the designation is no
longer eligible for [trademark]
protection.28
The Restatement Third, Unfair Competition then explains
that “[t]he ‘primary significance’ standard [applied to generic
designations] is often traced to the Supreme Court’s decision in
Kellogg, although the phrase there appears in the context of a
discussion of secondary meaning. . . . The standard is often
interpreted as a rule of majority usage.”29
Among the authorities cited in the Restatement Third, Unfair
Competition for this proposition is McCarthy on Trademarks and
Unfair Competition, which explains:
The standard most often applied to determine whether a
term is generic is not whether it has some significance to the
public as the name of an article, but whether that is its
principal significance. However, the Supreme Court turned
this statement around and said that for a seller to prove
trademark significance in a term challenged as generic, it
must be proven that the “primary significance of the term in
the minds of the consuming public is not the product but the
producer.” But both word formulations arrive at the same
result from different directions: Majority usage of the word is
controlling.
27. Restatement (Third), supra n.8, § 13.
28. Id. at § 15.
29. Id. at 153-54 (emphasis added).
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The point seems to be that where some customers regard
the term as generic, while others regard it as a mark, the term
must be placed either in the “generic” pigeonhole or in the
“trademark” category. For example, if a survey showed that 75
percent of the public regarded the word as generic, then that
is its “principal significance.”30
It is logical to conclude that a term has secondary meaning or
trademark significance when—to track Restatement Third, Unfair
Competition Sections 13 and 15—the relevant public “perceive[s] it
[primarily] as a designation that identifies goods” “produced or
sponsored by a particular person, whether known or unknown”31
rather than “primarily as a generic designation for the category,
type, or class of the goods.”32
An unusually clear statement of the view that secondary
meaning and genericness are opposite sides of the same coin
appears in the district court opinion in Miller Brewing Co. v.
Falstaff Brewing Corp., which was ultimately reversed by the First
Circuit.33 There, the issue was whether LITE was a trademark or a
generic term for beer. In concluding that plaintiff was likely to be
able to prove that LITE was a trademark, the district court
observed:
I view “genericness” and “secondary meaning” as opposite
sides of the same coin. A word is generic if it has no secondary
meaning; conversely, if “the primary significance of the term
in the minds of the consuming public is not the product but
the producer, [i.e., the word has trademark significance]” then
the word is not generic. Kellogg Co. v. National Biscuit Co.,
305 U.S. at 118, 59 S. Ct. at 113.34
Explaining its conclusion, the district court added:
[U]nder a proper analysis there is no such thing as a “generic”
word with secondary meaning. If the consuming public does
30. 2 McCarthy, supra n.3, § 12:6 at 12-16 to 12-17 (citations omitted).
31. Concerning this possibility, see 5 McCarthy, § 32:190 at 32-316. (“There would
seem to be no logical reason to require any higher percentage to prove secondary meaning
than to prove a likelihood of confusion. There is a close relationship between the two
doctrines. If the survey results are so strong and conclusive as to establish actual confusion,
then some courts view the results as also being evidence of secondary meaning. But the
rebuttal to this argument is that secondary meaning is an issue of validity, more akin to the
majority usage test of genericness than to the significant number test of infringement.”).
32. See Am. Online v. AT&T Corp., 243 F.3d 812, 821-22, 57 U.S.P.Q.2d 1902, 1910
(4th Cir. 2001) (discussing AOL’s argument that a secondary meaning survey that asked
respondents whether a product came from one company or more than one company provided
evidence from which a jury could conclude that the “primary significance to the relevant
public of the phrase ‘You Have Mail’ is to denote its source and therefore that the term is
not generic”).
33. 503 F. Supp. 896, 209 U.S.P.Q. 137 (D.R.I. 1980), rev’d, 655 F.2d 5, 211 U.S.P.Q.
665 (1st Cir. 1981).
34. Id. at 907-08.
Vol. 92 TMR
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perceive the symbol as designating the producer rather than
the product, then the generic label has been incorrectly
applied. See S.S. Kresge Co. v. United Factory Outlet, Inc.,
598 F.2d 694, 696-97 (1st Cir. 1979); Feathercombs, Inc. v.
Solo Products Corp., 306 F.2d at 255-57. Cf. Food Fair Stores,
Inc. v. Food Fair, Inc., 177 F.2d at 185 (conjunction of two
“generic” words capable of designating producer).
***
As Learned Hand stated, “The single question, as I view it, in
all these cases, is merely one of fact: What do buyers
understand by the word for whose use the parties are
contending?” Bayer Co. v. United Drug Co., 272 F. at 509. If
the acid test of a symbol’s capacity to differentiate is public
perception, then the process of labelling for purposes of
protectability cannot be undertaken without reference to that
perception. . . . To label a word or logo “generic” in the face of
the admitted presence of secondary meaning is to assert that
every word has some absolute, inherently correct
characterization that the law will discern without regard to
what the public may think the word means.35
2. Rejection of Opposite Sides of the Same Coin:
The De Facto Secondary Meaning Doctrine
The de facto secondary meaning doctrine rejects the view that
secondary meaning and genericness are opposite sides of the same
coin. This doctrine holds that “[u]nder no circumstances is a
generic term susceptible of [trademark] protection.”36 Put another
way, secondary meaning, arising out of actual association of a term
with the products of only one producer, is not recognized as de jure
trademark significance if the term is considered generic. Rather
than being the opposite of secondary meaning, genericness trumps
secondary meaning.
3. Reconciling Conflicting Views
Underlying the view that secondary meaning and genericness
are opposite sides of the same coin is a simple notion: a term has
secondary meaning when it identifies the goods of one producer
and distinguishes them from the goods of others and lacks such
trademark significance when it does not identify the goods of one
35. Id. at 906-07 (emphasis added).
36. Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5, 7, 211 U.S.P.Q. 665, 666
(1st Cir. 1981), reversing the decision of the district court at supra n.33.
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producer and distinguish them from the goods of others, i.e., when
it identifies a category, type or class of goods.37
If one accepts this view, broad application of the de facto
secondary meaning doctrine appears wrong for reasons that the
Miller Brewing district court articulated:
The insistence that no amount of secondary meaning can
save a generic mark has been justified by an argument that
deserves mention because of its plausibility. If, the reasoning
goes, a single producer could appropriate the name of the
product to his exclusive use, then competitors would not be
able to call their version of the product what it really is. See,
e.g., CES Publishing Corp. v. St. Regis Publications, Inc., 531
F.2d at 13. At first glance, this point appears eminently
reasonable and virtually unarguable. I believe, however, that
appearance is deceptive, for the conclusion is derived from the
unsound premise that the “name” of a product is somehow
definable apart from the commercial context in which it
appears. If the public actually perceives a symbol as
representing the product’s name, then no one producer will be
able to appropriate that mark to his brand because secondary
meaning and likelihood of confusion cannot be proved. If,
however, the public perceives the symbol as representing the
product’s origin, should a court refuse to protect the mark
because it believes that the public has mistakenly attached
brand significance to what is in truth a common descriptive
name? I submit that the “true” meaning of a symbol can be
nothing more, or less, than what the public thinks it means.38
There nevertheless may remain room for a narrower
application of the de facto secondary meaning doctrine, which the
above reasoning does not address. That is the unique product
situation. The notion that secondary meaning and genericness are
opposite sides of the same coin, as well as the Miller Brewing
district court’s rejection of de facto secondary meaning, are most
defensible where there is a category, type or class of goods that
originate from more than one source. In that circumstance, it
seems reasonable to recognize that secondary meaning is
association of a term with goods from a single source and that
where this association exists, the term can fairly be called a
trademark, rather than a generic term for a category, type or class
of goods that originate with more than one source.39
Conversely, the de facto secondary meaning doctrine is most
defensible where the category, type or class of goods consists of
37. See supra nn.27-32.
38. 503 F. Supp. at 907 (emphasis added).
39. For a more complete discussion, see Vincent N. Palladino, Secondary Meaning
Surveys In Light of Lund, 91 TMR 573, 585-91 (2001).
Vol. 92 TMR
867
goods that originate from only one source. Then, there is more
danger to a straightforward secondary meaning/genericness
dichotomy. That is because “during a period of time when one
source is the only seller of a product, the public might associate the
generic name of the product with the single source seller merely
because there is no one else on the market,”40 and granting that
one source trademark rights in the product’s generic name would
curtail competition after the single source period ends.41
One should be cautious in applying the de facto secondary
meaning doctrine, even in unique product situations, for several
reasons. First, unique products can be difficult to identify.42 More
importantly, the Lanham Act warns against distinguishing
between unique products and other types of products.
The Lanham Act defines a trademark as any word, name,
symbol or device, or combination thereof that a person uses or in
good faith intends to use in commerce “to identify and distinguish
his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the
goods, even if that source is unknown.”43 If this definition is to
have any meaning, even a so-called unique product must in some
way coexist with other products. Were that not so, the trademark
for a unique product could not distinguish the trademark owner’s
goods from the goods of others, as the definition requires.
The Lanham Act also states:
A registered mark shall not be deemed to be the generic name
of goods or services solely because such mark is also used as a
name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the
generic name of goods or services on or in connection with
which it has been used.44
If the primary significance test works for products other than
unique products45 and unique products are to be treated like other
products for genericness purposes, it becomes very difficult to find
room, even in unique product cases, for the de facto secondary
40. 2 McCarthy, § 12:49 at 12-118.2.
41. See 2 McCarthy, § 12:47 at 12-116; Miller Brewing Co., 655 F.2d at 8, 211 U.S.P.Q.
at 667.
42. See Vincent N. Palladino, Surveying Secondary Meaning, 84 TMR 155, 172 (1994);
Vincent N. Palladino, Genericness And The Trademark Clarification Act of 1984: Five Years
Later, 79 TMR 657, 676 (1989).
43. See supra n.1 (emphasis added).
44. 15 U.S.C. § 1064(3) (Supp. 2001) (emphasis added).
45. See supra nn.27-32.
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meaning doctrine, which conflicts with the primary significance
test.46
E. De Facto Secondary Meaning
and Multiple Products
The de facto secondary meaning doctrine effectively treats
generic words the way the law treats functional product features,
i.e., it reads genericness out of the distinctiveness analysis and
thereby treats genericness as an absolute bar to trademark
significance apart from distinctiveness. At least for products that
are not unique, this equation of functionality and genericness
seems unsound.
A product feature is a trademark if it is both distinctive
(because it has secondary meaning) and non-functional.47
Functionality remains a bar to trademark status, despite
distinctiveness. Absent secondary meaning, a word is a trademark
if it is fanciful, arbitrary or suggestive. With secondary meaning, a
descriptive word is a trademark. However, according to the de
facto secondary meaning doctrine, a generic word with secondary
meaning is not a trademark. Genericness, like functionality,
remains a bar to trademark status, despite distinctiveness.
At least for products that are not unique, the equation of
functionality and genericness is problematic. It ignores the
rationale that underlies both the functionality and genericness
doctrines, namely, the need to promote competition by freeing up
product features or words that producers of a type of product need
to use in order to compete.
The functionality doctrine properly denies a product feature
trademark status to assure that all producers of a type of product
have access to a feature they need to use in order to compete,
whether or not the feature is distinctive.48 This need persists
despite acquired distinctiveness because the product feature has
utility apart from distinctiveness.
46. Compare text at supra nn.27-35 with text at supra n.36. For a further discussion of
this, see infra Part IV.
47. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 U.S.P.Q.2d 1065
(2000) (holding that the distinctiveness must be acquired—and may not be deemed
inherent—in the case of product configuration trade dress).
48. 1 McCarthy, § 7:63. In the wake of Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 23 U.S.P.Q.2d 1081 (1992), some courts have indicated that a product feature may be
generic. See 1 McCarthy, § 8:6.1. This raises interesting questions that are beyond the scope
of this article. These include (1) whether such a concept survived Wal-Mart; (2) whether, if
it did, the de facto secondary meaning doctrine would apply to generic trade dress; and (3)
how the notion of generic trade dress can be reconciled with the notion of functional trade
dress, where both doctrines are aimed at preserving freedom to compete. Concerning the
last issue, see Vincent N. Palladino, Trade Dress After Two Pesos, 84 TMR 408, 415-17
(1994).
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The genericness doctrine properly denies a word trademark
status to assure that all producers of a type of product have access
to a word they need to use in order to compete.49 However,
application of the genericness doctrine improperly denies a word
trademark status if all producers of a type of product do not need
to use the word in order to compete. Producers of a type of product
do not need to use the word in order to compete when the word has
become associated with the products of only one producer of that
type of product and other producers of that type of product are
competing with that producer. In that situation, the word has
acquired secondary meaning. Nevertheless, the de facto secondary
meaning doctrine improperly requires application of the
genericness doctrine, although the rationale for the genericness
doctrine does not apply.
Unlike a product feature, which can be a bar to competition
despite distinctiveness because of its utility, a word’s effect on
competition depends entirely on distinctiveness. If the word is
distinctive, it is a trademark and appropriation by one producer
does not adversely affect competition.50 If the word is not
distinctive, it is not a trademark and appropriation by one
producer does adversely affect competition.51 However, the de facto
secondary meaning doctrine treats a distinctive trademark, which
is associated with the products of one producer, as if it were a nondistinctive generic term, which is associated with a type of product
from more than one producer. In multiple product situations, that
approach is unsound because association of the term with one
producer’s product indicates that the term is not a generic term
associated with a type of product from more than one producer.
It is no answer that (1) under the primary significance test a
term will have secondary meaning, although a minority of the
public associates the term with the products of more than one
producer; (2) this minority probably makes this association
because more than one producer uses the term; and (3) the de facto
secondary meaning doctrine protects the interests of those
producers with whom this minority of the public associates the
term.
The primary significance test itself makes a judgment about
the necessity of using a term in order to compete. It recognizes that
if a term has secondary meaning because it is primarily associated
with the products of one producer, competition will be served by
acknowledging the trademark rights that this one producer has
acquired in the term. Conversely, it also recognizes that if a term
is primarily associated with a category, type or class of products
49. See supra n.7.
50. See supra n.5.
51. See supra n.7.
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that originate with more than one producer, competition will be
served by denying any one producer trademark rights in the term.
III. SURVEYING TRADEMARK SIGNIFICANCE
IN MULTIPLE PRODUCT SITUATIONS
A. Overview
One secondary meaning survey format and one genericness
survey format reflect the notion that secondary meaning and
genericness are opposite sides of the same coin in multiple product
situations. Both formats seek to assess the existence or absence of
trademark significance by asking, in effect, whether survey
respondents primarily associate the term at issue with the
products of one company or with the products of more than one
company. These survey formats are consistent with the notion that
application of the de facto secondary meaning doctrine in multiple
product situations is misplaced.
B. Surveying Secondary Meaning
One survey format that asks whether respondents primarily
associate a term at issue with the products of one company or with
the products of more than one company is discussed in Surveying
Secondary Meaning.52 This article suggests that a secondary
meaning survey could present respondents with the claimed
trademark53 and observes:
In order to track the accepted definition of secondary
meaning, including the anonymous source rule, a proper
question should seek to determine whether or not a claimed
trademark . . . is associated with plaintiff’s product without
asking respondents to give plaintiff’s name.
Without endorsing any specific language, the question could
be:
1. Do you associate [claimed trademark] with [product
identification] of one, or more than one, company?54
It then goes on to say:
When that question is put to respondents, one could urge
that secondary meaning will be inferred if over half of the
respondents say “the product of one company” and will not be
inferred if over half say “the product of more than one
company.” In other words, the primary significance of a term
is the view of a majority of respondents, where respondents
52. Vincent N. Palladino, Surveying Secondary Meaning, 84 TMR 155 (1994).
53. Id. at 162.
54. Id. at 165.
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are given a choice between two mutually exclusive
alternatives.55
This formulation recognizes that survey experts should be
consulted concerning the choice of “specific language” that would
effect the purpose of such a survey. Subject to that caveat, it is
submitted that this format may well distinguish between (1) a
term that has secondary meaning, because the term is primarily
associated with the products of one company, and (2) a term that
lacks trademark significance, i.e., a generic or descriptive term,
because the term is primarily associated with the products of more
than one company. For example, it is likely that a majority of
respondents would associate the trademark CHEVROLET with
the cars of one company, a majority would associate the generic
term “automobile” with the cars of more than one company, and a
majority would associate the descriptive term “sporty” with the
cars of more than one company.
One could argue that this survey format does not determine
whether the term at issue is generic because it (1) merely
distinguishes between terms that have trademark significance and
terms that lack trademark significance (descriptive and generic
terms) and (2) does not determine whether the term lacking
trademark significance is a descriptive or a generic term.
In most cases there should be no need to determine whether
the non-trademark is a descriptive or a generic term. That
distinction is important chiefly because the de facto secondary
meaning doctrine says that a generic term may not acquire
secondary meaning.56 However, the survey itself aims at
demonstrating the presence or absence of secondary meaning,
making academic the distinction between descriptiveness and
genericness and highlighting the meaningless of the de facto
secondary meaning doctrine in a multiple product situation.57
55. Id. at 178.
56. See supra n.36.
57. The law prevents the exclusive appropriation of both descriptive terms and generic
terms by one party in order to protect the interests of the party’s competitors. See supra
nn.6-7. Where a descriptive term becomes associated with the product of only one of several
competitors (secondary meaning), the law accords the term trademark status. See supra n.8.
However, where an allegedly generic term becomes associated with the product of only one
of several competitors (secondary meaning), the law illogically refuses to accord the term
trademark status through the de facto secondary meaning doctrine. See supra n.36.
The distinction between a descriptive term and a generic term would remain relevant where
the survey shows that a term has acquired secondary meaning and a party charged with
infringement wants to make a fair descriptive use of the term. That defense requires that a
term be descriptive, not generic, and there is no fair generic use defense. See supra n.10 and
text at supra n.19. However, evidence other than the survey might well distinguish between
a descriptive term, which has a primary meaning in the language, and a generic term,
which usually does not. See supra n.12.
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An example illustrates the point. In Little Tavern Shops, Inc.
v. Davis,58 the Fourth Circuit held that LITTLE TAVERN was a
descriptive term for a restaurant-bar and had acquired secondary
meaning. Sixty years later in Ale House Management, Inc. v.
Raleigh Ale House, Inc.,59 the Fourth Circuit held that ALE
HOUSE was a generic term for a restaurant-bar, “just as are
similar terms such as . . . ‘tavern.’”60
If a survey showed that 75 percent of respondents associated
LITTLE TAVERN with the restaurant-bar of only one company,
LITTLE TAVERN would be entitled to trademark protection
because a descriptive term can acquire secondary meaning. By
contrast, if 75 percent of survey respondents associated ALE
HOUSE with the restaurant-bar of only one company, ALE
HOUSE would be denied trademark protection if the court
persisted in regarding it as generic, because the de facto secondary
meaning doctrine precludes a generic term from acquiring
trademark status.
Those who insist on distinguishing between genericness and
descriptiveness could consider using different survey questions.
For example, in a genericness case, one could consider trying
something along the following lines:
Some terms, such as “cola,” are associated with a type of
product from more than one company. Some terms, such as
PEPSI, are associated with one company’s version of that type
of product.
Do you associate [claimed trademark] with [product
identification] of one, or more than one, company?
In a descriptiveness case, one could consider trying something
along the following lines:
Some terms, such as [supply a descriptive term for product x],
are associated with [product x] from more than one company.
Sometimes a term, such as [supply a well-known mark with
secondary meaning for product x], becomes associated with
[product x] from one company.
Do you associate [claimed trademark] with [product
identification] of one, or more than one, company?
58. 116 F.2d 903 (4th Cir. 1941).
59. 205 F.3d 137 (4th Cir. 2000).
60. Id. at 141.
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C. Surveying Genericness
1. The TEFLON Survey
The other survey format that effectively asks whether
respondents primarily associate a term at issue with the products
of one company or with the products of more than one company is
the so-called TEFLON survey approach first approved by the court
in E.I. Du Pont de Nemours & Co. v. Yoshida Int’l, Inc.61 In such a
survey, respondents are asked to state whether they regard a
series of names, including the disputed name, as a brand name,
e.g., COKE, or a generic name, such as refrigerator. Put another
way, respondents are asked to state whether they believe each of a
series of names, including the disputed name, possesses trademark
significance or lacks trademark significance because it is generic.
Prior to exposing respondents to the names, the survey offers
the following explanation of names that have trademark
significance and those that do not:
I’d like to read 8 names to you and get you to tell me whether
you think it is a brand name or a common name; by brand
name, I mean a word like Chevrolet which is made by one
company; by common name, I mean a word like automobile
which is made by a number of different companies. So if I were
to ask you, “Is Chevrolet a brand name or a common name?”
what would you say?62
Undoubtedly, a majority of respondents would identify
CHEVROLET as a brand name and would identify “automobile” as
a generic name.
Because of the survey’s explanation of the difference between
brand names and generic names, (1) when respondents identify a
name as a brand name, they are effectively saying they associate
the name with the products of one company and (2) when
respondents identify a name as a generic name, they are
effectively saying they associate the name with the products of
more than one company. Names that are primarily associated with
the products of one company, e.g., CHEVROLET, have trademark
significance. Names that are primarily associated with the
products of more than one company, e.g., automobile, do not.
2. The THERMOS Survey
Another survey format that is used to assess whether or not a
term is generic is the so-called THERMOS survey approach first
approved by the court in Am. Thermos Prods. Co. v. Aladdin
61. 393 F. Supp. 502, 185 U.S.P.Q. 597 (E.D.N.Y. 1975).
62. 2 McCarthy, § 12:16 at 12-38.
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Indust., Inc.63 It does not follow the approach taken by the other
two survey formats.64 Rather, the THERMOS survey asks five key
questions:
[1] If you were going to buy one of these containers
tomorrow—that is, the type that keeps food and beverages hot
or cold . . . What would you ask for—that is, what would you
tell the clerk you wanted? [2] Can you think of any other
words that you would use to ask for a container that keeps
liquids hot or cold? [3] If you were going to describe one of
these containers to a friend of yours—what words would come
to your mind first to describe a container that keeps liquids
hot or cold? [4] Do you know the names of any manufacturers
who make these containers that keep liquids [sic] hot or cold?
[5] Can you name any trade-marks or brand names that are
used on these containers?65
A thoughtful article by Susan Bellifemine effectively identifies
the flaws in questions one, two and four.66 It then urges that:
[T]he results of question three prove the term’s generic
significance, and the results of question five prove its
trademark significance. A comparison of the responses to
questions three and five can then be made in order to
determine which understanding is primary.67
At first blush, this appears both reasonable and consistent
with the TEFLON survey approach, which distinguishes between
generic significance and trademark significance in determining
which significance is primary.68 However, on reflection, the
article’s conclusion does not seem to hold up for several reasons.
First, THERMOS Question Three does not necessarily
establish the extent of generic significance, because it asks
respondents to “describe” a product and asks “what words” they
would use to do so. This is not the same as asking them to provide
the product’s generic name. For example, a respondent might
describe an automobile as a “passenger vehicle with four wheels”
and never use the allegedly generic name (automobile) in
63. 207 F. Supp. 9, 134 U.S.P.Q. 98 (D. Conn. 1962), aff’d sub nom. King-Seeley
Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577, 138 U.S.P.Q. 349 (2d Cir. 1963). Together
with the TEFLON survey approach, the THERMOS survey approach is one of the “[t]wo
general models of a genericness survey [that] have evolved.” 2 McCarthy, § 12:14 at 12-36.
64. See text at supra nn.52-62.
65. Susan Sangillo Bellifemine, Primary Significance: Proving The Consumer’s
Perception, 14 Seton Hall L. Rev. 315, 351 (1984).
66. Id.
67. Id. at 352.
68. See text at supra nn.61-62.
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875
describing the vehicle, even though the respondent believes
“automobile” is the vehicle’s generic name.69
Second, because THERMOS Question Three does not
necessarily measure the extent of generic significance, tacking on
THERMOS Question Five regarding trademark significance
cannot logically determine whether generic or trademark
significance is primary. For example, if 55 percent of respondents
actually regard a term as generic, only 40 percent use the term to
“describe” the product in answer to THERMOS Question Three,
and 45 percent identify the term as a trademark in answer to
THERMOS Question Five, the survey would incorrectly show that
more respondents regard the term as a trademark (45 percent)
than a generic term (40 percent) when in fact more respondents
consider it a generic term (55 percent) than a trademark (45
percent).
Finally, in contrast to the TEFLON approach, THERMOS
Questions Three and Five suffer from a lack of precision in that
they do not explain what generic terms or trademarks are.
D. Surveying Secondary Meaning and Genericness
The foregoing discussion illustrates that the “one company
more than one company” secondary meaning survey format70 and
the TEFLON genericness survey format71 both treat secondary
meaning and genericness as opposite sides of the same coin. They
approach the same issue—namely, whether a term primarily
possesses or lacks trademark significance—from two different
directions.72
The “one company more than one company” format
distinguishes between secondary meaning and genericness by (1)
asking whether respondents associate a term with the products of
one or more than one company and (2) counting one company
answers as “trademark” answers and more than one company
answers as “non-trademark” answers.
The TEFLON format reverses that approach to arrive at the
same conclusion. It (1) informs respondents in the explanation
section that one company answers are “trademark” answers and
that more than one company answers are “non-trademark”
answers and (2) asks whether respondents consider a term to be a
69. Bellifemine assumes that “a consumer responding ‘Thermos’ to . . . question [three]
is indeed using it in a generic sense.” Id. at 352. This may not be so. Even if it is, it does not
take into account respondents who did not use “Thermos” in answer to the question, even
though they consider it the product’s generic name, because they were asked to describe the
product, not give its generic name.
70. See text at supra nn.55-60.
71. See text at supra nn.61-62.
72. Palladino, Surveying Secondary Meaning, 84 TMR at 181-82.
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trademark which is associated with the product of one company or
a generic term that lacks trademark significance because it is
associated with the products of more than one company.
The opposite sides of the same coin concept incorporates the
notion that “primary significance” has meaning only where the
public is presented with two mutually exclusive alternatives,73 i.e.,
primary significance assumes that a “term must be placed either
in the ‘generic’ pigeonhole or in the ‘trademark’ category.”74 Both
the “one company more than one company” and TEFLON survey
formats seek to accomplish this by presenting respondents with a
choice between only those two mutually exclusive alternatives.75
Given the nature of the two survey formats, it is perhaps
something of a misnomer to characterize one as a secondary
meaning survey and the other as a genericness survey. Both
formats actually seek to determine whether a disputed term
possesses or lacks trademark significance in a multiple product
situation. No doubt both would establish that CHEVROLET is a
trademark, associated with the cars of one company, and that
“automobile” is a generic term, associated with the cars of more
than one company.
Finally, these two survey formats are consistent with the
notion that application of the de facto secondary meaning doctrine
in multiple product situations is misplaced. The term at issue
either has trademark significance or it does not because it is
generic. If the survey establishes that a term has trademark
significance, it necessarily also establishes that the term is not
generic because those alternatives are mutually exclusive. For
example, by establishing that CHEVROLET is a trademark, both
survey formats also establish that CHEVROLET is not a generic
term.
IV. THE UNIQUE PRODUCT PROBLEM
A. Overview
Although the definition of a trademark is said to apply to both
multiple and unique products, it is actually difficult to extend the
definition to unique products. Similarly, the two survey formats
that ask whether respondents associate a term with the products
of one or more than one company are ill suited to a unique product
situation. In that situation, the choice between those two mutually
exclusive alternatives does not exist because only one company
makes the product. Prior attempts to adapt such surveys to a
unique product situation are problematic. A different approach
73. See supra nn.27-35.
74. See supra n.30.
75. See text at supra nn.52-62.
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877
involves addressing an anticipated situation, namely, the situation
where more than one company is making a product that is
currently unique.
B. The Nature of the Problem
The unique product problem is more than a survey dilemma.
The problem is inherent in, and calls into question, the definition
of a trademark. A trademark is a word, name, symbol or device or
combination of these that is used to “identify and distinguish . . .
goods . . . from those manufactured or sold by others” and, thereby,
is used to “indicate the source of the goods” even if it does not
name the source.76
The definition of a trademark purports to treat a trademark
for a unique product in the same way it treats a trademark for
products that are not unique.77 The legislative history of the
amendment to the Lanham Act, which added to the definition of a
trademark the reference to a “unique product,” states:
[I]t is clear that whether a product is unique does not
determine whether a term associated with the product
functions as a trademark or as a generic designation. . . . The
important question is whether the primary significance of the
term to the relevant consuming public is to identify a product
which emanates from a single, albeit anonymous source, or
merely to identify the product itself. . . . The central inquiry
remains . . . whether the primary significance of the mark is to
identify a product which comes from a single source—though
the product be unique or the source anonymous—as opposed
to identifying the product itself.78
Despite the definition of a trademark and the legislative
history surrounding it, it is hard to see how the definition applies
to a unique product, at least in the way it does to multiple
products. In a multiple product situation, a word associated with
the products of only one company identifies those products and
distinguishes them from the products of others, because the
products of others exist and the word is not associated with them.
In a unique product situation, a word associated with the product
of one company might be said to identify that product as the
definition requires. However, it cannot necessarily be said to
distinguish that product from the products of others as the
definition also requires, because the products of others with which
the word could be associated do not exist.
76. See supra nn.1-2.
77. See supra n.1.
78. S. Rep. No. 98-627, at 8-9 (1984), reprinted in 1984 U.S.C.C.A.N. 5718, 5725-26.
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This last point is glossed over in the legislative history, which
discusses whether a term is understood to “identify” goods that
emanate from a single source, but does not refer to the
requirement that the term “distinguish” those goods from goods
manufactured or sold by others. Thus, while the legislative history
insists that the central inquiry in a unique product situation and a
multiple product situation is the same, it offers no guidance as to
how one can differentiate, in a unique product situation, between a
term that identifies a product that comes from one source and a
term that identifies the product itself.
Equally perplexing is how to design a survey to explore that
issue:
By far the most difficult type of case to resolve by survey
evidence is where at the present time, there is only one seller
of the allegedly generic product. It is very difficult to probe the
public mind as to the generic or brand significance of a term
when they have never had occasion to consider the difference
because there has always been only one seller of that
thing. . . . This issue . . . remains a challenging factual puzzle
to unravel.79
The “one company more than one company”80 and TEFLON81
survey formats are difficult to adapt to a unique product situation.
In both survey formats, respondents are in effect told that there
are two categories of names: those that are associated with the
products of one company and those that are associated with the
products of more than one company. Respondents are then asked
to place names, including the disputed name, in one category or
another. In a unique product situation, there is no choice between
association of the name with the products of one company and
association of the name with the products of more than one
company, because only one company makes the product.
C. Earlier Attempts to Address
the Unique Product Problem
Wrestling with the intractable problem of surveying
trademark/non-trademark significance in a unique product
situation, several commentators have proposed a modified
TEFLON survey.82 Interesting as these proposals are, they
probably should be tested by experts to determine whether they
are effective because on their face they seem to present difficulties.
79. 2 McCarthy, § 12:17 at 12-40.
80. See supra nn.55-60.
81. See supra nn.61-62.
82. Bellifemine, supra n.65 at 350; Arthur J. Greenbaum, Jane C. Ginsburg, Steven M.
Weinberg, A Proposal For Evaluating Genericism After “Anti-Monopoly,” 73 TMR 101, 119
(1983).
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879
The commentators recognize the problem posed by using the
TEFLON survey format, which links a trademark to the product of
one company and links a generic term to the products of more than
one company, in a unique product situation. For example:
The brand name surveys submitted in both Teflon and AntiMonopoly began by using the example ‘Chevrolet—automobile’
to explain the difference between a brand name and a common
name. They defined a brand name as a name of an item made
by only one company, and a common name as the name of an
item made by a number of different companies. The AntiMonopoly II court noted that the survey had no evidentiary
value in a single-source situation, since the name of an item
produced by a single producer would always, by definition, be
a brand name.83
As a solution, one commentator proposes:
One way to avoid potential criticism of the brand name
[TEFLON] survey is to construct a survey in which brand
names and common names are not defined in terms of the
number of producers of the product. The plaintiff in Nestle, for
example, commissioned a brand name survey in which the
interviewees were told: “a brand name is a special name that
identifies the manufacturer or the source of a product, while a
common name is a general category name for the product
itself.” These definitions would thus be applicable to both
single and multiple producer situations, since the existence of
a brand name or common name is not dependent upon the
number of producers making the product with which the term
is associated.84
There are several problems with this approach. First, a
trademark identifies “goods . . . [from one manufacturer or source],
even if that source is unknown.”85 A trademark is not a name that
“identifies the manufacturer or the source of a product.” If a survey
used this incorrect definition, well-known trademarks which do not
identify a manufacturer or source of a product by name, such as
TIDE for laundry detergent, might not be regarded by respondents
as trademarks.
Second, the phrase “general category name” suggests that the
“name” is the name of a category of products from more than one
source (because of the words “general category”). This
understanding could well be reinforced by experience. Respondents
undoubtedly know that in most categories, e.g., beverages and
home appliances, products come from more than one company.
83. Bellifemine, id. at 349-50. See also Greenbaum, id. at 119.
84. Bellifemine, id. at 350 (emphasis added).
85. See supra n.1.
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Given that knowledge, using the phrase “general category name”
in a unique product situation appears to create the very difficulty
that the commentator is trying to avoid, i.e., it effectively defines a
generic name as the name of a category of products that come from
more than one company.
Another commentator suggests:
The flaw in the rejected Anti-Monopoly version of the
TEFLON-EFLON survey, which defined brand name as “one
company’s” mark (and thus automatically defined a “unique
product” as a brand name) can be remedied by omitting the
definition, and simply supplying the interviewee with
examples of brand names and common names. Since exposure
to both brand names and common names is a familiar
experience to the public, interviewees provided with such
examples will pick up on the concept of brand name versus
common name.86
It is not clear that by simply omitting the definition of brand
names and common names and supplying respondents with
“examples of brand names and common names,” one can adapt the
TEFLON survey format to a unique product situation. The public’s
“exposure to both brand names and common names” is chiefly
exposure to names in categories of products, e.g., beverages and
home appliances, that come from more than one company.
Moreover, the survey itself exposes respondents to brand names
such as COKE for products such as cola, which come from more
than one company, and to generic names of products, e.g.,
refrigerator, which come from more than one company. In view of
this exposure in both the marketplace and the survey itself, it is
not clear that respondents could reliably classify the name of a
unique product as either a brand name or a generic name simply
because the survey’s definition section does not remind them of
what they already know, namely, most types of products are not
unique; rather, most types of products come from more than one
company.87
For this reason, it also is not clear that the survey would be
“self-validating.”88 Respondents cannot necessarily be counted on
to distinguish between a brand name and a generic name for a
unique product simply because they can distinguish between
brand names, e.g., COKE, for products in multiple product
categories, e.g., cola, on the one hand, and generic names, e.g.,
86. Greenbaum, supra n.82 at 119 (emphasis added).
87. See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 303, 1 U.S.P.Q.2d 1364, 1374
(3d Cir. 1986) (rejecting suggestion that TEFLON survey format can be adapted to unique
product situation by omitting definition of distinction between brand names and common
(generic) names).
88. Greenbaum, supra n.82 at 120.
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refrigerator, for products in multiple product categories, on the
other hand. Logically, in a unique product situation, TEFLON
survey respondents should be exposed only to brand names for
unique products and generic names for unique products.89 Devising
such a list is easier said than done.
D. Addressing the Problem
The question in a unique product situation is this: where a
word is associated with a product that only one company makes,
how can one determine whether the word identifies and
distinguishes that product from others’ products (a trademark) or
does not do that because it names a type of product (a generic
term)? Answering this unique product question may involve
addressing the situation for which the de facto secondary meaning
doctrine was really developed: how will the trademark or generic
status of a word that is associated with a unique product affect
competition in the event others make the product?90
In survey terms, this may involve adapting the “one company
more than one company” or TEFLON survey formats to an
anticipated situation, namely, the situation where more than one
company is making a product that currently is unique.91
Alternatively, it may involve addressing that anticipated situation
in some other fashion.92
These approaches attempt to take account of the following:
• by definition, to be a trademark, a term must identify one
party’s product and distinguish it from the products of other
parties;
• a trademark’s opposite number—a generic term—identifies
a category, type or class of products, which typically
originate with more than one party;
• in a unique product situation, the distinction between
trademarks and generic terms is academic unless parties
other than the original producer wish to market the
product; and
• it therefore is logical—and seems fair—to ask respondents
whether they would consider a term, which is currently
89. This requirement is not addressed by the suggestion that “all the selected brand
names [be] single product marks [such as SANKA].” Id. at 118. A term is a trademark if it
identifies products from one company, not if it identifies only one product. See supra n.1.
That definition of a trademark is reflected in the TEFLON survey definition. See supra
n.62. A single product mark such as SANKA is not a unique product mark, because SANKA
brand decaffeinated coffee competes with other brands of decaffeinated coffee.
90. See supra nn.40-41.
91. See infra Parts IV.E.-G.
92. See infra Part IV.H.
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associated with a unique product, to be a trademark or a
generic term in the situation where the answer to the
question actually matters: when others also make the
product.
Survey experts can consider whether the suggested
approaches are flawed because they seek, to some extent at least,
to gauge public reaction to a hypothetical situation. That situation
is how respondents are likely to view a term, used by only one
producer of a type of product, in the event others begin to make
that type of product. However, this risk may be unavoidable. In
any event, the solution to the unique product survey problem
probably does not lie in trying to adapt a multiple product survey
format, such as the TEFLON format, to a unique product situation
by tinkering with the definition of a trademark93 or by declining to
tell respondents what a trademark and a generic term really are.94
E. Adapting the One Company
More Than One Company Format
Without endorsing any specific language, the “one company
more than one company” survey might show respondents95 the
unique product96 and ask:
If this type of product were made by more than one company,
would you associate [the word at issue] with the product of
one, or more than one, company?
or some variation of that question such as:
If this type of product were made by more than one company,
would you associate [the word at issue] with a product from
one company or associate it with a type of product from more
than one company?
Tests in the field by survey experts could shed light on
whether such a question would be understood. For example, it
might help to state before the question is asked:
93. See supra nn.84-85.
94. See supra nn.86-87.
95. The universe of respondents is an issue on which survey experts should be
consulted. For example, should the universe be simply buyers/potential buyers of the unique
product or should it be buyers/potential buyers, who also know the product is produced by
only one company. If they do not actually know this fact, the ensuing question may be overly
hypothetical.
96. The product could be shown to avoid identifying it in a way that would prejudice
the outcome of the survey. For example, where the issue is whether a producer’s claimed
trademark for a product is a trademark or a generic term, the claimed trademark should not
be used as a generic term in identifying the product for respondents. A related issue is
whether the product should be stripped of any trademark or generic term before it is shown
to respondents.
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Some terms, such as “cola,” are associated with a type of
product from more than one company. Some terms, such as
PEPSI, are associated with one company’s version of that type
of product.
and then go on to ask:
If this type of product were made by more than one company,
would you associate [the word at issue] with the product of
one, or more than one, company?
or some variation of that question such as:
If this type of product were made by more than one company,
would you associate [the word at issue] with a product from
one company or associate it with a type of product from more
than one company?
If the questions were understood, they might help distinguish
between a trademark and a generic term for the type of product at
issue. For example, if a unique product producer has done a good
job of promoting both a trademark and a generic term for its
product, respondents might say that, even if other producers of the
product were to enter the market, they would continue to associate
the trademark with only the original producer’s product (and
would associate the generic term with the products of more than
one producer).
One can imagine this approach used in Kellogg Co. v. Nat’l
Biscuit Co.,97 which is a classic unique product case. There the
issue was the trademark status of the term SHREDDED WHEAT
for a type of cereal that only the National Biscuit Company had
marketed during the term of a patent on the product. Had a survey
been conducted in that case, respondents could have been asked:
If this type of cereal were made by more than one company,
would you associate “shredded wheat” with the cereal of one,
or more than one, company?
and could also have been asked:
If this type of cereal were made by more than one company,
would you associate “National Biscuit” with the cereal of one,
or more than one, company?
One would expect most respondents in such a survey to say
they would associate “shredded wheat” with cereal from more than
one company and “National Biscuit” with the cereal of only one
company. If National Biscuit had done a better job of using
“shredded wheat” as a trademark, the survey results might differ.
For example, if during its monopoly National Biscuit had used
“pillow biscuit” as the cereal’s generic name (reflecting the
product’s shape and nature) and marketed “SHREDDED WHEAT
97. 305 U.S. 111 (1938).
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brand pillow biscuits,” the public might have come to regard
SHREDDED WHEAT as a trademark and “pillow biscuit” as the
cereal’s generic name. If they did come to have this understanding,
they might well say in a survey that if this type of cereal were
produced by more than one company, they would associate
SHREDDED WHEAT with the cereal of one company (National
Biscuit) and “pillow biscuit” with cereal from more than one
company.
F. Adapting the TEFLON Format
Tests by experts might also shed light on whether the
TEFLON survey format could be modified in a parallel fashion.
Perhaps the survey could be administered as usual98 and
respondents could then be shown the unique product99 and asked:
If this type of product were made by more than one company,
would you consider [the word at issue] a brand name or a
common name?
For example, if a unique product producer has done a good job
of promoting both a trademark and a generic term for its product,
respondents might say that, even if other producers of the product
were to enter the market, they would regard the alleged
trademark as a brand name and would consider the generic term
the product’s common name.
Again, one can imagine this approach used in Kellogg:
If this type of cereal were made by more than one company,
would you consider “shredded wheat” a brand name or a
common name?
If this type of cereal were made by more than one company,
would you consider “National Biscuit” a brand name or a
common name?
Most respondents would likely say that “shredded wheat” is a
common name and “National Biscuit” is a brand name. If National
Biscuit had done a better job of using “shredded wheat” as a
trademark, the survey results might differ. For example, if during
its monopoly National Biscuit had marketed “SHREDDED
WHEAT brand pillow biscuits” the public might have come to
regard SHREDDED WHEAT as a trademark and “pillow biscuit”
as the cereal’s common name.
98. See supra nn.61-62.
99. Concerning what might be shown, see supra n.96.
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G. Rethinking the One Company More
Than One Company and TEFLON Formats
One could also consider testing a study that retains the basic
approach taken by both the “one company more than one company”
and TEFLON survey formats, but varies the language. For
example, respondents could be told:
Some terms, such as “cola,” are used by more than one
company making a type of product. Some terms, such as
PEPSI, are used by one company for its version of that type of
product.
Respondents could then be shown the unique product at issue and
asked:
If this type of product were made by more than one company,
do you believe [the word at issue] would be used by more than
one company making this type of product, or would it be used
by one company for its version of this type of product?
Yet again one can imagine this approach used in Kellogg:
If this type of cereal were made by more than one company, do
you believe “shredded wheat” would be used by more than one
company making this type of cereal, or would it be used by one
company for its version of this type of cereal?
If this type of cereal were made by more than one company, do
you believe “National Biscuit” would be used by more than one
company making this type of cereal, or would it be used by one
company for its version of this type of cereal?
One would expect most respondents to say that “shredded
wheat” would be used by more than one company and that
“National Biscuit” would be used by only one company. If National
Biscuit had done a better job of using “shredded wheat” as a
trademark, the survey results might differ. For example, if during
its monopoly National Biscuit had marketed “SHREDDED
WHEAT brand pillow biscuits” the public might have come to
regard SHREDDED WHEAT as a term that only one company
would use in marketing a certain type of cereal and “pillow biscuit”
as a term that more than one company would use in marketing
that type of cereal.
H. Developing Another Approach
1. Suggested Approach
Another approach that experts could consider testing would
involve explaining the difference between brand names and
generic names in multiple product situations by using the
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explanation from the TEFLON survey format100 or some variation
of that explanation, such as:
Some terms, such as “cola,” are used by more than one
company making a type of product. Some terms, such as
PEPSI, are used by one company for its version of that type of
product.
Respondents could then be shown the unique product at issue and
asked a question along the following lines:
If this type of product were made by more than one company,
what do you believe those companies would call the product
[in offering to sell it to you]?
At first blush, this may be reminiscent of the flawed first
THERMOS question, which asks:
If you were going to buy one of these [products at issue]
tomorrow—that is, the type that [describe product], what
would you ask for—that is, what would you tell the clerk you
wanted?101
Arguably, there is a difference between the questions. The
problem with the THERMOS question is that “one is unable to
distinguish whether the respondent is using the term in its sourcedesignating sense or in a generic sense.”102 That may not be true of
the proposed question. The proposed question explains the
difference between brand names and generic names in a multiple
product context and asks for a name that companies producing a
type of product that is now unique would likely call the product
when it is no longer unique.
In that way, the proposed question arguably builds in the
notion that there are generic names for types of products which
more than one company makes and asks what respondents would
regard as the generic name for the type of product at issue if more
than one company were to make that type of product. Thus, if
respondents are asked:
If this type of product were made by more than one company,
what do you believe those companies would call the product
[in offering to sell it to you]?
and if they answer with the term at issue, e.g., “shredded wheat,”
they probably consider that term generic.
The proposed question recognizes that in the unique product
situation, the “prime question is: What does the public call this
‘thing’?”103 However, it goes further by recognizing that the answer
100. See supra n.62.
101. See supra n.65.
102. Bellifemine, supra n.65 at 351. See also 2 McCarthy, § 12:16 at 12-38-39.
103. 2 McCarthy, § 12:49 at 12-119.
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to that question is of practical importance when other producers of
the product wish to market this “thing.”104 Moreover, it seeks to
address the ambiguity that appears to be inherent in a question
that asks what respondents call the thing during the single source
period.
Asking respondents what they “call” a unique product while
there is only one source of the product probably does not measure
generic significance. That is because the question does not
distinguish between a trademark and a generic name for the
product, any more than the first THERMOS question does.105
Asking respondents “What is the name of the product?”106 appears
to create the same problem. In that question, the word “name” is
ambiguous because it does not distinguish between a brand name
and a generic name. Even respondents who know that there is
both a brand name and a generic name for the unique product
might give the brand name in answer to such a question.
Therefore, in “naming” the product, respondents are not
necessarily providing the product’s generic name.
A possible defect in the proposed question is that respondents’
failure to answer with the term at issue may not necessarily
indicate that they do not consider the term generic. If there are
two generic terms for the product, volunteering one generic term in
answer to the proposed question does not mean that the other term
is not generic. For example, the term “shredded wheat” could be
generic even if respondents say that companies selling the product
would call the product “cereal.” This defect might be addressed by
asking a follow-up question, which asks respondents to provide
any other terms they believe those companies would call the
product.
2. The Suggested Approach and
Primary Significance
“Primary significance”—otherwise known as “majority
usage”—assumes that the public is confronted with two mutually
exclusive alternatives.107 It is not clear that two mutually exclusive
alternatives—namely, brand significance and generic significance—are presented by the proposed question:
If this type of product were made by more than one company,
what do you believe those companies would call the product
[in offering to sell it to you]?
104. See supra nn.40-41.
105. See supra n.101.
106. Contrast 2 McCarthy, § 12-49 at 12-119 (“the public should be asked ‘What is the
name of the product?’”).
107. See supra nn.73-75.
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One could argue that the question does present two mutually
exclusive alternatives if respondents understand the difference
between a brand name and a generic name, including the notion
that a generic name is the name of a type of product produced by
more than one company.108 In that event, by using the term at
issue in answer to the proposed question, they are providing a
generic name and, presumably, not providing a brand name.
Accordingly, a response rate above 50 percent should establish
that genericness is the term’s primary significance.109
However, absent testing of the proposed question, this seems
to be a rather shaky foundation on which to build a case, because it
assumes that a genericness answer is necessarily a “not a
trademark” answer. This assumption depends wholly on
respondents grasping the distinction between trademarks and
generic terms. Whether they do grasp the distinction is untested,
because the question does not actually require respondents to
make the binary choice between trademark and genericness
significance, which the “one company more than one company” and
TEFLON formats require them to make.
The foundation might be firmer if the survey more squarely
addressed whether the term at issue has trademark significance.
One could consider explaining the difference between generic
terms and trademarks and asking questions along the following
lines:
If this type of product were made by more than one company,
what do you believe those companies would call the product
[in offering to sell it to you]?
If this type of product were made by more than one company,
is there any term (or terms) that you would regard as one
company’s trademark for the product.
One could then compare the answers to these questions.
Presumably, some respondents who mentioned the term at issue
would regard the term as a generic term, which more than one
company would use, and others would regard the term as a
trademark, which only one company would use. From this, a
determination could be made as to the respondents’ primary
(majority) view. For example, if 80 percent of respondents
mentioning “shredded wheat” said “shredded wheat” is a term that
more than one company would use in selling a type of cereal and
20 percent said it is a trademark that only one company would use
for its version of that type of cereal, one might feel comfortable in
concluding that genericness is the term’s primary significance.
108. As discussed, this distinction could be explained before the question is asked.
109. This assumes, however, that everyone who believes the term is generic says so.
This may not happen if, for example, there is more than one generic term for the product.
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This, of course, would be the primary significance of the term
at issue among those respondents who volunteer the term in
answering the questions. By contrast, the “one company more than
one company” and TEFLON survey formats seek to measure the
primary significance of the term at issue among all respondents,
who are exposed to the term by the survey itself.
V. CONCLUSION
Articles often raise as many issues as they address and
probably this one is no exception. If it provokes thoughtful debate
about the nature of trademark significance, the relationship
between secondary meaning and genericness and how surveys
can—and cannot—successfully explore those issues, it will have
served its purpose.