Abercrombie Unveiled: A Theoretical and Empirical Analysis of Trademark Distinctiveness

The word mark taxonomy established in Abercrombie is a longstanding tenet of doctrinal orthodoxy. Lawmakers have so oft restated the Abercrombie classes and so consistently rehearsed the theoretical grounds that undergird them that it no longer occurs to us to question their premises. But there are good reasons - both pragmatic and theoretical ones - to question the Abercrombie system. At the practical level, it should be noted that the perceived objectivity and predictability of the Abercrombie classification system are a mirage. The law is incessantly and understandably searching for fixed lodestars to guide and cabin judicial and administrative decision-making. Abercrombie offers the appearance of such a lodestar at the threshold stage of evaluating trademark distinctiveness - in the form of a five-level classification system that channels the availability, timing, and degree of trademark protection. Yet although some of those classifications turn on bright-line, objective criteria, that cannot be said of the classification that matters most - of the line between the "suggestive" and the "merely descriptive." Courts and commentators have long lamented the subjectivity and arbitrariness of sorting word marks between these two classifications, and that pragmatic problem gives substantial grounds for an agnostic skepticism toward the Abercrombie orthodoxy. In terms of theory, trademark law is ripe for a thorough reevaluation in the light of the tools employed in the scholarly study of consumer psychology and behavior. The law's reflexive restatement of the grounds for its treatment of "merely descriptive" word marks - that they are unlikely to be perceived by consumers as indicators of source - is a glaring reminder that the law in this field turns on questions well beyond the competence of those trained in the art of legal analysis and interpretation. Where (as here) the law depends on answers to questions that are the focus of an entire field of scholarly study, we cannot afford to proceed in arrogant ignorance of the insights offered by such a field of expertise. In this case, the field of consumer psychology has much to offer the law of trademark distinctiveness. Perceptual schema theory provides ample grounds for doubting the law's myopic focus on the semantic meaning of a descriptive word mark. A consumer who encounters a descriptive word mark in its "trademark use" context may well perceive it as a source indicator on the basis of the mark's non-linguistic cues or indicators of meaning. Those non-linguistic indicators will be provided in large part by the consumer's perceptual models and expectations of a typical brand or source indicator in commercial context. If the descriptive word mark is presented in a spatial layout, size, and placement that matches the consumer's general schematic mental model of what a brand looks like, the word may be perceived as a source indicator even if its semantic meaning is "merely descriptive." Our theoretical model provides grounds for skepticism of Abercrombie; our empirical study completely undermines it. In other words, perceptual schema theory offers a reason to wonder whether and to what extent non-linguistic signs may overwhelm the linguistic signs credited by the law-to consider the possibility that even "merely descriptive" word marks might nonetheless be perceived as source indicators when the non-linguistic markers that accompany their trademark use overshadow their semantic meaning. But empirical analysis can - and does - provide concrete answers to the question of the relative impact of the linguistic and non-linguistic indicators of distinctiveness. Our empirical studies show that Abercrombie rests on an erroneous assumption about the predominant impact of semantic word meaning. So long as the word is used in an "average" trademark use context, a word mark's semantic meaning is shown to be overshadowed by the non-linguistic, contextual markers that establish its distinctiveness as a source indicator.