When trying to prove secondary meaning in a design mark or trade dress, it is a very old established legal principle that advertising that instructs the consumer to “look for” the trademark at issue is the best evidence that consumers do in fact recognize that mark as a trademark (and thus it has secondary meaning).  That makes a lot of sense.  After all, what better way to prove that consumers understand the trademark significance of your mark than to show that you have actually TOLD consumers to think that way?  While this is a very reasonable requirement, the problem is that it just doesn’t comport with modern marketing.  It seems very 50s ish to have ads that say “look for the ___”.  I rarely see it and in cases involving secondary meaning, it’s extremely rare to see this factor mentioned as anything but something that the trademark claimant HASN’T done.  So I was surprised when I came across these ads:

SGWordPress

 

 

 

San Giuseppe Ad Easter THUMBNAIL

 

 

 

 

 

 

 

 

 

 

 

San Giuseppe Ad 20th THUMBNAIL

 

 

 

 

 

 

 

 

 

I think it’s a pretty good bet that San Giuseppe will have no trouble establishing its trademark rights in its Lily design.   Without such advertising the Lily could be considered to be merely ornamental.  An example of such a case involved Turning Leaf’s unsuccessful attempt to claim a trademark in its leaf design.  Kendall-Jackson Winery v. E. & J. Gallo Winery (9th Circuit, July 8, 1998)

turning leaf

 

 

 

 

 

 

 

 

kendall jackson