THE ABERCROMBIE TRADEMARK CLASSIFICATION: FROM GENERIC TO ICONIC

INTRODUCTION:

From the eye-catching storefront logo or that jingle that plays in your head, have you ever wondered how some brands became so recognizable, and have you questioned why certain brands maintain exclusive recognition for themselves? It is not just about catchy tunes and captivating logos; it’s about the power of trademarks. In this world, where brand names fight for your attention, there is a fascinating system that decides who gets to be the king (or queen) of the castle.

Trademarks are more than just logos or slogans; they are symbols of trust, quality, and reputation. Think of the Nike swoosh or the Coca-Cola script – these marks evoke emotions and memories, instantly connecting consumers to the products they represent. However not all brand names are created equal. Some are generic, like “shoes” or “soda,” while others are fanciful inventions, like “Google” or “Xerox.” Understanding the distinctions between these types of marks is essential for businesses seeking to protect their intellectual property and build strong brand identities.

THE ABERCROMBIE TEST: A LANDMARK IN TRADEMARK LAW

At the heart of trademark law lies the “Abercrombie classification”, a framework that categorizes marks based on their distinctiveness. This classification, established through landmark case like Abercrombie & Fitch Co. vs. Hunting World, Inc. 537 F.2d 4 (2nd Cir. 1976), helps courts determine the strength of a mark and its eligibility for protection. From “generic” terms that describe the product itself to “fanciful” creations that have no inherent meaning, each category represents a different level of distinctiveness and legal protection.

In Abercrombie, the court articulated the concept of secondary meaning, whereby descriptive marks can acquire protection if they become associated with a particular source in the minds of consumers. The burden of proof lies on the brand owner to demonstrate this secondary meaning through evidence of consumer recognition and association.

In this case, both companies were clothing manufacturers specializing in jungle expedition gear. Abercrombie & Fitch had a collection called “Safari,” while Hunting World introduced a line called “Mini Safari.” The court ruled in favor of Abercrombie & Fitch, citing their prior use of the term “Safari” and the establishment of secondary meaning. Despite “Safari” being a descriptive term, it had acquired distinctiveness through association with Abercrombie & Fitch’s brand, making it eligible for trademark protection.

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THE SPECTRUM OF DISTINCTIVENESS:

In the legal ruling of Abercrombie & Fitch Co. v. Hunting World, Inc. in 1976, Judge Henry Jacob Friendly established five foundational categories of marks that vary in their level of distinctiveness, as follows:

Generic Marks

• Not protectable
• Generic marks are like the plain white T-shirt of trademarks- they are essential but lack uniqueness. These marks describe the product itself and are incapable of serving as identifiers of the source.
• Examples: Car, Computer, Books (you can't trademark the word "book" to sell books)Descriptive Marks

• Protectable only with secondary meaning (when the public associates the mark with a specific source rather than just the product itself)
• It provides information about the product or service, making them descriptive in nature.
• Examples: "Tasty" bread or "Car Freshener" deodorizer cannot be protected. But, in the case of AMERICAN AIRLINES?, a registered airline in America, trademark protection was granted based on acquired distinctiveness.

Suggestive Marks

• Generally protectable
• It hints at qualities or characteristics of the product without directly describing them. These marks require consumers to use their imagination to connect the mark with the product or service.
• Examples: 7-ELEVEN? (the hours it is open), JAGUAR? (cars that drive fast!)

Arbitrary Marks

• Almost always protectable
• These are the common words used in unrelated contexts.
• Example: "Apple?" for computers

Fanciful/ Coined Marks

• Most protectable
• These are entirely invented words.
• Examples: "Kodak?" for cameras, STARBUCKS? for coffee

INHERENT VS. ACQUIRED DISTINCTIVENESS:

The inherent distinctiveness of a trademark lies in its ability to stand out based on its descriptive qualities. Essentially, the less descriptive a mark is about the product or service it represents, the more inherently distinctive it becomes. Take for instance the name “Reebok,” which bears no direct relation to footwear or athletic apparel. Despite this, it is considered inherently recognizable and eligible for trademark protection. Similarly, marks falling into categories like fanciful, subjective, and suggestive are also deemed inherently distinctive.

On the contrary, a trademark’s acquired distinctiveness is rooted in its descriptive nature and its association with the products or services provided by the manufacturer. Initially, descriptive trademarks cannot be registered. However, through prolonged use and continuous association with the manufacturer’s offerings, they can acquire secondary significance in the eyes of consumers. This evolution grants them prominence and distinctiveness over time.

Examples of such descriptive marks include those indicating geographic origin, surnames, or expressing specific components of the item they represent. Attempts to modify them through foreign translations or alternative spellings typically do not alter their descriptive nature. To register a descriptive trademark, it is important to prove its acquired distinctiveness or secondary meaning, often achieved through public recognition and long-term market presence.

Proving secondary meaning can be direct or indirect. Directly, it requires evidence of public recognition through consumer surveys or market analysis. Alternatively, indirect secondary meaning can be established when a mark has been in commerce for a significant period, typically five years. Take the example of “McDonald’s,” which initially was merely a surname but later acquired secondary meaning, uniquely identifying restaurant services.

Choosing a merely descriptive mark with the intention of proving secondary meaning later involves careful considerations. It requires substantial resources for consumer research to demonstrate direct secondary meaning, ensuring widespread recognition among consumers. Moreover, the mark must remain in use for an extended period, usually at least five years, to establish indirect secondary meaning. This prolonged timeline incurs additional filing fees and legal complexities, as descriptive marks may initially be placed on the Supplemental Register before transitioning to the Principal Register.

Enforcing rights in merely descriptive marks presents its challenges, given their frequent occurrence in conversations regarding similar products. This necessitates vigilant enforcement efforts, potentially leading to increased costs and resource allocation for brand owners. Therefore, while descriptive marks may evolve into distinctive trademarks, the journey towards registration requires strategic planning, patience, and a thorough understanding of trademark law.

CASE STUDY:

In Bigtree Entertainment Pvt Ltd. Vs. D Sharma & Another 2019 (77) PTC 411 (DEL),

• The plaintiff had secured the trademark ‘BookMyShow’ for their online ticketing platform, which had gained significant recognition over time, establishing itself as a well-known brand in the industry. However, a rival company introduced ‘Bookmyevent’ for a similar ticketing venture, sparking a legal dispute. The plaintiff argued that both terms, ‘BookMyShow’ and ‘Bookmyevent,’ bore striking phonetic, visual, and structural resemblances, potentially leading to public confusion. With years of dedicated efforts, the plaintiff had built a strong reputation, and they contended that the defendants should not exploit the goodwill and fame associated with their brand. The court here referred to the spectrum of distinctiveness, highlighting that the plaintiff could not claim exclusive rights over the term ‘BookMy’ due to its widespread usage and lack of inherent distinctiveness. Moreover, the term itself was descriptive rather than inherently distinctive, merely describing the nature of the trademark. When examining the marks of both parties in their entirety, the court found significant differences in font and color, making it unlikely for consumers to confuse the two. Consequently, no injunction was granted to the plaintiff, allowing both companies and their respective marks to coexist peacefully.
• This case serves as a pertinent example of how the distinctive spectrum plays a crucial role in determining trademark disputes, emphasizing the importance of inherent distinctiveness in securing legal protection for trademarks.

CONCLUSION:

Trademark distinctiveness, as outlined by the Abercrombie classification, is important in determining a mark’s eligibility for registration. The Abercrombie case serves as a cornerstone in trademark jurisprudence, emphasizing the importance of distinctiveness and secondary meaning. By recognizing the distinctiveness of marks and investing in brand building, businesses can secure valuable trademarks that distinguish them in the marketplace.