How is trademark distinctiveness measured in the United States?

Trademarks are used to identify the source of products to consumers. The strength of a trademark is directly related to the distinctiveness of the trademark. Trademark distinctiveness ranges from arbitrary or fanciful, to suggestive, followed by merely descriptive matter and finally generic terms. The distinctiveness of a trademark directly affects whether a trademark can be registered on the principal trademark register of the United States Patent and Trademark Office and how courts will treat the trademark in a trademark infringement action.

The second circuit court case – Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4 (2nd Cir. 1976) established the spectrum of trademark distinctiveness in the United States, breaking trademarks into classes which are accorded differing degrees of protection. Courts often speak of marks falling along the following “spectrum of distinctiveness,” also known within the United States as the “Abercrombie classification” or “Abercrombie factors”.

Fanciful, arbitrary, and suggestive marks, often referred to as “inherently distinctive” marks, are registrable on the trademark Principal Register without proof of acquired distinctiveness.

Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage.

Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey). An arbitrary mark is a known word used in an unexpected or uncommon way.

Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. Incongruity is a strong indication that a mark is suggestive rather than merely descriptive. If a consumer needs to stop an think about the meaning of a word or phase being used as a trademark, it is likely the mark will be considered suggestive instead of descriptive.

Merely descriptive marks are those that describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. A mark is also considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. A mark that is considered merely descriptive cannot be registered as a trademark without proof of of acquired distinctiveness or secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this “second meaning” (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through the use of consumer surveys, that show that consumers recognize the mark as a brand, such as “FORD”, as opposed to a descriptive term, such as “reliable”.

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. When a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. The disclaimer does not render an otherwise unregistrable generic mark registrable.