Nontraditional Trademarks: Marketing to the Senses with Shape, Sound, Color, and More
We usually think of a trademark or service mark as a two-dimensional spoken word or phrase, or design used to identify a product or service. As technology has advanced and products and services now are marketed in a wide variety of new ways, nontraditional trademarks are gaining in popularity. Examples of nontraditional trademarks that companies have registered successfully through the United States Patent and Trademark Office (“U.S.P.T.O.”) include sound, motion, texture, color, fragrance, product shape, and product packaging. Cutting-edge marketers, however, may discover that registering some nontraditional trademarks is much easier than registering others.
Everyone is familiar with MGM’s roaring lion’s growl and the Pillsbury Doughboy’s giggle, but how many of us knew that they are actually registered trademarks? These, and many other sound marks registered in the United States, are accessible on the U.S.P.T.O.’s database (www.uspto.gov). Some of the most famous include Intel’s five-note chime, NBC’s three-note chime, Homer Simpson’s “D’OH!” the Looney Tunes theme song, and Aflac’s quacking duck.
To register a sound as a trademark, the following are required:
A detailed description, including any words or lyrics, of the sound. When Intel registered its sound mark, the company submitted the written description of the notes as: “D Flat, D Flat, G Flat, D Flat, and A Flat.”
An audio or video reproduction of the sound only, in a sound file format.
A specimen of the sound used in connection with the product or service – a commercial where the sound is used could be submitted.
Unfortunately, as many companies have learned, not just any sound can be registered. Commonplace sounds made in the “normal course of operation” may be registered only upon proof of acquired distinctiveness. When Harley-Davidson attempted to register the sound of its motorcycle engines, many of the company’s competitors opposed the attempt, claiming there wasn’t anything unique or distinct about that sound from the sound of other engines. Harley-Davidson eventually abandoned the application.
Motion marks are becoming very popular too, since they have the power to energize brands. Examples of recently registered motions include Woot’s flashing orange lights and ING DIRECT’S bouncing orange ball.
Motion marks may be easier to register than sound marks because you don’t have to prove acquired distinctiveness. That said, producing the drawings required to register a motion can be difficult.
To register a motion as a trademark, one needs the following:
A drawing depicting either a single freeze frame or multiple freeze frames, whichever type creates the better commercial impression of the mark. Even the most seasoned graphic designer might struggle to depict a vibrant motion under such rigid requirements.
A written, detailed description of the motion. ING DIRECT described the motion of its bouncing orange ball as a “vertical bounce.” The broader the description, the better (as long as it is accurate).
A specimen of how the motion is used in connection with the services. A video is ideal for this.
A consistent display of the motion showing that it does not change.
Texture marks appear to be among the least common nontraditional trademarks. Other than proving acquired distinctiveness, the most important requirement to remember is that the texture you want to register can’t be a functional feature of the product. American Wholesale Wine & Spirits, Inc., was able to register the velvet texture of its wine bottle, since the velvet did not serve a functional purpose but, instead, identified the maker of the wine and distinguished its wine from those of its competitors. The maker of the BAWLS soft drinks, however, likely has conceded the functionality of the bumpy texture of its bottles with the following advertising: “The ‘bumps’ on the bottle are there to provide a grip so that it does not slip out of your hand when [the bottle] is wet.” The U.S.P.T.O. could cite this advertising in an Office Action, refusing registration of the bumpy texture as a trademark, on grounds it is a functional feature of the product.
To register a texture, one must provide the U.S.P.T.O. with the following:
A detailed written description (no drawing is required).
A specimen – a sample product is required to be shipped to the U.S.P.T.O.; a photograph is not acceptable.
UPS has made brown the foundation of its brand and has registered the color successfully. Tiffany & Co. has registered its robin’s egg blue, and 3M has registered the canary yellow of its Post-it notes. Despite these successes, registering a color can prove to be difficult and expensive. A company must establish that its color has acquired distinctiveness. A color mark must consist solely of one or more colors and cannot be functional, which can create problems for many companies. A color may be deemed functional if it yields a utilitarian advantage, is more economical to manufacture or use, or is aesthetically pleasing and helps to improve the salability of the good or service. For example, pink has been deemed functional as applied to an antacid, and black has been deemed functional as applied to marine outboard motors.
To register a color, one must provide the following:
Substantial proof of acquired distinctiveness. The U.S.P.T.O. looks for such things as declarations attesting to long, substantially exclusive use of the color as a mark, third-party articles, customer testimonials, surveys and other market research, and extensive advertising dollars.
A drawing of the mark. This can be quite problematic, as the requirements are tricky and they vary for products and services.
A detailed description of the color and how it is used in connection with the product or service.
A specimen showing the color used in connection with the product or service.
Companies seeking to register “their” color should look closely at how other companies have done it. UPS ultimately was able to register brown, in part because the company had used the color as a source identifier, using “look-for” advertising taglines such as “What can Brown do for you.”
Companies that do not yet have the required substantial evidence of acquired distinctiveness may consider seeking a supplemental registration, which will confer some – but not all – benefits of registration. The standard of proof for a supplemental registration is that the color may be capable of distinguishing the product or service but does not actually serve such a function.
Enforcing a color mark once obtained can also be problematic. Currently working its way through the courts is Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F.Supp.2d 445 (S.D.N.Y. 2011), which takes on the issue of whether a single color (in this case, a red sole on a shoe) can be registered and enforced against others. This case will be important not only to the fashion industry (the litigants in this case are designers) but for all companies planning to register a color.
To date, the fragrance or scent marks accepted for registration in the United States have been limited. One of the first was in 1991, when a California woman registered a scent for her sewing thread and embroidery yarn. The trademark was described as “a high impact, fresh, floral fragrance reminiscent of plumeria blossoms.” In the United States, scents may be protected as trademarks if they do not serve a functional purpose. However, perfume scents cannot be registered, because the smell and the function cannot be separated. A more recent example of a scent mark registered in the United States is the citrus scent for biofuel registered to Amyris Biotechnologies, Inc.
To register a fragrance, the application must include the following:
Substantial proof of acquired distinctiveness.
A detailed written description (no drawing is required).
A specimen of the fragrance. Because fuel cannot be shipped across state lines, Amyris soaked cotton balls in the citrus-scented biofuel and submitted the cotton balls with its application.
The shape and design of a product is another example of a nontraditional trademark. Porsche’s sleek car design and Coca-Cola’s classic Coke bottle are both registered in the United States. As with other types of marks, the functional configuration of a product cannot be registered. In what is one of the most amusing cases to read Georgia-Pacific Consumer Prods. LP v. Kimberly-Clark Corp., et al., 647 F.3d 723 (7th Cir. 2011), a judge deemed that quilting toilet paper was functional and could not be protected as a product design trademark.
With endless possibilities when it comes to nontraditional marks, the sky is truly the limit. However, some important “do’s and don’ts” do apply.
Investigate the competitive landscape.
Develop unusual or unexpected features.
Apply for registration (even on the Supplemental Register, if necessary).
Educate consumers through the use of advertising.
Choose a feature of the product that is featured in a utility patent.
Advertise functional or utilitarian benefits of the feature.
Choose a feature that is commonly used by others in your industry.