Trademark distinctiveness

In United States trademark law, Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4 (2nd Cir.

Courts often speak of marks falling along the following "spectrum of distinctiveness," also known within the US as the "Abercrombie classification" or "Abercrombie factors":[2][3][4] A fanciful / inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or "fanciful" sign.

An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. "Apple" for computers).

Examples of a suggestive mark are Blu-ray, a new technology of high-capacity data storage that utilizes a "blue" (actually violet) laser and Airbus, an aerospace corporation manufacturing commercial aircraft.

Such terms are not registrable unless it attains a 'secondary meaning', such that the mark is so distinctive that people associated it with specific brand name in the marketplace.

Aspirin is a generic word in the United States for the pain reliever acetylsalicylic acid (also known as ASA).

On the other hand, the mark is unlikely to be inherently registrable if it informs him about any characteristic of the relevant products or services (e.g. whether they are delicious, large, spicy, black, or sweet, in the case of fruit).

Another example of a descriptive mark would be a geographical word or phrase that merely indicates the origin of the product or service.

[14] Therefore marks that identify or describe a product or service, or that are in common use, or that are used as geographical indications, generally cannot be registered as trademarks, and remain in the public domain for use by anyone.

[15] However, most jurisdictions may still allow such marks to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. the trademark owner).

Generally, evidence of use may only be acceptable or relevant if it covers a certain period of time (e.g. three years prior to the filing date of the trademark application) and originates from within the jurisdiction where registration is sought.

The terminology of acquired distinctiveness is accepted in the European Union and Commonwealth jurisdictions such as Australia, Hong Kong and the United Kingdom, and the common law jurisdiction of the United States (which also uses the term secondary meaning).

Trademark rights generally arise out of the use and/or registration (see below) of a mark in connection only with a specific type or range of products or services.

A common word, phrase, or other sign can only be removed from the public domain to the extent that a trademark owner is able to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections.

If a court rules that a trademark has become "generic" through common use (such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it), the corresponding registration may also be ruled invalid.