77 Ohio St. L.J. Furthermore 1 (2016)

handle is hein.journals/furth77 and id is 1 raw text is: 







OHIO STATE LAW JO URNAL FURTHERMORE


Abercrombie 2.0-Can We Get There from Here?
            Thoughts on Suggestive Fair Use

                         JOSEPH SCOTT MILLER*

    In response to Jake Linford, The False Dichotomy Between Suggestive and
Descriptive Trademarks, 76 OHIO ST. L.J. 1367 (2015).

                           TABLE OF CONTENTS

I.    IN TRO DU CTION ............................................................................. 1
II.   LINFORD'S CRITIQUE OF SUGGESTIVE-MARK STRENGTH ................ 3
III.  SUGGESTIVE   FAIR  U SE ................................................................  9

        There must be some description in almost any suggestion or the
        suggesting process will not take place. So what we have in any
        trade-mark case is a matter of judgment as to what side of the
        line the question mark falls upon.
                                - Q-Tips, Inc. v. Johnson & Johnson1

                             I. INTRODUCTION

    Professor Linford, unlike Caesar's Antony, seeks not only to bury
Abercrombie,2 but to praise it,3 at least in part. Using linguistic evidence, both
historical and experimental, he would relocate a bobbled boundary-from the
descriptive-suggestive transition to the suggestive-arbitrary transition-and
thereby establish a reformed template for sorting word marks according to their
source-signifying strength. The basic difference between acquired and inherent
distinctiveness not only remains in Linford's account, however; it draws new
strength from insights about semantic change. Behold, Abercrombie 2.0! His
     * Professor of Law, University of Georgia School of Law.
     1Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 146 (3d Cir. 1953) (emphasis
added) (concluding, at 146-47, that Q-Tips is a protectable mark for cotton-tipped swabs
because [t]he first [syllable], 'Q,' [is] purely arbitrary and fanciful; the second [is] closer to
being descriptive but [is] still used, even in ordinary parlance, in an unusual way); see also
United Lace & Braid Mfg. Co. v. Barthels Mfg. Co., 221 F. 456, 461 (E.D.N.Y. 1915)
(Every good trade-mark is suggestive; once seen or heard, its association with the product
is readily fixed in the mind. If there were no association of ideas between the two, it would
require an independent effort of memory to recall the connection.).
     2Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976)
(setting forth a hierarchy of distinctiveness for words claimed as trademarks eligible for
protection against another's confusingly similar use as a source signifier).
     3 See WILLIAM SHAKESPEARE, JuLus CAESAR act 3, sc. 2 (S. P. Cerasano ed., W. W.
Norton & Co. 2012) (1623) (Antony: Friends, Romans, countrymen, lend me your ears. I
come to bury Caesar, not to praise him.).


Vol. 77]

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