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106 Trademark Rep. 776 (2016)
Fashion Dos: Acknowledging Social Media Evidence as Relevant to Proving Secondary Meaning

handle is hein.journals/thetmr106 and id is 813 raw text is: Vol. 106 TMR COMMENTARY FASHION DOS: ACKNOWLEDGING SOCIAL MEDIA EVIDENCE AS RELEVANT TO PROVING SECONDARY MEANING By Ronald Coleman* The tests routinely recited by courts for determining whether secondary meaning exists in an alleged trademark are decades old. Do they properly reflect what it means to establish a new brand- that is, to designate a trademark as a source identifier-in the social media era? Taken literally, most do not. The legal interests the tests reflect, however, should permit such consideration. Indeed, if courts fail to adjust these formulations in recognition of recent innovations in brand development and technology, the law will fail to protect important trademark rights as a matter of course. Proving secondary meaning in trademark infringement litigation is obviously an issue of critical importance for new entrants into a market. This is especially true for plaintiffs seeking relief for infringement of as-yet unregistered trademarks, because they come to court without even the presumption of distinctiveness to which a registered mark is entitled by statute.1 The problem could be even more severe for claimants fighting the uphill battle of reverse confusion claims, where the alleged junior user has, even according to the claimant, overwhelmed at least some segment of the original secondary meaning that had been achieved by the claimant's mark. For fashion-related start-ups asserting claims for designs that, separate and apart from the narrow protection available via copyright, may fall into the murky territory between trade dress and product configuration, the problem may be magnified even further. Absent a registration or other solid basis on which to assert inherent distinctiveness, such claims may well be dead on arrival, or at least on summary judgment.2 * Partner, Archer & Greiner, PC, New York, New York, and Hackensack, New Jersey, Associate Member, International Trademark Association; author, Likelihood of Confusion blog. 1. United States Trademark Act of 1946, Pub. L. No. 79-489, 60 Stat. 427, as amended through 2016 (Lanham Act), § 7(b), 15 U.S.C. § 1057(b) (2012). 2. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (holding that a product's design'-i.e., the way the goods themselves look, compared to the look of their boxes or labels-can never be inherently distinctive). 776

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