Distinctiveness

A word’s meaning must be distinct from the meaning of the good to which the word is attached. The distinctiveness of a mark signals to consumers that the mark identifies the source of a good.

Word Marks
 
Abercrombie Categories

Word marks may be categorized according to their distinctiveness in relation to the good that they are associated.  Words that are arbitrary, fanciful, or suggestive are inherently distinct.  Words that are merely descriptive cannot be trademarked unless secondary meaning is shown. Words that are generic cannot be trademarked.  These categories are based on the famous trademark case, Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2d Cir. 1976). 

Arbitrary

An arbitrary mark is a word (or words) that has a meaning that does not relate to the meaning of the good that it identifies.  Arbitrary marks are inherently distinctive.

 

A fanciful mark is a word that has been created for its purpose of identifying source.  Fanciful marks are inherently distinctive.

Fanciful

A suggestive mark is a word that suggests some sort of characteristic or attribute about the good or service it represents. Although it is inherently distinctive, a suggestive mark does not indicate source as strong as an arbitrary or fanciful mark.

Suggestive
Merely Descriptive

A merely descriptive mark is a word that immediately conveys a characteristic, attribute, or quality of the good without any mental inference by the consumer. Merely descriptive marks require secondary meaning to gain trademark protection.

A generic term has a meaning that refers to the general class of good that it represents. It identifies what the entire good is rather than a characteristic of the good. Generic terms receive no trademark protection (regardless of whether the term has gained secondary meaning).

Generic

Secondary meaning is the source-identification meaning of a mark that develops over time. For a mark to gain secondary meaning, that source-identification meaning must become more prominent than the original descriptive meaning.

Secondary Meaning

When a distinctive mark loses its source-identifying meaning in the minds of the public, it becomes generic and cannot receive trademark protection.

Genericide
Symbols

Two-dimensional symbols are protectable as indicators of source. Some courts do not classify them in the Abercrombie spectrum of distinctiveness. Instead, those courts examine whether the symbol is so unique, unusual, or unexpected in the particular market that consumers will automatically perceive the symbol as indicating source, and if consumer would not, whether the symbol has gained secondary meaning.

 
 
 
 
 
 
 
 
Answers
Practice Problems

Question 1

THE BIG SHOE COMPANY sells a shoe line that it calls THE FREEDOM SHOE.
 

(A) Question: What category of distinctiveness is THE FREEDOM SHOE as a mark?
 

(B) Question: Is THE BIG SHOE COMPANY sufficiently distinct to receive trademark protection?

Question 2

ABC Donuts, Inc. develops a new type of donut that it sells under the name of DIZZY DONUT. The donut has a raspberry filling and is shaped like the number 3. It quickly becomes popular among donut eaters. After a year, many customers ask for a DIZZY DONUT at competitor donut shops. In response to these requests, competitors provide a similar donut to the customers.
 

Question: What category of distinctiveness is DIZZY DONUT?

Question 3

Max develops a new type of bed. He sells the bed under the mark, MAXITRON BRAND BEDS.


Question: What category of distinctiveness is MAXITRON?

Question 4

Billy Bob owns a restaurant that sells hamburgers. He uses a logo to advertise his restaurant that looks like this:
 

Question: Is the shape that Billy Bob uses as his logo (a circle with two lines) sufficiently distinct to be eligible for trademark protection?

Answer to Question 1

(A) Arbitrary. Trademark protection would not exist for the words THE and SHOE, but the word FREEDOM is inherently distinctive. The meaning of FREEDOM is not related to the meaning of the good sold under that mark, a shoe. Therefore, the relationship between the mark and the good is arbitrary.


(B) THE BIG SHOE COMPANY is merely descriptive. Although the company could never hold a trademark on THE SHOE COMPANY (because it would be generic), the word BIG describes an attribute of the company. BIG indicates that the company is large in size, or alternatively, that the company sells shoes that are big. The ambiguity does not diminish the conclusion that BIG is descriptive. Hence, the meanings of the words taken together—THE BIG SHOE COMPANY—indicates a mark that is merely descriptive of the company that produces the goods (shoes) or the goods themselves.
 

Note that even if the meaning is to describe a characteristic of the producer—rather than the good itself—the mark still indicates a descriptive mark.
 

As a merely descriptive mark, THE BIG SHOE COMPANY cannot receive trademark protection unless its proponent can show secondary meaning. That is, consumers must understand THE BIG SHOE COMPANY to represent the source of the shoes sold by that company, as opposed to a description of the good or the source.

Answer to Question 2

Likely generic. DIZZY DONUT begins as an arbitrary mark: the meaning of the word DIZZY has no relationship to a donut. However, as that type of donut becomes popular among consumers, the consumers employ DIZZY DONUT to refer to the donut itself, rather than the source of the donut. This is evident from consumers asking for a DIZZY DONUT from competitors: presumably the consumers are using DIZZY DONUT to request a donut with certain features rather than a donut made by ABC Donuts, Inc. The meaning therefore appears to have become generic.

Answer to Question 3

Fanciful. MAXITRON is a name that Maxwell created. It has no meaning other than as an indicator of the source of the beds that Max is selling.
 

The fact that the first syllable of the mark—MAX—is Max’s name does not matter. Consumers will not perceive MAXITRON as a mark named after Max. Rather, consumers will perceive MAXITRON as a made-up name for the bed. It is therefore inherently distinctive as a fanciful mark.

Answer to Question 4

Arguably not. The relevant issue is whether consumers are likely to interpret this symbol as indicating source. Courts examine whether the symbol is so unique, unusual, or unexpected in the particular market that consumers will automatically perceive the symbol as indicating source. Here, the logo seems rather generic: a circle surrounding two lines. It seems more likely that consumers would perceive the symbol as merely ornamental rather than indicating source. Nevertheless, if Billy Bob can establish secondary meaning—that consumers do perceive the symbol to indicate source—the symbol would be protectable.

 
 
 
 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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