Antonio R. Sarabia II Sept. 26, 2019

In trademark cases involving a descriptive trademark that is not registered on the principal register or trade dress on products, a plaintiff must prove the trademark or trade dress has established secondary meaning in the market — i.e.. a strong reputation among customers. When representing a plaintiff in a trademark or trade dress case in which secondary meaning must be proved, many experienced attorneys consider proving secondary meaning by engaging an expert to take a survey. But cases involving secondary meaning, such as product trade dress, have one requirement which augurs for caution before deciding to have a survey done: Secondary meaning must be proved at the time the infringement began.

In California, the statute of limitations for trademark infringement is four years. A plaintiff is usually interested in proving the most damages and would like to reach as far back as the statute of limitations allows, Counsel for plaintiff in 2019 would like to get his client damages based on the start Of the infringement in 2015. But if the case is filed in 2019, any survey would be taken in 2019 or 2020, quite a while after the time when secondary meaning must be established. This multi-year gap between the new survey and the commencement of the infringement poses a serious problem. Before embarking on the large expense of a good survey, counsel should recognize this problem and determine if a survey is the best for the job.

One 9th U.S. Circuit Court of Appeals case addressed this problem, Faberge, Inc. v.Saxony Products, Inc., 605 F. 2d 426 (9th Cir. 1979), involved cologne and shaving cream bottle trade dress. Faberge claimed secondary meaning for its trade dress sold under the Brut name. Saxony entered the market with its products in 1970. Faberge offered a 1974 survey to establish secondary meaning in 1970. On appeal Saxony argued that the survey, four years later, could not establish secondary meaning in 1970."Saxony contends that the court based its finding of secondary meaning upon a 1974 consumer survey incapable of gauging public recognition of Brut as of 1970. We conclude that the trial court properly considered indirect evidence of secondary meaning, including the extent of Faberge's advertising and sale of Brut, as well as the fact that Saxony had intentionally simulated the Brut trade dress in developing its packaging for Bravado," ld, at 428 (citations omitted). The finding of secondary meaning was upheld, but not based on the survey evidence. One reading of the case is that an untimely survey was bailed out by other, non-survey evidence of secondary meaning, In other words, it was not the expensive survey that won the day on secondary meaning. While this was still a victory for Faberge, it may not have been happy to have paid for a survey that did not do the job.

Faberge identified factors that can help to establish secondary meaning: the amount of advertising and sales before the infringement and intentional spying. Other 9th Circuit cases have identified at least other factors, independent of a survey: the exclusivity of use, the length of use, the manner of advertising, and unsolicited media coverage. These factors are not exclusive. Other factors are market share, social media usage and how frequently the trade dress or trademark is searched on the Internet.

Care is required with advertising. It is not enough for there to be substantial advertising expenditures. The advertising must focus on the aspects for which secondary meaning is to be proved, For example, if the focus were on trade dress on shoes, to support secondary meaning the advertising must point out the particular features, such as "look for the stripe and oval design." The important features can also be highlighted with visual cues or contrasting colors.

Unsolicited media coverage refers to news or trade publication coverage. A substantial amount of coverage supports a claim that a mark or trade dress is well known,

Turning to the internet, if the client's website prominently features the mark or trade dress, there are tools which allow analysis of the volume of hits on a website during certain periods. For this data to be useful, it is important that use on the website is clearly focused on the mark or trade dress. Other tools allow one to check the frequency of searches over time. This data might give information about consumer interest in and awareness of the mark or trade dress. If there is a Twitter account prominently featuring the mark or trade dress, the number of Twitter followers can be determined by time.

For many, if not most clients, this information will be cumulative. In other words, a number of substantial strands have to be provided to prove secondary meaning. While a survey offers the opportunity for a one tool home run, that the survey is years later, makes reliance on it risky. It is possible to argue that the time separation between the date of the survey should go to the weight the survey is given. In cases with a narrow time window (date of suit close to earliest infringement), this may be appropriate. But in cases with a large time gap, a survey may not be entitled too much weight. In those cases, the expensive exercise of a survey may not be the best approach.

Antonio R. Sarabia II practices law in Redondo Beach with a focus on contracts, trademarks, copyrights and the apparel business. He also testifies as an expert witness

Published in the Los Angeles Daily Journal, September 26, 2019.