A Primer On Non-traditional Trademarks

A trademark is a “source identifier.” That is, a trademark generally is a word, phrase, symbol, design or a combination of words, phrases, symbols, or designs that identify and distinguishes the source of the goods of one party from those of others, and can be used to indicate the source of goods and services.

A trademark is a “source identifier.” That is, a trademark generally is a word, phrase, symbol, design or a combination of words, phrases, symbols, or designs that identify and distinguishes the source of the goods of one party from those of others, and can be used to indicate the source of goods and services. The most recognizable trademarks are usually wordmarks or logos also known as traditional trademarks.

Non-traditional trademarks include colors, motions, sounds, scents, and even shapes. Obtaining protection for non-traditional marks can be challenging, but not impossible.

Color

A color itself can be registered as a trademark, not connected with words or any kind of graphic design. Examples of trademarked colors include UPS and its brown color in US Reg. No. 2,901,090 for “transportation and delivery of personal property by air and motor vehicle,” with the following description of the mark: “The mark consists of the color chocolate brown, which is the approximate equivalent of Pantone Matching System 462C, as applied to the entire surface of vehicles and uniforms. The mark consists of the color brown alone. The broken lines indicate the position of the mark and do not form part of the mark”.

Another famous color mark is Tiffany’s unique “robin’s egg” shade of blue, for boxes (US Reg. No. 2,359,351), shopping bags (US Reg. No. 2,416,795), and on the cover of catalogs (US Reg. No. 2,416,794). And, of course, many know about Christian Louboutin shoes with their red soles, covered under US Reg. No. 3,361,597, for women’s high-fashion designer footwear:

Motion

Some moving images that combine colors, sounds, and product design, but also the movement of a person that is not a static gesture but a flow of images. A good example is a UK mark (UK00002607608) for a 3-D yoga app.

In the US, if the mark has motion, the drawing may depict a single point in the movement, or the drawing may depict up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also describe the mark. 37 C.F.R. §2.52(b)(3).

Another challenge applicants of motion marks need to consider is providing an appropriate specimen of use. This challenge is greater for applicants who seek to register their mark for use in connection with goods. A motion mark, by its nature, is unable to be affixed on goods (or packaging). In this case, by rule, a specimen will be in electronic format. The USPTO’s Trademark Manual of Examining Procedure (TMEP) governs the submission of specimens for motion marks. It provides that for a motion mark “an acceptable specimen should show the entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g., a video clip, a series of still photos, or a series of screenshots).”

For specimens for services, Section 1301.04(a) of the TMEP requires that “the specimen must show the use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant’s services and indicating their source.”

An example of a motion service mark is US Reg. No. 2,710,415, for a “Duck March,” for hotel-related services.

A description of the mark is: “The mark consists of the live visual and motion elements of The Peabody Duck March as performed at the Peabody Hotel, only one segment of which is depicted in line art in the drawing. The motion elements include the red carpet being rolled out, the appearance of the ducks and uniformed Duckmaster at the elevator door, and the march of the ducks down the red carpet, up the steps, and into the fountain where they begin swimming. The mark also includes the fanfare in reverse sequence.” The specimen consists of screenshots of a video recording of the marching ducks.

Sound

For musical tones, a sound can be described using sheet music, but other types of sounds have to be described verbally. For example, “Let’s get ready to rumble,” Michael Buffer’s famous phrase he is known for bellowing before a boxing match, is described as: “The mark consists of a sound mark comprising the spoken words ‘LET’S GET READY TO RUMBLE’.”

Another good example of a sound mark is the roar of the MGM’s lion Leo, described as “The Mark comprises of a lion roaring”.

Or consider the famous call of the character Tarzan, described as: “…the sound of the famous Tarzan yell. The mark is a yell consisting of a series of approximately ten sounds, alternating between the chest and falsetto registers of the voice, as follows:

1. a semi-long sound in the chest register;
2. a short sound up an interval of one octave plus a fifth from the preceding sound;
3. a short sound down a Major 3rd from the preceding sound;
4. a short sound up a Major 3rd from the preceding sound;
5. a long sound down one octave plus a Major 3rd from the preceding sound;
6. a short sound up one octave from the preceding sound;
7. a short sound up a Major 3rd from the preceding sound;
8. a short sound down a Major 3rd from the preceding sound;
9. a short sound up a Major 3rd from the preceding sound;
10. a long sound down an octave plus a fifth from the preceding sound.”

An example of a sound that could not be registered is the revving of a Harley-Davidson motorcycle. Harley-Davidson tried for years to register the sound but eventually had to drop the matter because it was not possible to describe the sound adequately with words.

Scent

Specific smells associated with particular goods or services can be trademarked, however, they cannot merely be the natural smell of the product. It has to be some kind of scent that a company wants to use as a source identifier or indicator for their product. For example, there is a cherry scent for synthetic lubricants that is registered in the US-or one of my favorites for retail store services featuring jewelry, diamond jewelry, gemstone jewelry, etc. is described as: “The mark consists of the scent of chocolate.” Diamonds and chocolate, brilliant!

Taste

Taste can also be registered as a mark, but describing taste can be difficult because sometimes it is a challenge to actually distinguish between the flavor of the product and something that is connected to the product but not necessarily its own natural flavor.

The famous example is the pharmaceutical company Eli Lilly’s attempt to register the taste of artificial strawberries in the EU. The application was rejected (case R 120/2001-2) because: “Any manufacturer…is entitled to add the flavor of artificial strawberries to those products for the purpose of disguising any unpleasant taste that they might otherwise have or simply for the purpose of making them pleasant to taste… Moreover, the taste is unlikely to be perceived by consumers as a trademark; they are far more likely to assume that it is intended to disguise the unpleasant taste of the product…”

Another challenge is whether taste can act as a trademark (indicators of source) because (usually) consumers only taste goods after purchase, as opposed to before and during the commercial transaction.

Touch

When a touch or “tactile” trademark is granted, it can be either the product itself or its packaging. For example, the packaging may have some kind of particular sensation to the touch which is distinguishable from others.

New Developments in Nontraditional Marks

While considered and used throughout the world, non-traditional trademarks were historically difficult to obtain in the European Union (European Union Intellectual Property Office) because a graphical representation of the product had to be included in the application. This would obviously be difficult to do with a perfume or a non-musical sound. Beginning in October of 2017 that will no longer be the case; applicants will be able to protect sound, color, shape, and movement without the requirement of a graphical representation. Instead, the standard will be whether or not the mark enables the public and relevant authorities to determine the clear and precise subject matter.

With the digitalization and constant technological progress of society, new and interesting trademark requests will continue to appear and challenge existing definitions and requirements. We at W. R. Samuels Law will continue to keep our ears pressed to the ground in order to detect new trends in trademark law before they have an impact on our clients. For more information, contact us.

Bill Samuels is Program Chair of the Intellectual Property Law Section Annual Meeting on January 24, 2017, at the New York Hilton Midtown, NYC. Topics will include IP issues in social media, data and privacy concerns, design protections, IP litigation, and damages, as well as a review of IP cases in 2016 and what to watch for in 2017. For more information or to attend, go to