Secondary meaning is an association formed in the minds of consumers between the mark and the source or origin of the product that serves to identify its goods and distinguish them from those of others. Secondary meaning does not require the consumer to identify a source by name but does require that the public recognize the mark and associate it with a single source.
A group of affiliated companies (Frosty Treats) sued Sony Computer Entertainment America, Inc., (SCEA) asserting claims under state and federal law for trademark infringement and dilution, and for unfair competition. Frosty Treats premised these claims upon SCEA's depiction of an ice cream truck and clown character in SCEA's Twisted Metal video game series. Frosty Treats contended that because the ice cream truck in those games bears a clown graphic that it alleges is similar to the one on its ice cream trucks, and, in the final game, is labeled with its brand identifier, "Frosty Treats," the games create a likelihood of confusion as to Frosty Treats' sponsorship of or affiliation with the games. The district court granted SCEA's motion for summary judgment on all of Frosty Treats's claims. Frosty Treats appealed asserting that the district court erred by finding that there were no genuine issues of material fact and holding as a matter of law that the "Frosty Treats" mark was not protectible.
Should Frosty Treats’ claim be given merit?
The appellate court held that the mark was descriptive, appellants' survey showed it had not acquired a secondary meaning, and there was no evidence appellee intentionally copied it. Thus, it was not entitled to trademark protection. The clown graphic and the trade dress of appellants' trucks were weak and dissimilar to the trucks and graphics depicted in the games. There was no evidence that appellee intended to pass off appellants' marks as its own. The evidence was insufficient as to the likelihood of confusion between the trade dress of their trucks or its clown and appellee's depictions of trucks or clowns. They could not make out a dilution claim under § 1125(c) because the mark was not famous in a niche market within which appellee also used it. Their state-law dilution claim failed because the marks and trade dress were so dissimilar.