Trademark and Distinctiveness: Abercrombie Formulation

Trademark and Distinctiveness
The term "trademark" includes "any word, name, symbol, or device..." used to identify a
specific manufacturer's or seller's products"...from those manufactured or sold by
others...." 15 U.S.C. § 1127 A trademark does not need to be registered to be valid. A
valid trademark can be established through "legitimate use." However, a trademark
must be distinctive because a distinctive trademark ensures the following:
• competitors can use non-distinctive terms and symbols to describe their goods
and services; and
• the trademark identifies the source of the product.
To test "distinctiveness," courts will use the "Abercrombie Formulation."
Abercrombie Formulation
The Abercrombie Formulation, developed by the 2nd Circuit Court of Appeals in
Abercrombie & Fitch Co. v. Hunting World, Inc., tests for distinctiveness by creating four
categories:
• generic—does not qualify for protection
• descriptive—sometimes qualifies for protection
• suggestive—qualifies for protection
• arbitrary or fanciful—qualifies for protection
The determination of whether a mark qualifies for protection is based, in part, on which
category the mark belongs to.
Generic
By their nature, generic marks are not distinctive. They do not warrant protection
because if one seller could trademark a generic name, other sellers would be unable to
describe their products and would thus be at a great disadvantage. For example, it is
not permissible to trademark "Milk" brand milk or "Hiking Boots" brand boots.
Suggestive
A suggestive mark does not describe the product; it suggests its nature or
characteristics. Although an inference must be made about the product, the product
must still bear some relationship to the mark. For example, a Pathfinder suggests
something that is at home off-road, but it has no inherent relationship to a four-wheel-
www.lgtrademark.com
drive SUV made by Nissan. Similarly, "Titleist" has no inherent relationship to a golf ball,
but it does suggest championship sports equipment.
Descriptive
Descriptive terms and symbols generally identify anything about the product: purpose,
size, color, ingredients, origin, and so forth. Merely descriptive, general marks do not
qualify for protection. To qualify for protection, a mark must acquire a secondary
meaning. To acquire a secondary meaning, the mark must be associated by the public
with the manufacturer or seller rather than the underlying product itself. For example,
"Jiffy Lube" describes a speedy lube and oil but has acquired a secondary meaning in
the public mind.
A surname incorporated into a mark is treated as a descriptive mark—it does not qualify
for protection until it acquires a secondary meaning. Examples include McDonald's and
Hilton Hotels.
Secondary Meaning
There is no bright line rule for determining whether a descriptive mark or surname has
acquired a secondary meaning. The Second Circuit Court of Appeals, in Thompson
Medical Co., Inc. v. Pfizer Inc. 753 F.2d 208 (C.A.N.Y.,1985), collected a list of factors to
be considered from previous cases and stressed that no single factor is determinative.
These factors include the following:
• advertising expenditures
• consumer studies linking the name to a source
• sales success of the product
• unsolicited media coverage of the product
• attempts to plagiarize the mark
• the length and exclusivity of the mark's use
Courts will also consider the how others have used the terms or symbols, whether they
are likely to use them in the future, and the extent they have used them in the past.
Zatarian's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).
Arbitrary and Fanciful

Marks that are arbitrary and fanciful do not describe or suggest any characteristic of the
product. The symbol's meaning is not inherently related to the product, so the product is
more likely to be associated with the symbol. Examples include Yamaha, Chevron, and
Maytag. These words have no inherent relationship with their products—motorcycles,
gasoline, and appliances.
www.lgtrademark.com
Some Illustrative Cases
In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985)

Owens-Corning sought to register the color "pink" as it is used with the fiberglass they
manufactured. Owens-Corning claimed that the pink color of their fiberglass was an
arbitrary design decision (fiberglass need not be pink). They further claimed that
through prior commercial use, the color pink had acquired a secondary meaning, and
was, thus, distinctive.
The court used the following factors to determine whether "pink" had a secondary
meaning in this case:
• "pink" was connected with Owens-Corning's product in the minds of "a
significant part of the purchasing public"
• television commercials and other advertising that associated pink with the
fiberglass including: "Pink of Perfection"; "The Pink Cooler"; "Big Pink"; "Love
that Pink"; "Pink Power"; "America's Favorite Pink Product"; "Tickled Pink"; "Put
your House in the Pink"; "Up with Pink'; "Prime Time Pink"; "Think Pink"; "Think
More Pink"; "Beat the Cold with Pink"; "All that Pink"; and "Plant some Pink
Insulation in your Attic".
• $42,000,000 in advertising expenditures
The court held that the descriptive term "pink" acquired a secondary meaning when
associated with Owens-Corning fiberglass. Thus it was distinctive and could be
protected by trademark.
Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997)
Genesee Brewing Co. had been marketing and selling a product called, "JW Dundee's
Honey Brown Lager." A competitor, Stroh Brewing Co., later began marketing their own
product called, "Red River Valley Honey Brown Ale." Genesee sought to restrain Stroh
from marketing Red River Honey Brown Ale, claiming that the phrase "honey brown"
should be protected and would tend to cause confusion as to the origin of the product if
used by Stroh. The court, however, held that the term "honey brown" was generic and
descriptive because those words were necessary to describe that particular type of ale.
Thus "honey brown" did not warrant protection.
© 2009 NextClient.com, Inc. All rights reserved.
www.lgtrademark.com

Trademark and Distinctiveness: Abercrombie Formulation

Uploaded by

Copyright:

Available Formats

Trademark and Distinctiveness: Abercrombie Formulation

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Trademark and Distinctiveness: Abercrombie Formulation

Uploaded by

Copyright:

Available Formats

Trademark and Distinctiveness

Arbitrary and Fanciful

In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985)

© 2009 NextClient.com, Inc. All rights reserved.

You might also like