Spectrum of Distinctiveness – How to Choose a Strong Trademark

Regardless of what you do, your brand is important. But, how do you choose a trademark that is going to be compelling and memorable?    

Trademarks are words, phrases, symbols, product shapes/packaging, sounds, colors, and designs that identifies the source of the goods or services of one party and distinguishes them from those of others. However, not all trademarks are created equal; some trademarks are “strong” and granted broader protections under the law, while others are “weak” and given limited protections. There are also words and phrases that simply cannot function as trademarks at all. How is one to know where to start?

Trademark law broadly categorizes all marks on a “spectrum of distinctiveness,” which is a fancy legalese way of saying that there is a range of trademarks, from marks that are generic and unprotectable to those that are fanciful and strong. Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976). This spectrum is sometimes referred to as the “Abercrombie Spectrum.”

Trademarks are granted varying degrees of protection based on where they fall on the spectrum of distinctiveness. Some marks are considered inherently distinctive, where there is no obvious connection to the goods or services with which they are used. These are “strong” trademarks and given broad protection. Other trademarks are not inherently distinctive but can nonetheless, over time, acquire distinctiveness because consumers begin to associate them with a particular seller. These trademarks can acquire a secondary meaning through continued and exclusive use in conjunction with specific goods or services.  Other trademarks, however, are simply generic and lack any distinctiveness. These trademarks cannot be registered or protected.  

At one extreme of the spectrum are marks that, when used on or in connection with the goods or services, are arbitrary, fanciful, or coined, and are therefore deemed inherently distinctive. These are the strongest trademarks. Arbitrary marks are words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe the nature of or a significant ingredient, quality, or characteristic of those goods or services. A good example of an arbitrary mark is APPLE® used to identify computers. The mark is arbitrary when applied to the goods because, although the word “apple” is a recognized word, it does not in any way suggest or describe computers, making it a “strong” trademark as applied to computers. Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark, but may bear a relationship to another word, or may be an obsolete word.  Coined marks, which are a variation of fanciful marks, are made-up words that have no language meaning other than as a trademark. Some well-known examples of fanciful or coined trademarks are KODAK® for film, STARBUCKS® for coffee, XEROX® for copy machines, and EXXON® for gasoline. None of these fanciful or coined trademarks had any meanings when they were created, but, as a result of extensive marketing and use, consumers now recognize the trademarks as identifiers of the sources of particular goods or services. For this reason, coined and fanciful marks are inherently “strong.”

Following arbitrary, fanciful, and coined marks on the continuum are suggestive marks. These are marks that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature, ingredients, quality, or characteristics of the goods or services. These can sometimes be the strongest marks and the best marks for businesses because they hint to consumers the nature of the goods or services offered. An example of a suggestive trademark is COPPERTONE®, which when used with sunscreen and related products indicates that the skin will achieve a copper tone when exposed to sun. Other examples of suggestive trademarks are 7-ELEVEN® (the hours it is open), SKINVISIBLE® (medical tape you can see through), JAGUAR® (cars that drive fast!), and APPLE A DAY® (vitamins).

Next on the continuum are marks that are merely (read: only) descriptive of the nature, ingredients, quality, or characteristics of the goods or services they identify. Merely descriptive trademarks will not be registered on the Principal Register of the United States Patent and Trademark Office unless the owner can prove that they have acquired the requisite distinctiveness through prior use in commerce. Examples of descriptive trademarks that have achieved trademark registration based on acquired distinctiveness are BABY BRIE® used for cheese sold in a smaller size, and AMERICAN AIRLINES® for, you guessed it, an airline in America. Also in this category are marks that are geographically descriptive and deceptively misdescriptive of the goods or services, but those types of trademarks are beyond the scope of this article.

Finally, at the weakest end of the spectrum are generic terms for goods and services. Generic terms can never function as a trademark. Where a trademark falls on the spectrum of distinctiveness is highly dependent on the goods and services with which a trademark will be used. For example, the term BICYCLE® has been a highly protected arbitrary trademark since 1885 for playing cards, but would be generic and incapable of registration if used as a mark for a two-wheeled mode of transportation. The trademark APPLE® is arbitrary, inherently distinctive, and strong as applied to computers and related goods, but would be generic and unprotectable as applied to apples or an apple farm. Additionally, trademarks can become generic through long-term widespread, non-trademark use. Sadly, there are many trademarks that were once protected that have become generic and therefore lost protection, such as ESCALATOR for moving staircases, ASPIRIN for pain relief medication, and NYLON for a fabric.

In summary, depending on where a trademark falls on the spectrum of distinctiveness, it will be accorded differing degrees of protection under the law. At one end of the spectrum are arbitrary, fanciful, and coined trademarks. These types of trademarks are considered inherently distinctive and granted the broadest and strongest protection under the law. Next are suggestive trademarks, which require some imagination or multi-step reasoning to discover what goods and services are being offered. These are also considered inherently distinctive and granted strong protection. Next are merely descriptive trademarks. While these types of marks may not be registrable at all, they sometimes can develop secondary meaning in the marketplace, allowing them some protection under the law. And at the opposite end of the spectrum are generic trademarks. These are never registrable or protectable and will never be able to develop secondary meaning or acquired distinctiveness in the marketplace. 

 

ABERCROMBIE SPECTRUM

If you are starting a new business, a new subsidiary of an established business, or launching a new product or service, choosing the right trademark should be a high priority. There are myriad other considerations that must be evaluated when selecting a new trademark, but selecting a strong mark on the spectrum of distinctiveness is a good place to start. Contact us if you have questions about whether your mark may be eligible for registration and where it might be classified on the spectrum of distinctiveness.

This article is not legal advice but should be considered as general guidance in the area of intellectual property law. Crown®, LLP are intellectual property law attorneys. You can contact us here.