The Abercrombie Test for Trademark Strength

In determining the strength of your trademark, the Trademark Office and many courts utilize the Abercrombie test for trademark strength.  In the complex world of trademark law, understanding the strength of your mark is paramount. One of the most important frameworks for evaluating trademark strength is the Abercrombie test, established by the landmark case Abercrombie & Fitch Co. v. Hunting World, Inc. in 1976. This test has become a cornerstone in determining the level of protection a trademark deserves and its likelihood of trademark registration.

In Ashley Furniture Industries v. Sangiacomo N.A. Ltd., 187 F3d 363 (4th Cir. 1999) the court used the following example to illustrate the different categories of trademark distinctiveness according to the Abercrombie test. By way of example:

“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.’).”

The Abercrombie Test for Trademark Strength

The Abercrombie test classifies trademarks into five categories, arranged in order of increasing distinctiveness and strength:

1. Generic
2. Descriptive
3. Suggestive
4. Arbitrary
5. Fanciful

Generic Marks

At the bottom of the spectrum are generic marks. These terms refer to the general category of goods or services and cannot be protected as trademarks. According to the Abercrombie test for trademark strength, “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.  Additional examples include, “smartphone” for a mobile device or “coffee” for a caffeinated beverage would be considered generic.

Descriptive Marks

Descriptive marks directly describe a quality or characteristic of the product or service. “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.” Various courts have cited the following examples of descriptive marks in light of the Abercrombie test for trademark strength: “Tasty” bread; “Trim” nail clippers; and “Car Freshener” deodorizer. Another example would be “Speedy” for a delivery service. These marks are generally weak and difficult to protect unless they have acquired secondary meaning through extensive use and recognition in the marketplace.

Suggestive Marks

Suggestive marks require some imagination or mental leap to connect the mark to the product or service. The Abercrombie test for trademark strength classifies 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” for sunscreen is a classic example of a suggestive marks. These marks are inherently distinctive and eligible for trademark protection without proof of secondary meaning.

Arbitrary Marks

Arbitrary marks use common words in an unexpected or unrelated context. According to the Abercrombie test for trademark strength, 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. These marks are considered strong and are afforded a high level of protection. “Apple” for computers is a well-known arbitrary mark.

Fanciful Marks

At the top of the spectrum revealed through the Abercrombie test for trademark strength are fanciful marks – invented words created solely for use as trademarks. These are the strongest type of marks and receive the highest level of protection. “Kodak” for photography products is a prime example of a fanciful mark. 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.

The Rationale Behind the Test

The Abercrombie test for trademark strength serves a crucial purpose in trademark law. It helps courts and the United States Patent and Trademark Office (USPTO) determine the inherent strength of a mark and the level of protection it deserves. The underlying principle is that the more distinctive a mark is, the more likely it is to serve as a unique identifier of the source of goods or services.

A Compelling Case Study: Qualitex Co. v. Jacobson Products Co.

While not directly related to the Abercrombie test for trademark strength, the case of Qualitex Co. v. Jacobson Products Co. (1995) provides an excellent illustration of how courts apply trademark principles to non-traditional marks, marks for color. This case expanded the understanding of what can constitute a trademark beyond words and symbols. Qualitex had been using a specific shade of green-gold color on its dry cleaning press pads for decades. When a competitor, Jacobson Products, began using a similar color, Qualitex sued for trademark infringement. The case made its way to the Supreme Court, which ultimately ruled in favor of Qualitex.The Court’s decision emphasized that color alone can meet the basic legal requirements for a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function. This ruling demonstrated the flexibility of trademark law in protecting various types of source identifiers, reinforcing the importance of distinctiveness in trademark protection.

Why the Abercrombie Test Matters for Your Business

Understanding where your trademark falls on the Abercrombie spectrum is crucial for several reasons:

1. Registration Success: The stronger your mark, the more likely it is to be approved for registration by the USPTO.
2. Enforcement Power: Stronger marks are easier to defend against infringement and provide broader protection.
3. Business Value: A strong, distinctive trademark can become a valuable asset for your company, enhancing brand recognition and customer loyalty.
4. Legal Strategy: Knowing your mark’s strength helps in developing effective legal strategies for protection and enforcement.

The Importance of Expert Legal Guidance

Navigating the intricacies of trademark law and the Abercrombie test requires specialized knowledge and experience. An experienced trademark attorney can provide invaluable assistance in:

• Evaluating the strength of your proposed mark
• Developing strategies to strengthen descriptive marks
• Conducting comprehensive trademark searches
• Preparing and filing trademark applications
• Defending your mark against infringement

Don’t leave the strength and protection of your trademark to chance. Our firm’s experienced intellectual property attorneys are well-versed in applying the Abercrombie test for trademark strength and other crucial aspects of trademark law. We can help you secure and maintain strong trademark protection, ensuring your brand’s distinctiveness in the marketplace. Contact us today to schedule a consultation and take the first step towards robust trademark protection for your business. Let our expertise guide you through the complexities of trademark law and help you build a strong, legally protected brand identity.