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  • 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

    2

    http://www.fr.com/webinars/

  • 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

    3

  • 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.

    4

  • 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

    5

  • 6

    Registration Requirements for Non-Traditional Trademarks

  • Sound Marks Whats 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)

    7

  • Sound Marks Examples

    Examples of sound marks are accessible on the USPTOs website:

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

    Homer Simpsons DOH!

    Reg. No. 3,411,881

    Law & Orders Chung Chung

    Reg. No. 76,641,094

    Pillsburys Dough Boys Giggle

    Reg. No. 3,411,881

    Yahoos YAHOO

    Reg. No. 2,442,140

    AFLACs Quacking Duck

    Reg. No. 2,607,415

    8

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

  • Sound Mark Case Study

    9

    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 Whats 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

    10

  • 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

    11

  • Scent Mark Case Study

    12

    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.)

    13

    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?

    14

  • Color Marks Whats 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

    15

  • Color Marks Whats 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

    16

  • Color Mark Case Study

    17

    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

    18

    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 Louboutinsregistration valid but limited it to a lacquer red sole that contrasts with the shoe's upper portion; in other words, YSLs all-red pair of heels with a red sole did not infringe Louboutin's trademark

    Moral: Color marks will be construed narrowly

  • Motion Marks Whats 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.:

    19

  • Motion Marks Case Study

    20

    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

    21

    Gene Simmons 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 Whats 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

    22

  • Touch Mark Case Study

    23

    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

    24

    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 Whats 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

    25

  • Product Design Case Study

    26

    Hersheys 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

  • 27

    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)

    28

  • 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 applicants advertising and

    promotional materials that use the mark as a source indicator

    Advertising highlighting the design features

    29

    NY/NJ CLE Code: 707

  • 30

    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

    31

  • Tips For New Non-Traditional Trademarks (cont.)

    32

    Know whats 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.)

    33

    Know whats out theresound, 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

  • 34

    Considerations for Marketing & Advertising Departments

  • Non-Traditional Trademark Dos

    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

    35

  • Look for Advertising

    Calling consumers attention to the unique and distinguishing

    features as a source indicator

    36

  • Non-Traditional Trademark Donts

    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.

    37

  • Thank You!

    38

    Catherine Stockell

    Of Counsel

    New York

    [email protected]

    212-641-2351

    Irina Lyapis

    Associate

    Silicon Valley

    [email protected]

    650-839-5061

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

    [email protected]

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

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