Non-traditional trademarks are increasingly popular these days. Social media and internet advertising provide companies with creative avenues to connect with potential customers through quirky and fun uses of trademarks. Here are some tips for non-traditional trademarks:
Sound Marks Distinctive sounds make great trademarks! For examples, see: http://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-examples. The PTO requires a high level of specificity in sound applications, including the instrument playing the sound, the notes, the duration of the notes (quarter note, half note, etc.), and the octave of each note, as well as any other sounds in the mark, such as a knock, applause, a giggle, etc. Consider attaching a musical score with the application.
Scent Marks Scent or fragrance marks are also gaining in popularity and are readily accepted provided they are not functional and you can demonstrate secondary meaning. Examples include a piña colada for ukuleles, flowery musk for retail store services featuring electronic goods, coconut for retail store services featuring flip-flops, and apple cider for office supplies.
Motion Marks Motion marks are also popular and do not require secondary meaning. The applications can include a drawing that depicts a single point of movement or up to five freeze frames showing successive points of movement. Since it can be difficult to access the PTO video file specimen depicting the motion mark, consider using multiple freeze frames in the drawing for notice purposes. If you take this route, though, do not label the frames 1, 2, 3 …, as the PTO may include the numbers as literal elements of the mark.
Flavor Marks Theoretically, flavors and tastes are capable of functioning as trademarks with evidence of secondary meaning, but, so far, there is still no successful registration of a flavor or taste mark. The few flavor mark applications filed have been refused on grounds the marks do not function as trademarks because they are perceived as the flavor of the product, and therefore not as a source indicator, or because they are functional in that they help to make a product taste better.
Color Marks While the PTO will register color marks, they remain some of the most difficult applications. Color marks can never be inherently distinctive or functional, including aesthetically functional. Moreover, while other non-traditional marks require secondary meaning for registration, color marks require substantial evidence of secondary meaning. Mere statements of long use are insufficient and surveys are often required to demonstrate that the color has acquired source-indicating significance in the minds of consumers. Examples of color marks are found at http://tess2.uspto.gov/tmdb/dscm/dsc_29.htm#29.
Availability Searches Non-traditional trademarks can be hard to search! For sound, scent, and flavor, conduct a Structured Search on the PTO website using “(6)” in the search field “Mark Drawing Code,” which is the code for situations for which no drawing is possible. Users can then limit the search to the type of non-traditional trademark, such as sound, scent, flavor, taste, etc., in the search field “Description of Mark.”
Single Rendition Although marketing is increasingly interactive, the PTO requires non-traditional trademark applications to depict only a single rendition. For example, if consumers can interact with the sound mark to change the notes or octaves, you can only register one depiction of the sound. Similarly, if the motion of a motion mark changes in different contexts, consider copyright protection instead.
Fluid Marks The old adage “use your mark consistently” still applies, but playful fluid marks are gaining in popularity. Reserve this practice for marks that are already well established so that you do not dilute your mark or confuse the public.
Functionality Do not file for a nontraditional trademark that is covered by a utility patent disclosing the utilitarian advantages of the design, and do not tout the utilitarian advantages of a nontraditional trademark in advertising materials.
Advertise Scent, flavor and color marks require secondary meaning. Advertise non-traditional marks as source indicators. For example, so-called “look for” advertising, calling consumers’ attention to your creative non-traditional marks, can help establish consumer recognition and demand. For example, UPS advertised its delivery services at one time with a tagline focused on their color mark, “What Can Brown Do for You?”
With endless possibilities when it comes to nontraditional marks, the sky is truly the limit.
Catherine Stockell is Of Counsel in the New York office of Fish & Richardson. Ms. Stockell’s practice emphasizes various aspects of counseling with respect to clearance, adoption, registration and protection of trademarks and copyrights, trademark prosecution and...