Understanding non-traditional trademark protection

Have you ever wondered whether trademark protection is available for aspects of a product, such as its colour or configuration? How about a unique sound, scent or feel? Protectable trademark subject matter extends far beyond what many typically understand to be trademarks, such as words, logos or graphic designs. Trademarks can include any word, name, symbol or device, or any combination that identifies and uniquely distinguishes goods from those manufactured and sold by others. Unsurprisingly, would-be owners of unique identifiers have tried and successfully obtained trademark protection for several types of non-traditional mark.

Types of non-traditional trademark

Non-traditional trademarks are types of trademark that did not belong to any pre-existing category, but still act as source identifiers. Non-traditional marks present a bigger challenge existing as a trademark and gaining registration. Distinctiveness must be established for a non-traditional mark to function as a trademark and be registerable. Such trademarks must not be functional.

Product configuration

Perhaps the most common types of non-traditional trademark are those for product configurations. It is well-settled that non-functional elements of a product’s configuration can function as a trademark, also referred to as trade dress. Trade dress may also refer to product packaging, which is better designated as a type of traditional trademark. Trademarks in product configuration must always acquire distinctiveness through exclusive use for a period to function as a mark. An example of trade dress that has been registered is the ornamental two-stripe design on the midsole of a shoe, the design of the toe cap, and the design of the multi-layered toe bumper featuring diamonds and line patterns.

Architecture

Architecture is another type of configuration (trade dress) that may be a protectable trademark. The trademarks may be the total image or impression of a business and may include the shape of the exterior of a business or portions thereof. It may also be a floorplan, or such things as a distinctive festive eating atmosphere with interior dining and patio areas decorated with artefacts and bright colours. One example of a trademark in architecture is for a three-dimensional (3D) configuration of an exterior roof arc and a 3D configuration of an awning design on a building.

Shapes and 3D images

Shapes and 3D images can also function as trademarks. In certain instances, 3D images may be registerable without showing acquired distinctiveness. However, 3D marks that are part of a product configuration are never inherently distinctive and must acquire distinctiveness. Examples include the shape of Lego-brand toy figures and Toblerone, or a 3D spray of water issuing from the rear of a jet-propelled watercraft.

Position marks

Position marks are trademarks consisting of the specific way in which a mark is placed or affixed on the product. Like all trademarks, for a position mark to function as a trademark, it must be distinctive. Position marks relate to the particular shape and its location on a product. One example of a registered position mark is in connection with a figurative element placed on the outer surface of the upper part of a shoe.

Motion or moving-image marks

A moving image can function as a trademark when it distinctly identifies the source of goods or services. Moving-image marks typically protect a repetitive motion of a short duration. Such marks may be easier to secure in connection with a service, due to the difficulties affixing movement to a static product, but are not limited to services. An example of a moving-image or motion mark is for the unique motion in which Lamborghini vehicle doors are opened – the doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position.

Hashtags

Hashtags are words or phrases that are proceeded by the hash sigh ‘#’ and are used in connection with social media to identify digital content on a specific topic. Hashtags can be registerable when they function as a source identifier, but the use of a hashtag does not necessarily render a mark protectible. Hashtag marks are evaluated for distinctiveness in the same manner as traditional marks. Accordingly, they may be inherently distinctive. A hashtag combined with wording that is generic or merely descriptive does not elevate the combination to a protectable mark. An example of a hashtag registered mark is #HOWDOYOUKFC for restaurant services.

Colour

The colour of a product, part of a product or its packaging may also be protected as a trademark. Colour marks are particularly desirable because they can be an effective deterrent to a competitor’s use of confusingly similar products. Notwithstanding that colours can function as trademarks, a single colour of a product or packaging can never be inherently distinctive and must always acquire distinctiveness to be protectable. Examples are the brown colour of UPS trucks, pink for Owens-Corning fibreglass and the yellow of Post-It notes.

Sound

Sounds may also be protectable as trademarks when the sound is arbitrary, unique or distinctive. Sound marks may be a series of tones or musical notes, with or without words. Wording accompanied by music can also qualify as a sound mark. To function as a trademark, sound must attach to the mind of the listener and be awakened upon later hearing. Examples of sounds that have been registered as trademarks are Homer Simpson’s ‘D’Oh’ or NBC’s chime sound.

Touch and texture

The feel or texture of a product or its packaging can be protectable as a trademark. Touch marks cover the way that a particular item or packaging of an item feels. Touch marks that are part of a product can never be inherently distinctive and require acquired distinctiveness. Touch marks that are part of a products packaging, on the other hand, may be inherently distinctive. One example was registered for a velvet-textured covering on the surface of a wine bottle.

Scent

Scents may also be protectable as trademarks. It is relatively difficult for scent to be protectable because scents are usually mere attributes of a product and do not immediately identify source. An example of a registered scent trademark is for Play-Doh. The scent is described as a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a wheat-based dough.

Taste

Taste, in an appropriate case, may also be protectable as a trademark. While there have been attempts to register taste, to date it does not appear that any mark has been registered exclusively for taste. The difficulty with taste marks lies in the fact that the taste or flavour of a product is presumed to be a characteristic of certain goods. As a result, it cannot be registered without showing acquired distinctiveness. A further difficulty is that, typically, taste is not appreciated by a consumer until after the item has been purchased, so it does not function as a mark.

Pre-registration and registration considerations

Defining the mark

Non-traditional marks present unique challenges in providing precise definitions of the subject matter. Imprecise definitions may result in greater breadth of the mark than intended and may ensnare functional elements that render the proposed mark unprotectable. Consider an applicant seeking registration for ‘a knurl pattern on a gun sight’. Such patterns are used to provide a gripping surface to allow easier adjustment of the sight. Because a knurl pattern has a function, the description of the mark is too broad and would not be protectable. Had the applicant precisely defined the mark as ‘a knurl pattern comprising a repeating daisy design on a gun sight’, the mark may be protectable. In this case, provided that the daisy design provides no functionality beyond that of any kind of knurl pattern, the mark could be capable of identifying a source and therefore be protectable.

Defining a mark that is a position mark entails identifying both the design and the design’s position on the product or packaging. Moving-image marks require a description of the motion that is a repetitive motion of short duration. A proper definition of a hashtag mark should include the overall context and placement of the hash itself within the mark. The hash symbol may also be construed as a number symbol, and when used as such the marks may or may not be protectable hashtag marks.

Precisely defining a colour mark can be done in different ways. In all cases, the definition of a colour mark should describe the colour, where the colours appear and how they are used as a mark.

Sound marks must include a musical score sheet. Touch, scent, taste and non-visual sound marks can be difficult to describe, as they are subjective and individual perceptions may differ. Nonetheless, there is no absolute prohibition in seeking to register them.

Searching non-traditional marks

Before adopting and using a trademark it is prudent to conduct a search.

Unlike with traditional marks, there are no consistent search terms or codes available for searching non-traditional marks in trademark search databases. Thus, there is no practical way to consistently search for such marks. Often, the description of a non-traditional mark includes the category in the description and searching may be conducted by adding the category to any search string. For example, search strings may include ‘the scent’ or ‘the texture of a product’.

Non-traditional marks must be distinctive

As with traditional marks, non-traditional marks can only be protectable if they are distinctive, that is, they must identify the source of the goods or services. A mark is distinctive if it is:

• inherently distinctive; or
• has acquired distinctiveness.

Many types of non-traditional mark are deemed not to be inherently distinctive. These include product configuration, shapes or 3D marks, texture, scent and taste and flavour. Most colour marks are not inherently distinctive because they do not immediately identify a single source. However, multicolour displays may be inherently distinctive when they are used on product packaging and in a manner that a consumer perceives the combination and arrangement of colours as indicating source.

Functionality

The doctrine of functionality applies to every mark and particularly for non-traditional marks. Functional marks are incapable of being protected under trademark law, whether or not the mark is inherently distinctive or has acquired distinctiveness. Functionality prevents useful product features being monopolised under the guise of a trademark. In general there are two types of functionality, and each precludes the ability to protect a mark:

• utilitarian; and
• aesthetic.

Utilitarian functionality is where the mark sought to be protected is essential to the use or purpose of the product, or if it affects the cost or quality of the product. Protection of utilitarian features is the exclusive province of the utility patent laws that allow protection over useful features for a limited period. Such laws cannot be circumvented by trademark rights that go on so long as the mark remains in use. Utilitarian functionality is often implicated with product configuration, architecture, shape, hashtag, touch and moving-image marks. The items sought to be protected by these marks are usually objects that have some general use or are incorporated into items that are useful. Colour marks may also possess utilitarian functionality, such as when the colour is used as part of a coding scheme to distinguish items. Scent and taste marks may also have utilitarian functionality because they often result from an inherent attribute of the goods.

The exclusivity afforded by the patent design laws can, however, be used to prevent others from using a mark so that the mark owner can show a long period of exclusivity to acquire distinctiveness.

Aesthetic functionality relates to how the appearance of the product contributes to consumer demand and provides other competitive advantages. It precludes protection as a mark if it places a competitor at a significant non-reputation-related disadvantage. Aesthetic functionality is often applied to product configuration, shape, position, colour and moving-image marks.

Drawings

Drawing rules apply to most non-traditional marks. Product configuration, architecture, shape, position, hashtag, colour and moving-image marks all require a drawing. A colour mark requires that the drawing be shown in the applied-for colour and the position of the colour must be identified.

There are some special rules for drawings for certain types of non-traditional mark. Shape or 3D marks should present a single rendition of the mark in three dimensions. Motion marks should include a drawing that depicts a single point in the movement, or the drawing can be a square drawing that contains up to five freeze-frames showing various points of the movement.

Other types of non-traditional mark are exempt from the drawing requirement. Marks consisting solely of sound, scent or taste are not amenable to a drawing and therefore require none for registration. Drawings are not required when the applied-for mark is completely non-visual, but the applicant must submit a detailed description and an audio reproduction of a sound mark should be submitted.

Specimens

For all visual marks, the specimen must match the description in the application and are usually straightforward. For non-visual marks, sound, scent and taste, specimens are also required. Specimens for sound must contain a sufficient portion of the audio or video content to show how the mark is used. Specimens required for scent and taste marks are the goods themselves, containing the scent or taste and matching the detailed description.

Enforcement issues unique to non-traditional marks

Non-traditional trademarks come with some unique enforcement issues. Because trademarks are not required to be registered to assert them in the United States, a non-traditional trademark owner has a choice to make. When anticipating asserting violation of a mark, now or in the future, an owner of an unregistered mark must decide whether to first seek registration of the mark or to assert the mark as a common law mark. The choice is fraught with risk either way. If a trademark owner tries to obtain a registration and is refused, this can seriously undermine their ability to assert the mark if it is infringed in common law. If a registration is obtained, however, the mark will be presumed valid in an enforcement proceeding. If the mark owner decides to assert the mark as a common law mark, there is no presumption of validity and the owner must prove that it functions as a trademark and is protectable. This can be challenging when dealing with a federal district court that often has less experience than the Trademark Office.

Obtaining registration for a non-traditional mark can be particularly useful in protecting infringing marks on seller platforms such as Amazon, eBay or Alibaba. All platform providers allow a trademark owner to seek to take down a product listing that contains infringing marks. Platform providers are reluctant to take down infringements of common law marks, but generally act when a violation of a registered mark can be proven.

Comment

Non-traditional marks have taken on a greater life than in the past. Creative mark owners can and should seek to obtain protection if they are able to demonstrate that their mark, whether visual or non-visual, is both distinctive and non-functional.