June 28, 2017

Thinking Outside the Box: Sensible Strategies for Non-Traditional

Trademarks

Catherine Stockell

Of Counsel

Irina Lyapis

Associate

Trademark & Copyright Webinar Series

Overview

Materials available post-webinar on fr.com/webinars

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Agenda

Today, we will explore how companies can expand their

branding by using Non-Traditional Trademarks as an

effective means to reach consumers and market their

goods and services in today's competitive and crowded

marketplace:

• Registration Requirements for Non-Traditional

Trademarks

• Application of Secondary Meaning Where Required

• Developing New Non-Traditional Trademarks

• Considerations for Marketing and Advertising

Departments

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Traditional Marks

We typically think of a trademark or service mark is a two-

dimensional word, phrase, or design used to identify a

product or service.

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Non-Traditional Marks

15 U.S.C.A. § 1127, defines a trademark as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes the goods of a person from those of another and indicates their source

Non-traditional examples include:

• Sound

• Scent

• Taste/Flavor

• Color

• Motion

• Texture

• Product Design

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Registration Requirements for Non-Traditional Trademarks

Sound Marks – What’s Needed for Registration

• No drawing required

• Detailed description, including musical score, words, lyrics, instruments, etc.

• Audio reproduction of sound only; used to supplement description

• Specimen of sound mark, such as used in an ad

• Proof of Acquired Distinctiveness under Section 2(f) not required, except: commonplace sounds that occur in their normal course of operation (e.g., cell phone rings, emergency alarms, and smoke alarms)

• In re Vertex Group LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) (“[W]e find it appropriate to follow the Supreme Court's rule regarding color and product design, for certain types of sound marks” when they are not inherently distinctive)

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Sound Marks – Examples

Examples of sound marks are accessible on the USPTO’s website:

https://www.uspto.gov/trademark/soundmrks/trademark-sound-mark-examples

• Homer Simpson’s “D’OH!”

• Reg. No. 3,411,881

• Law & Order’s “Chung Chung”

• Reg. No. 76,641,094

• Pillsbury’s Dough Boy’s Giggle

• Reg. No. 3,411,881

• Yahoo’s “YAHOO”

• Reg. No. 2,442,140

• AFLAC’s Quacking Duck

• Reg. No. 2,607,415

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Sound Mark – Case Study

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VOYA VOYA Sound Mark, Reg. No. 5,005,887• Mark

• No requirement for secondary meaning since the VOYA VOYA sound

mark does not consist of common place sounds

• Textual description of the sound mark must be precise and include a

musical score sheet for musical sounds

• Specimen of sound mark must match the textual description, which

can be difficult and subject to interpretation

Scent Marks – What’s Needed for Registration

• No drawing required

• Only registrable if used in nonfunctional manner, e.g.,

plumeria blossoms scent for “sewing thread and

embroidery yarn,” In re Clarke, 17 USPQ2d 1238 (TTAB

1990)

• Proof of Acquired Distinctiveness under Section 2(f)

required in ALL cases, even where there is no functional

relationship; extensive evidence of secondary meaning

required

• Detailed written description of the fragrance or smell

• A specimen must be mailed to the USPTO, i.e., the

goods incorporating the scent

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Scent Marks – Example

• Reg. 4,754,435, by Grendene S. A., a Brazilian corporation

• Bubble gum scent for shoes, sandals, flip flops, and accessories

• Overcame refusal based on non-functional application to sandals

and extensive evidence of secondary meaning

• Specimen of bubble gum scented sandal mailed to the USPTO

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Scent Mark – Case Study

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PLAY-DOH Scent Mark, App. Ser. No. 87,335,817

• Office Action Issued

• A feature of a product design can never be inherently distinctive as a

matter of law because consumers are aware that such designs are

intended to render the goods more useful or appealing

• Section 2(f) Claim Insufficient

• Claim based merely on 5 years use insufficient, especially since

modeling compounds are commonly scented

• Typical Section 2(f) evidence required:

• length and exclusivity of use

• type, expense, and amount of advertising

• sales success

• unsolicited media coverage

• consumer studies (linking the name to the source)

Scent Mark – Case Study (cont.)

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PLAY-DOH Scent Mark, App. Ser. No. 87,335,817

• In addition to Section 2(f), the Examiner requested additional

information respecting functional aspects of the scent

• Has the scent mark been the subject of a patent?

• Are there equally efficient/competitive alternative compositions

available?

• Are the scent ingredients naturally occurring?

• Are there functional advantages?

• Better hydration, pliability?

• More easily dyed, better consistency in texture?

• Does the scent change with color?

• The applicant was also required to submit advertising, promotional,

and/or materials concerning the mark, specifically promoting or

referencing the scent in the mark

Taste/Flavor Marks – Case Study

• Nine flavor applications were filed for pharmaceuticals, beverages – all

abandoned

• The functionality doctrine is a significant hurdle

• In re N.V. Organon, 79 U.S.P.Q.2d 1639 (TTAB 2006), the TTAB denied a

pharmaceutical company a trademark for orange flavor of its pills holding that the

orange flavor performs a utilitarian function of making medicine with ‘a disagreeable

taste’ more palatable (Ser. No. 76,467,774)

• Also, although not raised, how does one describe a taste with

specificity when people interpret taste differently?

• Original Rainbow Cone, Inc. Reg. No. 1,623,869

• Description: The mark consists of an arcuate configuration of five flavors of

ice cream, namely, chocolate, strawberry, palmer house (new york cherry

with nuts), pistachio and orange sherbet, arranged from bottom to top, as it

is sold on a cone.

• Protection for both taste and configuration?

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Color Marks – What’s Needed for Registration

• A single color can be registered as a mark, provided that it (1) has acquired distinctiveness and (2) is not functional, Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).

• Acquired Distinctiveness: Level of proof required for acquired distinctiveness is substantial. For services, the showing also requires:

• Identification of the objects used in connection with the services on which the color is used, e.g., uniforms, delivery trucks, pens, stationery, packaging, etc.; and

• A showing of acquired distinctiveness as to each of those modes of use or objects

• Functionality: The color cannot possess a functional attribute or otherwise increase the appeal of a product (aesthetic functionality)

• The color pink held functional for antacid

• The color black held function for outboard motors

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Color Marks – What’s Needed for Registration (cont.)

• Description - must include the generic name of the color (Pantone Color

System), a claim that color is a feature of the mark, and a statement of

how the color is used and where it appears

• Specimen - a color photograph showing the color used as a mark

• Drawing – Very tricky and different for goods and services

• Goods: Drawing must depict color on the surface of the object, but

the outline of the object should be in broken lines

• If the color is applied to a number of goods similar in form and

function, you can submit a color drawing of a single good with

broken lines

• Services: If the color is used as a mark for services on objects that

would not be usually seen together (e.g., uniforms and store

awning), then the drawing should be a solid colored square with a

dotted peripheral outline

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Color Mark – Case Study

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UPS BROWN– Reg. Nos. 2,901,090; 2,159,865; 2,131,693

• All three registrations are for transportation

and delivery services

• UPS originally claimed it used brown as a

service mark as shown by a variety of items,

including trucks, uniforms, signage, pencils,

pens, stationery and watches

• Refused on grounds of lack of acquired

distinctiveness

• UPS submitted extensive evidence of

acquired distinctiveness, including hundreds

of customer testimonials

• Evidence only satisfied claims for the trucks

and uniforms

Color Mark – Case Study

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Louboutin RED SOLE - Reg. No. 3,361,597

• Registration was based on extensive evidence of acquired distinctiveness; application proceeded to registration without issue

• Louboutin tried to enforce the registration against YSL for monochromatic red shoes that included a red sole; YSL counterclaimed for cancellation on grounds the mark lacked distinctiveness or was merely ornamental

• Court of Appeals for the 2nd Circuit ruled Louboutin’sregistration valid but limited it to a lacquer red sole that contrasts with the shoe's upper portion; in other words, YSL’s all-red pair of heels with a red sole did not infringe Louboutin's trademark

• Moral: Color marks will be construed narrowly

Motion Marks – What’s Needed for Registration

• Motion marks can be inherently distinctive

• Drawing can depict one point in time or up to five freeze

frames, which ever best depicts the motion

• As with all non-traditional trademarks, a detailed

description of the mark is required since a static drawing

cannot depict motion

• Video specimen must show the entire repetitive motion,

e.g.:

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Motion Marks – Case Study

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Mindcite Bulb Motion Mark, App. Ser. No. 87,184,771

• Office Action issued on

discrepancies between the drawing

and the specimen, e.g.:

• The words “in cite” appear to be

flashing red in the specimen; in the

drawing, they are not flashing

• There are the limitations in

drawings of motion marks since

they cannot replicate all movement

(flashing) and cannot depict all

elements in five freeze frames

• The mark description complements

the drawing of a motion mark

Motion Marks – Case Study

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Gene Simmon’s Gesture, App. Ser. No. 87,482,739

• Gene Simmons, front man for KISS, applied to

register a hand gesture as shown on the right

• The application met with universal ridicule

based on Simmons’ claim of proprietary rights

in a version of an iconic “rock ‘n roll salute”

known as the “Hand Horns,” used as early as

1966 by the Beatles

• Application was abandoned on June 20, 2017

• Although Section 2(f) is not required, motion

marks must still be distinctive and function as

a mark under Section 1, 2, and 45 of the

Trademark Act

Touch Marks – What’s Needed for Registration

• Drawing: No drawing is required for touch marks, but

many are offered where the touch mark is part of product

packaging

• Specimen: The specimen must be mailed to the USPTO

so that the Examiner can touch and feel the mark

• Secondary Meaning: If the touch mark is part of product

design, it can never be inherently distinctive and

secondary meaning must be shown; if part of product

packaging, it is capable of inherent distinctiveness, Wal-

Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205

(2000)

• Functionality is an absolute bar to a touch mark

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Touch Mark – Case Study

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Velvet Touch Mark - Reg. No. 3,155,702

• American Wholesale Wine & Spirits, Inc. registered “a sensory, touch mark” for a velvet textured covering on the surface of a wine bottle

• Office Action refused registration in part on grounds the mark was not inherently distinctive product packaging

• Response successfully argued that the velvety encasement did not serve a utilitarian function since it covered the utilitarian glass bottle, and was inherently distinctive product packaging

• Relying on this case, David Family Group registered “a sensory, touch mark” for a leather covering on the surface of a bottle of wine, Reg. No. 3,896,100

Touch Mark – Case Study

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Louis Vuitton Epi Leather Mark – Reg. No. 2,263,903

• Louis Vuitton registered a “distinctive man-made

textured pattern utilized as a surface feature of

applicant's variously configured products.”

• An Office Action refused the mark on grounds

that it is not inherently distinctive because:

• It is well established that a design which covers

the entire surface of the goods or the packaging

for the goods, is merely ornamental and as such

does not function as a trademark

• LV was able to show secondary meaning based

on more than 10 years of use, its promotion of

the mark, sales figures, and advertising

expenses

Product Design – What’s Needed for Registration

• Secondary Meaning: If a mark consists of a three dimensional

product design, it can never be inherently distinctive and secondary

meaning must be shown, Wal-Mart Stores, Inc. v. Samara Brothers,

Inc., 529 U.S. 205 (2000)

• Functionality is key: A three-dimensional configuration of a product is

functional when the evidence shows that the design provides

identifiable utilitarian advantages to the user

• Description: Must indicate that the mark is a configuration of the

goods and describe in detail the features that applicant claims as its

mark

• Drawing: A single rendition of the mark in three dimensions

• Three-dimensional configurations can also be marks for services,

e.g., a building or a costume, so long as they are used in such a way

that it is perceived as a mark

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Product Design – Case Study

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Hershey’s Bar - Reg. No. 4,322,502

• Registration refused (1) functionality as an absolute bar since the scoring enables consumers to break the candy into bite-sized pieces, and (2) insufficient showing of acquired distinctiveness; both refusals were appealed to the TTAB

• Notwithstanding that scoring or segmenting candy bars serves a useful function, the TTAB overturned the Examiner, holding applicant:

• Does not seek to register a segmented rectangular candy bar of no particular design, but rather seeks to register a candy bar comprising all of the elements shown in the drawing namely, “twelve . . . equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle.”

• Submitted sufficient evidence of acquired distinctiveness, including extensive survey

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Application of Secondary Meaning

Secondary Meaning

• If a mark is not inherently distinctive, an applicant must demonstrate that it has acquired distinctiveness or “secondary meaning.” Secondary meaning arises when consumers come to understand a descriptive or non-distinctive term as indication of source and not a mere descriptive term.

• As per the Supreme Court, the following non-traditional trademarks can only be registered with a showing of secondary meaning:

• Color

• Product design

• The USPTO and TTAB have extended the requirement of secondary meaning to these additional non-traditional trademarks:

• Sound (if it is a common sound)

• Scent

• Taste

• Touch (if part of product design)

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Evidence for Secondary Meaning $$$$$

• Length of use

• Length of substantially continuous and exclusive use

• Sale volume over time

• Advertising expenditures over time

• Unsolicited media coverage

• Customer surveys

• Customer testimonials

• License requests by third parties

• Infringements by third parties

• The nature and content of the applicant’s advertising and

promotional materials that use the mark as a source indicator

• Advertising highlighting the design features

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NY/NJ CLE Code: 707

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Developing New Non-Traditional Trademarks

Tips For New Non-Traditional Trademarks

• Budget ahead: Non-traditional trademark applications, and especially the showing of secondary meaning, can be time consuming and costly

• Plan ahead: scent, flavor, color, and product design marks require secondary meaning; start assembling evidence of secondary meaning right away

• Investigate whether the feature at the heart of the non-traditional trademark has been covered by a utility patent or claimed to be useful in a utility patent application

• Evaluate whether the feature chosen to protect is cheaper or easier to manufacture than the alternatives

• Review the alternative designs available to competitors

• Keep track of and create a file for unsolicited media coverage and social media coverage

• Create a game plan with internal marketing departments as to the requirements for non-traditional trademarks and how they can assist

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Tips For New Non-Traditional Trademarks (cont.)

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Know what’s out there – color marks• At the USPTO, color is 29 for the Design Code search, with individual types identified within 29

• 29.02.01 Red or pink

• 29.02.02 Brown

• 29.02.03 Blue

• 29.02.04 gray or silver

• 29.02.05 Purple or violet

• 29.02.06 Green

• 29.02.07 Orange

• 29.02.08 Yellow or gold

• 29.02.09 White

• 29.02.10 Clear or translucent

• 29.02.11 Black

• Under structured searches, designate “AND” for the operator code

• Search the exact phrase: “mark consists of the color” in the Description of Mark search field

Tips For New Non-Traditional Trademarks (cont.)

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Know what’s out there—sound, scent, or non-visual marks

• At the USPTO, “Drawings” non-visual marks are coded as Mark

Drawing Code 6

• Under structured searches, designate “AND” for the operator code

• Search either “flavor” or “scent” in the Description of Mark search field

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Considerations for Marketing & Advertising Departments

Non-Traditional Trademark Do’s

• Treat non-traditional marks consistently and only as source identifiers

• Use proper trademark notice (™ for unregistered marks and ® for registered marks) in connection with non-traditional trademarks, which can be a bit tricky

• Never advertise or refer to the functional or beneficial attributes of the non-traditional mark

• Advertise non-functional features of the non-traditional mark

• But remember: trademark law protects against consumer source confusion; it does not protect creativity

• Develop internal usage guidelines that set forth how non-traditional trademarks should be used

• Conduct internal audits to ensure compliance with usage guidelines

• Use “look for” advertising to help consumers associate the non-traditional trademark with your brand

• Create a file for advertising, promotional materials, and specimens showing use of non-traditional trademarks

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“Look for” Advertising

• Calling consumers’ attention to the unique and distinguishing

features as a source indicator

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Non-Traditional Trademark Don’ts

• Do not choose features that are covered by a utility patent or claimed to be useful in a utility patent application

• Do not choose features that are common or advertised in your industry as useful

• Do not highlight marks as functional and aesthetically pleasing product features

• Talking Rain Beverage Co. Inc. v. South Beach Beverage Co, 349 F.3d 601, 603-04 (9th Cir. 2003) (registered bottle trade dress found functional based on plaintiff's own advertising of bottle as a "grip bottle" and employing the slogan "Get a Grip").

• Do not use product design or product packaging inconsistently and uniformly

• Do not alter color shades, sounds, scents, textures, or motions, or use them inconsistently

• Trademarks, and especially non-traditional marks, must be used in a consistent manner so the public recognizes the source of the product over time.

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Thank You!

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Catherine Stockell

Of Counsel

New York

Stockell@fr.com

212-641-2351

Irina Lyapis

Associate

Silicon Valley

Lyapis@fr.com

650-839-5061

Please send your NY CLE forms or questions about the webinar to Lauren McGovern at

mcgovern@fr.com

A replay of the webinar and a copy of the slides will be available at fr.com/webinars

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