IP: Nontraditional Trademarks

Recent research indicates that consumer reactions to nontraditional trademarks, such as a product's unique shape, or its distinctive appearance, are exceedingly strong and may create more zealous consumer loyalty than traditional marks, such as brand names and logos, alone. In addition to shape and appearance, nontraditional trademarks provide protection for such attributes as colors, sounds, tactile impressions, and even flavors and scents. Although they are generally more difficult to register and enforce than traditional word and logo trademarks, nontraditional trademarks can help companies protect their products' unique attributes.

By definition, a trademark indicates source and identifies and distinguishes the products of one entity from others' products. This definition allows that any subject matter, perceived by one or more of the five senses, not just words and logos, may serve as a trademark as long as it identifies, distinguishes and indicates source. Many nontraditional trademarks, such as the appearance of an Apple iPod or a Heinz ketchup bottle, the color of a Tiffany's box, or the sound of the Intel chimes or of McDonalds' "I'm lovin' it" jingle, have indeed become instantly recognizable as source identifiers, even without reference to the respective word or logo trademarks.

Nontraditional trademarks, however, are often met with skepticism by the courts and the U.S. Patent and Trademark Office. So additional organizational commitment and coordination between a company's business people and its trademark counsel are often required to identify and develop protectable nontraditional marks.

Indeed, a company should consider several factors before investing in a nontraditional trademark. Of course, a company must first ensure that its adoption and use of the nontraditional trademark will not infringe another company's existing rights. Additionally, any attempt to build trademark rights in a product feature will fail if the product feature is "functional." Functional features are features that are essential to the use or purpose of the product or that affect the cost or quality of the product, or that, if protected as trademarks, would put competitors at a significant "non-reputation-related" disadvantage. For example, scent is a functional feature when used in connection with air fresheners, but plumeria scented yarn, bubble-gum scented industrial metal working fluid, and cherry-scented auto exhaust have been awarded trademark registrations. Meanwhile, a court has held the color black functional for outboard motors, while Boise State University's exclusive right to blue football field turf is protected with a federal trademark registration.

In addition, courts will not enforce, and the USPTO will not register, certain nontraditional trademarks, including product shapes, colors, scents and probably flavor marks, without proof that the asserted nontraditional mark actually indicates source to consumers. Hard evidence must demonstrate that these nontraditional marks have acquired the distinctiveness necessary to function as trademarks. Trademark owners can proactively address this issue. For example, a company's advertising can focus consumer attention on the nontraditional trademark with "look for" advertising. This advertising can be blatant, or it can be subtle, such as United Parcel Service's "What can brown do for you?" advertisements which helped cement the color brown as a distinctive source identifier for UPS' services. Evidence such as consumer perception surveys, long-standing use of the nontraditional mark, overall advertising expenses and sales revenue relating to the nontraditional mark can also demonstrate that the mark has acquired distinctiveness.

The benefits of obtaining a federal registration for a nontraditional mark are substantial, including presumptions of nationwide exclusivity, prima facie validity and the eventual opportunity to obtain "incontestable" status, yet a registration may provide little certainty that an action to enforce a nontraditional mark will be successful. As with traditional word or logo marks, a trademark owner must prove a likelihood of confusion exists between its mark and the infringing mark to successfully enforce the nontraditional mark. Proving a likelihood of confusion between competing scent marks or competing flavor marks may prove relatively complex, however.

While nontraditional marks can be relatively difficult to register and enforce, the difficulties and uncertainties can be minimized with careful selection, planning and commitment. Moreover, nontraditional trademarks can provide an important means to protect a company's distinctive product features and an important branding tool to further connect with consumers.

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Christopher Dolan

Christopher Dolan is a shareholder in Brinks Hofer Gilson & Lione’s Chicago office and a member of its Trademark Practice Group. His practice focuses on...

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