Non-traditional marks

Businesses are increasingly innovative in the ways they brand themselves. No longer are businesses limited to traditional logos and slogans as source-identifying marks. Non-traditional marks eligible for protection under the Lanham Act include motions, sounds, colors, textures, scents, flavors, store designs, product packaging design, and anything else that a potential consumer experiences and associates with the particular company and brand. The key is if the “indicia” is source-identifying to those encountering it.

Recognizable ringtones are great brand identifiers with the cell phone age in which we live. In a crowded place, I hear the familiar robotic ringtone and instantly know the user owns an Android phone. The tone is advertising the brand every time a phone rings or is booted up. Marketing at its best, isn’t it?

With some research, a novice may be able to put together a decent trademark application for a trade name, logo or slogan. However, trademark applications for non-traditional marks present unique challenges even for experienced business attorneys. For example:

  • How do you submit drawings for motions or colors mark applications?
  • How do you establish secondary meaning has been acquired?
  • How do you establish the mark is not functional (colors, flavors and other design elements)?

An experienced trademark attorney can articulate a description of both the mark and the good/services that will ease registration and facilitate enforcement of the mark going forward. The goal is to establish a combination of unique and non-functional design elements that qualifies for trademark registration. It is the art of saying more by saying less.

In motion marks, the applicant can submit up to five freeze frames to depict the mark and its commercial impression. However, 3D marks usually require a petition to waive the single drawing requirement if more than one image is required to adequately convey the 3D shapes sought to be protected.

In the case of scent and textures, an electronic submission would not adequately convey the mark. In these situations, an actual specimen must be mailed to the USPTO for examination. The description takes on increased importance in this context. The applicant may also need to use a TEAS rather than TEAS-plus application and fee structure.

Since so many products are now sold over the internet, webpages can be used as a specimen of the mark as used in commerce if:

  1. The webpage contains a picture or description of the product, and
  2. Shows the mark in association with the product, and
  3. Contains ordering information.

Evidence of distinctiveness requires creativity. Product packaging can be inherently distinctive but product design always requires a showing of distinctiveness.

One mistake commonly made is submission of material for a specimen that describes functional features of the product design. This is fatal to these features being claimed as identifying ornamental (unique) features.

Trademark protection not only requires selecting and registering a mark, but also consistent and proper use of the mark. It is important that advertising not describe or advertise functional product elements. This could be used by a competitor to invalidate or cancel a registration for a mark. It is also important that the brand mark be used as an adjective, never a noun or a verb. Xerox brand copier. Not, a Xerox copy or Xerox machine. Google search engine, not I googled it.

Tracy Jong Law Firm is an experienced intellectual property firm guiding clients through branding issues concerning trademark, patent, and copyright protection strategies.

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