Spectrum of

Distinctiveness
by
Dr. Samrat Datta,
Asst. Professor
(Selection Grade),
School of Law,
UPES, Dehradun
 Introduction
• The ‘sliding scale’ theory, or
‘distinctiveness spectrum’, in trademark
law, helps determine the strength of marks.
• The spectrum classifies marks in categories
ranging from distinctive to generic, in an
order along the following lines:
(1) Generic (2.) Descriptive (3.) Suggestive
(4.) Arbitrary (5.) Fanciful.
• Each of these characteristics are defined
and generally understood. However, the
lines between these categories are blurred
and not often separable at the edges.
 Distinctiveness of a Mark
vis-à-vis Trademark
o The principles laid down by Judge Friendly in the case of
Abercrombie and Fitch Co. v. Hunting World, Inc[537,
F.2d 4, 189 U.S.P.Q. 759,769 (2d Cir. 1976) as to the
distinctiveness of a Mark before it acquires the status of a
trademark.
• Accordingly, the Abercrombie Test [spectrum of
distinctiveness] categorizes the marks into
• Inherently Distinctive: Fanciful, Arbitrary and
Suggestive Marks.
• Non-inherently Distinctive: Descriptive Marks
• Marks with no Distinctiveness: All Generic Marks
• The lines of demarcation are not always bright and have
always been a case of interpretation for the Courts.
 Fanciful Marks
• Fanciful marks are the strongest of all marks. A fanciful mark is a
letter string that has no independent meaning in the English
language, such as EXXON for motor fuels Fanciful marks are the
easiest to register, but they do not describe or convey to consumers
what the product is or what it does. As a result, it may initially
take more time and money to market the brand and educate the
marketplace.
• But sometimes even fanciful marks risk becoming generic. If
marketing is too successful at identifying the brand with the
product and fails to give consumers an alternative name for it, then
the brand may ultimately become the name of the product itself.
Xerox Corporation regularly reminds consumers not to “make a
xerox of this report,” but rather to “make a copy with the Xerox
machine,” so that XEROX does not become a generic term for
“photocopying.”
• KODAK for Photographic supplies, CUTEX for cuticle-removing
liquid, ARGYROL for antiseptic, ODOL for mouthwash,
POLAROID for optical devices, cameras.
 Arbitrary Marks
Arbitrary marks are words
that appear in the dictionary
but are arbitrarily used in
connection with the product,
with no independent meaning
or association with respect to
the product. Some examples
include KIWI for shoe polish,
CAMEL for cigarettes, and
AMAZON for an online
retail store.
 Suggestive Marks
Marks which suggest to the consumer something
about the function, features, or attributes of a
product or service, but do not
directly communicate what the product is. For
example, COPPERTONE brand suntan lotion
suggests to the consumer that using the product
will give them a beautiful copper tone to their
skin, but the designation “Coppertone” by itself –
separate and apart from the packaging and the
product itself – would not immediately tell the
consumer what the product is.
 Descriptive Marks
• Descriptive marks simply describe an ingredient, quality, characteristic, function, feature, purpose,
or use of a product or service. For example, BRITISH AIRWAYS merely describes an airline
carrier based in Great Britain. SPORTS ILLUSTRATED describes an “illustrated” magazine
devoted to sports. SPRAY ‘N WASH describes a stain removing preparation that sprays on clothes
before you wash them.
• Descriptive trademarks are not immediately registrable and are not easily protected, but they can
be registered once they have become recognized as an indicator of a single source of a product.
This is called “secondary meaning.” Given a sufficient period of time and exposure to enough
sales and advertising efforts, the consuming public typically comes to associate a descriptive mark
with a single company or source for that product.
• Descriptive marks are hard to register, but they are often in danger of becoming generic, so they
can be even harder to keep. Sometimes they become the generic product name, and sometimes
consumers change the trademark into a verb to describe the activity, which also results in
“genericide.” The makers of ROLLERBLADE boots don’t want you to say, “I’m going
rollerblading,” but “I’m going to work out with my Rollerblade brand in-line skates. Please don’t
“weed-eat the yard,” but you can always use your WEED EATER grass cutting tool to trim the
lawn.
 Generic Marks
• Generic terms are not protected by trademark law, either in India or outside India.
• In fact, one of the most important limitations on the legal protection of a word adopted as a
trademark is that it cannot be a term that refers or has come to be primarily understood by the
public as referring to a ‘product category’.
• For example, the term “Computer” is a generic term used to describe a desktop or laptop or any
computer equipment. Thus, a manufacturer selling “Computer” brand computers will have no
exclusive right to use that term with respect to that product.
• Combining a generic term with other terms may sometimes result in a protectable composite
mark.
• However, the problem arises when proprietors of such composite marks try to claim exclusivity
with respect to the generic term in their composite mark.
• Also, giving a single manufacturer/entity control over use of a generic term in their trademark
would give such manufacturer/entity too great a competitive advantage in the market.
• Therefore, courts all around the world have rejected claims relating to exclusive use of generic
term and have upheld the principle that generic terms cannot be accorded trademark protection.
THANK
YOU