Article March 13, 2017
Get Creative with Non-Traditional Marks
- Person title
- Of Counsel
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.
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.
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.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Blog January 28, 2015
NEW! USPTO Courtesy Reminders for Post-Registration Maintenance Deadlines
Blog September 22, 2014
INTA and AIPLA Weigh In on Questions of TTAB Issue Preclusion and Deference before the U.S. Supreme Court
Article May 9, 2014
Think globally, act globally: legal considerations for developing and managing a global brand
Blog September 22, 2023
TTAB Rules Consumer Perception Remains the Critical Inquiry for Generic.gTLD Marks
Blog August 30, 2023
Legal Alert: USPTO Warns Trademark Applicants to Beware of Spoofed Calls
Blog March 28, 2023
U.S. Copyright Office Cancels Registration for AI-Generated Art, Issues AI-Related Registration Guidance
Article March 16, 2023
Attorneys Kristen McCallion and Darra Loganzo Co-Author World Trademark Review Article "Could AI Require Platforms to Do More to Prevent Infringement?"
Blog February 10, 2023
Need-to-Knows of the New Copyright Claims Board for Small-Value Copyright Claims
Blog December 12, 2022
Legal Alert: USPTO Updates Deadline to Respond to Trademark Office Actions
Q&A August 22, 2022
Principal Vivian Cheng Featured in Law.com Q&A Series "How I Made Partner"
Article June 16, 2022
Principal Cynthia Walden and Associate Sarah Kelleher Author World Intellectual Property Review Article "Selling the Intangible in Fashion: What Does It...
Blog March 8, 2022
The Basics of TTAB Cancellations
Blog November 9, 2021