‘Is it Time to Overrule the Trademark Classification Scheme?’

Jake Linford, Are Trademarks Ever Fanciful?, 105 Georgetown Law Journal (forthcoming), available at SSRN. Trademark law protects distinctive marks: ones that identify the source of goods or services and distinguish them from others in the marketplace. But how should courts determine whether consumers view a mark as distinctive? In an attempt to provide some analytical rigor to this essential question, courts have developed a complicated two-prong test: they look to both ‘inherent distinctiveness’ (ie, linguistic uniqueness) and ‘acquired distinctiveness’ (ie, whether consumers have come to see the mark as distinctive of source). Inherent distinctiveness for word marks is based on the so-called Abercrombie spectrum (named after the 1976 2d Cir case that most famously articulated it), which classifies marks from most to least distinctive as fanciful (KODAK cameras), arbitrary (APPLE computers), suggestive (COPPERTONE suntan lotion), descriptive (AMERICAN airlines), or generic (‘apple’ for apples). Marks like AMERICAN can become strong, protectable marks only by developing ‘acquired distinctiveness’; marks like COPPERTONE and APPLE are presumed to be protectable at birth; and coined marks like KODAK are the strongest of all … (more)

[Lisa Larrimore Ouellette, JOTWELL, 6 May]

First posted 2016-05-09 06:03:01

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