The Spectrum of Distinctiveness Quiz

PDF page 158: The fundamental and overriding requirement for a trademark is distinctiveness. The requirement for distinctiveness is analogous to the requirement for novelty in patent rights and originality in copyright. Without distinctiveness, there can be no trademark.

PDF page 158: The fundamental and overriding requirement for a trademark is distinctiveness. The requirement for distinctiveness is analogous to the requirement for novelty in patent rights and originality in copyright. Without distinctiveness, there can be no trademark.

PDF page 158: The fundamental and overriding requirement for a trademark is distinctiveness. The requirement for distinctiveness is analogous to the requirement for novelty in patent rights and originality in copyright. Without distinctiveness, there can be no trademark.

PDF page 158: Some trade and service marks achieve distinction via their inherent nature—Nike’s curved “Swoosh” check mark suggesting speed and agility, for example.

PDF page 159: But other marks gain distinctiveness as a result of marketing, eventually forming a powerful association over time in the minds of consumers. As an example, the term “Raisin Bran” is merely descriptive of the foods used in the cereal and would not be eligible for trademark registration had Kellogg Company not demonstrated through evidence of use (including sales, advertising expenditures, and consumer surveys) that the buying public had come to distinctively associate Raisin Bran with this particular Kellogg’s cereal. The public’s distinct association of a trademark to a company is known as secondary meaning, and that is something that can only be established over time. An understanding of secondary meaning is crucial when discussing the spectrum of distinctiveness. In Abercrombie & Fitch Co. v. Hunting World, Inc. (https://www.openstax.org/l/AFVHuntingWorld) in 1976, Judge Henry Jacob Friendly established five basic categories of marks along a spectrum of distinctiveness, ranging from “fanciful” marks that are inherently distinctive on one end and on the other end “generic” marks

PDF page 159: But other marks gain distinctiveness as a result of marketing, eventually forming a powerful association over time in the minds of consumers. As an example, the term “Raisin Bran” is merely descriptive of the foods used in the cereal and would not be eligible for trademark registration had Kellogg Company not demonstrated through evidence of use (including sales, advertising expenditures, and consumer surveys) that the buying public had come to distinctively associate Raisin Bran with this particular Kellogg’s cereal. The public’s distinct association of a trademark to a company is known as secondary meaning, and that is something that can only be established over time. An understanding of secondary meaning is crucial when discussing the spectrum of distinctiveness. In Abercrombie & Fitch Co. v. Hunting World, Inc. (https://www.openstax.org/l/AFVHuntingWorld) in 1976, Judge Henry Jacob Friendly established five basic categories of marks along a spectrum of distinctiveness, ranging from “fanciful” marks that are inherently distinctive on one end and on the other end “generic” marks

PDF page 159: Fanciful marks are invented words, symbols, or devices that have no relation to the good or service being sold and have no meaning other than to distinctly identify the product or service and distinguish it in the minds of consumers from those of any other vendor. “Xerox” is a good example of a fanciful mark, as are “Google” and “Kodak.” Fanciful marks are considered the strongest type of mark and are prima facie registrable with the USPTO.

PDF page 159: Arbitrary marks are real words in common usage that have no descriptive relationship to the product or service being sold. Examples of arbitrary marks include “Apple” (for the computer company), “Oracle” (for the software company), and “Galaxy” (for the mobile phone). Arbitrary marks are also unreservedly eligible for trademark registration.

PDF page 159: A suggestive mark is the minimum required for a mark to be unconditionally registrable absent a secondary meaning. Or in the words of Judge Friendly, “The validity of the mark ends where suggestion ends and

PDF page 159: A descriptive mark explicitly describes the purpose, nature, or an attribute of a product or service and is, therefore, not eligible for trademark registration unless a secondary meaning or association has been

PDF page 159: developed in the public’s mind through usage. Ineligible descriptive marks include “Lightweight” and “Faster.” However, if a descriptive mark takes on a secondary meaning in the public mind—“Sharp” televisions, for example, or “Windows” for windowing software—then it can be eligible for trademark registration.

PDF page 159: that are never distinctive and thus not eligible for trademark registration.

PDF page 160: The last and least distinctive category of marks are generic marks that are simply the common name for the goods and services being sold. Examples of generic marks might be “Aspirin” for the analgesic, or the use of the word “Baskets” for a basket store without any accompanying logo or other design element to distinguish from a merely generic description of the items sold. A generic mark is never eligible for registration no matter how much evidence a mark owner offers that it has acquired a secondary meaning through advertising and marketing. Ironically, a product or service can become so successful in the marketplace that the public begins to associate its trademark with an entire category of similar products and services. When this happens, a valid trademark can become a generic name and the trademark will be lost, as happened with both “Cellophane” and “Aspirin.” To prevent this from happening, companies like “Kleenex,” “Xerox,” and more recently “Google” have gone to great legal and advertising expense to prevent the generic misuse of their trademarks so these remain valid.