March 18, 2009
The Abercrombie Formulation: Generic, Descriptive, Suggestive,
Arbitrary and Fanciful Trademarks
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 in order to perform source-identifying functions.
The Lanham Act, the federal trademark statute, protects marks that perform sourceidentifying functions. Specifically, under the Lanham Act, a person must use or intend to
use a mark to “identify and distinguish [his or her goods]...from those manufactured or
sold by others and to indicate the source [of the goods].” In essence, trademark law
places a premium on marks that are distinctive.
To test “distinctiveness,” courts will use the “Abercrombie Formulation.”
The Abercrombie Test
Following the “classic formulation” set forth by the 2nd Circuit Court of Appeals in
Abercrombie & Fitch Co. vs. Hunting World, Inc., courts frequently classify marks into
five categories. In order of generally increasing distinctiveness, these categories of
marks are: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful.
The determination of whether a mark qualifies for protection is based, in part, on which
category the mark belongs to.
Generic Marks: Ineligible for Protection
According to the Abercrombie court, “a generic term is one that refers, or has come to
be understood as referring, to the genus [or class] of which the particular product is a
species.” To cite the court’s example, “Ivory” would be generic when used to describe a
product made from the tusks of elephants. Generic marks can never be protected as
trademarks because if one seller could obtain trademark protection for a generic term,
other sellers would be unable to describe their products and would thus be at a great
disadvantage. Further examples --it is not permissible to trademark “Milk” brand milk or
“Hiking Boots” brand boots.
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Descriptive Marks: Eligible for Protection Only if Accompanied by Secondary
Meaning
“A term is descriptive if it forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods.” Descriptive marks are not inherently
distinctive, i.e. they do not identify a particular source. As such, they can only be
protected if they have acquired “secondary meaning.” According to the U.S. Supreme
Court, “secondary meaning is acquired when in the minds of the public, the primary
significance of a product feature...is to identify the source of the product rather than the
product itself.” Put another way, 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 in acquires a secondary meaning. Examples include McDonald’s and
Hilton Hotels.
Various courts have cited the following examples of descriptive marks: “Tasty” bread;
“Trim” nail clippers; and “Car Freshener” deodorizer.
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:
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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).
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Suggestive Marks: Automatically Eligible for Trademark Protection
The Abercrombie court described a suggestive mark as one that “requires imagination,
thought and perception to reach a conclusion as to the nature of the goods.” In other
words, a suggestive mark will tend to connote a characteristic of a product, and thereby
enable a consumer to infer something about the product from the mark. Because a
suggestive term is deemed inherently distinctive, it is automatically entitled to protection
(i.e., without secondary meaning). “Chicken of the Sea” and “Coppertone” are
examples of suggestive marks.
Although an inference must be made about the product, the product must still bear
some relationship to the mark. For example, Pathfinder suggests something that is at
home off-road, but it has no inherent relationship to a four-wheel-drive SUV made by
Nissan. Similarly, “Titleist” has no inherent relationship to a golf ball, but it does suggest
championship sports equipment.
Arbitrary or Fanciful Marks: Automatically Eligible for Trademark Protection
According to the Abercrombie formulation, fanciful marks typically consist of “words
invented solely for their use as trademarks.” For example, “Kodak” and “Clorox” are
fanciful marks. However, “when the same legal consequences attach to a common
word, i.e., when it is applied in an unfamiliar way, the use is called ‘arbitrary.’” An
example of an arbitrary mark is “Apple” for computers.
Both arbitrary and fanciful marks are completely unrelated to the goods they adorn.
However, while an “arbitrary” mark is typically well-known in a different context, a
“fanciful” mark is newly invented. Like suggestive marks, arbitrary and fanciful marks
are deemed inherently distinctive, and are automatically entitled to trademark
protection. Examples include Yamaha, Chevron, and Maytag. These words have no
inherent relationship with their products -- motorcycles, gasoline, and appliances.
Illustration
A federal appeals court set forth the following example to illustrate these legal concepts:
“The trade name ‘Pet Store’ for a shop that sold pets would be generic. The word
‘penguin,’ by contrast, would be descriptive when used in the name of a shop that
specialized in items relating to a certain polar species; suggestive when denominating
an air conditioning company; and arbitrary when the name of a book publishing
company. (If the book publisher wanted a fanciful mark, it could use a made-up word,
like ‘Penquell.’)”
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More 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:
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"pink" was connected with Owens-Corning's product in the minds of "a
significant part of the purchasing public"
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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".
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$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.
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