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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).


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