Non-Traditional Trademarks - AIPF Presentation January 2012

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Experience is our trademark. Trademark is our experience®

Non-Traditional Trademark ProtectionIn the United States

© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

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The power of non-traditional trademarks

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Why the increase in number of non-traditional trademarks?

•Brands investing in more creative ways to differentiate themselves from competition

•Increasingly competitive marketplace for customer loyalty and dollars

•As more brands recognize the untraditional ways consumers identify their products, they of course want to protect their goodwilla and their investment

•Brands recognized increasingly as assets; trademark portfolios growing as result

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History of Non-Traditional trademarks

Color was the leader in non-traditional trademarks

•Pink fiberglass insulation• In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985)

•Supreme Court clarified the requirements for protecting color in 1995• Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 115 S.Ct.

1300, 1304, 131 L.Ed.2d 248 (1995)• green-gold color for the dry cleaning pads found protectable• color protectable so long as it was not functional and acquired

distinctiveness

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Non-Traditional trademarks today

• Color

• Sound

• Motion

• Texture

• Smell

• Product shapes

• Product packaging

• Store displays

• Taste?

• ????

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Services: entertainment services in the nature of baseball games and exhibitions

The drawing is a two-dimensional representation of the mark, which consists of the design elements and color combinations appearing on a three-dimensional baseball

uniform worn by players in applicant's games and exhibitions. The uniform is

white with navy blue pinstripes, the colors are a feature of the mark.

Goods: Candy Mints

The mark consists of a configuration of a rectangular tin

container with a lid, with a red border around the outer perimeter

of the lid of the tin.

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Goods: Jewelry and other goods and services

Goods: computers

The mark consists of the configuration of a computer, including a flat, roughly triangular shaped stand, a generally flat case having

rounded corners with a thin rectangular disc drive on the side, and a rectangular monitor

screen within a framing case having a wide lower border. Within the stand appears a hole depicted

by concentric circles. The monitor screen, disc drive on the side of the computer and concentric

circles in the stand representing a hole are depicted in dotted lines to show the location of

the mark and are not part of the mark.

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Services: Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and

television broadcasts and the global communications network

The mark consists of the color blue used on the artifical turf in the stadium. The matter

shown in broken lines on the drawing shows positioning of the mark and is not claimed as

a feature of the mark..

Goods: board game

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Benefits of Registration

Same benefits as any other trademark(especially if on the Principal Register)

• Use ®• Exclusive right to use the mark in the U.S. on the goods or

services• Jurisdiction to file suit in U.S. District Court• Seek treble damages• Creation of a tangible asset• Record the registration with Customs and Border Protection

– https://apps.cbp.gov/e-recordations/• Prima facie evidence of validity• Constructive notice throughout United States

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U.S. Registration of Non-Traditional Marks

• Must meet normal registration requirements– Must be distinctive– Must serve as an indicator of source– Need proper drawing (except for sounds, color, etc)– Need proper specimen of use

• Product shape, color, scent and flavor can never be inherently distinctive

• Principal Register v. Supplemental Register– Burden for acquired distinctiveness may be significant– Acquired distinctiveness means that the mark has been used to

such an extent that despite originally being weak or descriptive it has come to identify the source of the goods or services

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Registration of Color Marks

Color by itself can never be inherently distinctive– Qualitex Co. v. Jacobson Products, Inc., 514 U.S. 159,

34 USPQ2d 1161 (1995) – prove acquired distinctiveness or supplemental

register– to be registered, color must not be functional– drawing must indicate where the color is used

Color may be for part of the product, or for the entire product or service– See,e.g.: Wolf Applicance, Inc. v. Viking Range Corp.,

686 F.Supp. 2d 878 (W.D. Wis. Feb. 11, 2010) – Plaintiff successfully enjoined an infringer from using

red knobs

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Examples of Registered Color Marks

UPS (United Parcel Service)• Reg. 2901090 (Principal Reg. – acquired distinctiveness)• Services: Transportation and delivery of personal property by air

and motor vehicle• 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. The drawing is lined for the color brown.

Tiffany and Company• Reg. 2359351 (Principal Reg. – acquired distinctiveness)• Registered for a variety of goods and services• The mark consists of a shade of blue often referred to as robin's-

egg blue which is used on boxes. The matter shown in broken lines represents boxes of various sizes and serves to show positioning of the mark. No claim is made to shape of the boxes.

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Registration of Sound Marks

• No drawing required• Need detailed description with words or notes• Specimen must demonstrate use of sound in connection with the goods

or services• When goods make sound in the normal course of operation, the sound

cannot be inherently distinctive– In re Vertex Group LLC, 89 USPQ2d 1694 (TTAB 2009)– sound was made by an alarm

Examples:• The “sound of an oscillating humming buzz created by combining feedback from a

microphone with a projector motor sound” is registered for toy swords.– Yes, that is the sound of a Lightsaber®

• Looney Tunes theme song (The mark consists of thirty (30) musical notes comprising the notes BFat3, EFlat4, D4, C4, BFlat3, G3, BFlat3, EFlat4, EFlat4, D4, C4, DFlat4, D4, D4, D4, BFlat3, C4, BFlat3, D4, D4, BFlat3, C4, G3, G3, BFlat3, B3, C4, D4, EFlat4 and G4. The mark consists of the Merrie Melodies Theme Song.)

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Registration of Smell/Scent Trademarks

Scent can never be inherently distinctive

Drawing of the mark not necessary

Description should be specific

Physical specimen that contains the scent is necessary

Examples:• Reg. 3140700: A “peppermint scent or fragrance”

is registered for office supplies (Supplemental Register)• Reg. 2463044: A “cherry scent” is registered for synthetic

lubricants for high performance racing and recreational vehicles (Principal Register with acquired distinctiveness)

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Motion Trademarks

• Drawing can depict up to five frames• Need a detailed description• Need proper specimen showing entire motion [TMEP §904.03(l)]– Can be a video clip, series of still photos or screen shots– can now upload multimedia files via uspto.gov

Reg. 2793439: The mark consists of the unique motion in which the door of a vehicle is opened. The doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position.

Reg. 3786433: The mark consists of a hand poised over an open yellow pages book with two fingers pointing downward. The hand is depicted in the colors of the gay pride flag, i.e., red, orange, yellow, green, blue, and lavender moving from top to bottom. An open yellow book bordered in black is at the bottom. The interior of the rectangles is white. The design is bordered in black. The mark includes motion of fingers walking over an open book. The three points in the motion are shown in the freeze frames.

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Product Shapes

• Shape claimed must be distinctive• Shape claimed must be nonfunctional

Reg. 3457218 (Principal Reg. – acquired distinctiveness)Goods: mobile digital electronic devices…The mark consists of the configuration of a rectangular

handheld mobile digital electronic device with rounded corners. The matter shown in broken lines is not part of the mark

Reg. 3352085 (Principal Reg. - acquired distinctiveness)Goods: automobiles…The mark consists of the configuration of an automobile. The

mark is three-dimensional. Broken lines indicate matter not claimed as part of the mark.

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Product Features

Reg. 1139254 (Principal Reg.)Goods: pants, jackets, shirts, and shorts

Reg. 3930281 (Supplemental Reg.)Goods: CandyThe mark consists of the configuration of confectionery packaging consisting of a long rectangle sheet with three dimensional hemispherical shaped dots of edible confections in three (3) rows of sixteen (16) spaced equally apart.

Reg. 2924936 (Principal Reg. – acquired distinctiveness)Goods: automobiles and SUVsThe mark consists of three dimensional configuration of the front grille of an automobile, comprising seven vertical slots with two round headlight openings which are shown for position and are not a feature of the mark.

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Product Packaging

Reg. 3326573 (Principal Reg.)Goods: Clothing The mark consists of trade dress product packaging in

the form of a three dimensional rectangular cigarette box with a flip top opening for the packaging of clothing.

Reg. 3875028 (Principal Reg.)Goods: non alcoholic beveragesThe mark consists of a punch out design of a bull as the

opening in the configuration of a blue pull tab on the top of a can. The configuration and placement of the pull tab are not claimed as features of the mark

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Store/Building Designs

Examples:

Reg. 2889384Services include: Entertainment services in the form of professional baseball games providing sports information by means of digital transmission

Reg. 4021593Services: Retail store services…The mark consists of the distinctive design and layout of a retail store comprised of a cube-shaped building constructed almost exclusively of transparent glass, with transparent glass walls and roof, transparent glass double doors and a transparent glass awning and featuring a pendant of an apple with a bite removed suspended from the ceiling.

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Store/Building Designs (cont.)

Reg. 3195978

Services: hotel, casino, …The mark consists of trade dress consisting of a three-dimensional building with concave facade, a curved roofline sweeping up toward the left top corner when viewed from the front and the word "WYNN" in a stylized script in the top left corner. The horizontal lining does not indicate color, but is a feature of the trade dress.

Reg. 3244427

Services: Retail home improvement storesThe mark consists of trade dress of an orange stripe that is located around the perimeter of the exterior of the one-story buildings in which the applicant renders its retail home improvement services. The dotted lines in the drawing are merely representative of the shape of the exterior of the building to which the applicant's trade dress is applied and is intended to show the position of the mark on the building and is not part of the mark.

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Characters/Mascots/Costumes

Reg. 3257846 (Principal Register)

Services: lottery services

The mark consists of a frontal image of a three dimensional character appearing to be partly human and partly lizard-like.


Services: tax preparation

The drawing is a two-dimensional representation of the mark, which consists of the nonfunctional elements of a three dimensional Statue of Liberty costume.

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Uniforms

Reg. 2159865 (Principal register – acquired distinctiveness)

Services: delivery of personal property by air, rail, boat and motor vehicle

The mark consists of the color brown which is applied to the clothing. The matter shown in the drawing in broken lines serves to show positioning of the mark and no claim is made to the configuration of the uniform.


Services: television broadcasting and transmission services, cable television broadcasting services, satellite transmission services, broadcasting television programs via a global computer network and video-on-demand transmission services

The mark consists of a three dimensional bunny costume worn by a woman. The costume includes a corseted bodice, bunny ears worn on the head, a bunny tail on the back of the bodice, a name tag on the front of the bodice, wrist cuffs and a bow tie collar. The dotted outline of a woman is not a part of the mark but is merely intended to show the position of the costume.

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Texture Marks

• Only recently registered

• Potential functionality issues– Application to register raised bumps on a bottled

was refused where advertisements touted the functionality of the bumps

Examples:

Reg. 3155702: “velvet textured covering on the surface of a bottle of wine” is registered for wine (Principal Register)

Reg. 3896100: leather textured covering is registered for wine (Principal Register)

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Lighting Displays• Only recently registered• Potential functionality issues

Examples:


Services: Promoting public awareness of the importance of the early detection of breast cancer

The mark consists of a white capitol building illuminated in different shades of pink and white lighting, with green trees in the foreground and black shadowing all around.

Reg. 3697306 (Supplemental Register)

Services: hotel services

The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two green lights is evenly placed on columns to the right and left of the entryway and direct the green lighting downward thereby casting a green shadow down the length of the column; while the other set of two green lights is evenly placed on the building wall above the entryway and direct the green lighting upwards, casting a green shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark.

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Other Non-Traditional Trademarks

Reg. 2007624 (Principal Reg.)Services: restaurant servicesThe mark consists of goats on a roof of grass. The dotted lines in the drawing are intended to indicate the location of the mark and are not a feature of the mark.

Reg. 2710415 (Principal Reg.)Services: hotel services…“the live visual and motion elements of the The Peabody Duck March… 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.”

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Application Tips

• If acquired distinctiveness is likely to be necessary, “look for” advertising is often the most effective– Consumer surveys or statements may also be

valuable

• Conducting a clearance search may be extremely difficult– Consider all the ways that someone could describe

or depict something similar

• If initially allowed only on Supplemental Register, may wish to revisit in a few years to try claim of acquired distinctiveness

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Litigation

Maker’s Mark

• In 2010, the U.S. Dist. Ct. in the Western District of

Kentucky ruled that red dripping wax seal used to

bottle Maker’s Mark bourbon is a protected trademark

and enjoined Cuervo from use of red dripping wax.

• “The court considers the red dripping wax seal

inherently distinctive, because it is a unique mark used

in an unusual way to draw in the consumer.”

• Appeal pending in 6th Circuit

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Litigation

Toilet paper design

• Georgia-Pacific Consumer Products v. Kimberly-Clark Corporation, 647 F.3d 723, 99 U.S.P.Q.2d 1538 (Jul. 28, 2011)

• Seventh Circuit affirmed the District Court’s finding of no protectable trademark rights in the Plaintiff’s designs, even though the designs were the subject of incontestable trademark registrations.

• Plaintiff owned several utility patents for the designs.• The presence of numerous alternative designs did not

render the QDD design nonfunctional or incidental.

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Litigation

Louboutin’s red sole• Christian Louboutin S.A. v. Yves Saint Laurent America,

Inc., 778 F.Supp.2d 445 (S.D.N.Y. 2011)• Court found the Louboutin’s rights minimal at best• “the court finds that Louboutin is unlikely to be able to

prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”

• Appeal pending in 2nd Circuit• Reg. No. 3361597: The mark consists of a lacquered red

sole on footwear. The dotted lines are not part of the mark but are intended only to show placement of the mark.

• What if registration more narrowly defined?

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What does the future hold?

Flavor?

• Potentially – as long as it is not functional

• None that I am aware of to date

• Orange flavor for a pharmaceutical pill was refused registration as having a function (making it taste better than other pills)

– In re Lorillard Licensing Company, LLC, 99 USPQ2d 1312 (TTAB 2011)

More motion/animation/web?

Other?

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Conclusion

When used and registered properly,

non-traditional trademarks

can provide great value to brands!

DISCLAIMER:

Content is not legal advice.

© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

Non-Traditional Trademarks - AIPF Presentation January 2012

Business

services goods

entertainment services

color combinations

color blue

services jurisdiction

protectable color protectable

rectangular disc drive

rectangular monitor