The Lanham Act codifies the idea that trademarks serve three primary functions:
- operating as source identifiers by distinguishing the goods or services of one business or individual from those of another;
- facilitating consumers’ purchasing decisions; and
- acting as an economic and reputation-based incentive for mark owners.
Pursuant to 15 USC §1127, trademark protection in the United States is commonly associated with marks that are easily perceived as source identifiers – for example, “any word, name, symbol, or device, or any combination thereof… used by a person… to identify and distinguish his goods”. Thus, the term ‘trademark’ seems to be all-encompassing. Over time, the United States has gradually granted trademark protection to additional non-traditional elements or devices that serve as source identifiers for particular goods and services. In Qualitex v Jacobson Prods, Co the Supreme Court stated that “[t]he language of the Lanham Act describes [the universe of things that can qualify as a trademark] in the broadest of terms… Since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally is not restrictive” (514 US 159 (1995)). The Qualitex court granted trademark protection to colour after it decided that colour in that particular instance had acquired secondary meaning in the market.
In a market that is accelerating towards saturation, creative brand owners are continually searching for novel means to identify and safeguard their brands. In order to enhance the scope of mark owners’ rights by engaging in creative branding, many seek to obtain protection through registration of non-traditional trademarks. Highlighting a trademark’s plasticity, non-traditional marks come in many different formats, which include colour, sound, olfactory, taste, motion and three-dimensional (3D) trademarks.
Registration of non-traditional trademarks
In order to register a non-traditional mark on the Principal Register, the registration requirements for a standard application apply. The mark must be distinctive and serve as an indicator of source, and a proper drawing (except for sensory marks) and specimen of use must be provided. However, while registrable in theory, non-traditional marks undergo substantial scrutiny and unique impediments during the examination phase of the trademark application process. Although every type of trademark poses different complications for registration, non-traditional trademarks face two common issues: distinctiveness and functionality.
In order to be registrable on the Principal Register, a mark must be distinctive and serve to identify a particular source of the goods or services. While some types of mark can be inherently distinctive through their intrinsic source-identifying nature, others must acquire distinctiveness before they are entitled to registration. A mark may acquire distinctiveness when consumers begin to associate it with a particular seller over time. The amount of evidence required to satisfy the burden of acquired distinctiveness depends on the nature of the trademark and the character of the evidence. Over time, a non-traditional mark may acquire secondary meaning if consumers begin to associate it with a single source. Accordingly, evidence of acquired distinctiveness may be either direct (eg, consumer surveys) or indirect (eg, promotional materials).
The functionality doctrine also acts as an obstacle during the examination stage of a non-traditional mark application. This doctrine acts as a buffer between patent and trademark law by precluding a business from monopolising a useful product feature under the façade of identifying the feature as the source of the product. This can occur when the examining attorney concludes that the mark is utilitarian or aesthetically functional.
Under the utilitarian test, a mark is functional when it is essential to the purpose or use of the product or affects the cost or quality of the product. Alternatively, a mark may also be denied registration when it is deemed aesthetically functional. Aesthetically functional features do not contribute to the utilitarian function, but their appearance or ornamentation contributes to consumer demand for a product. In effect, this forbids the use of a product’s feature as a trademark if this will place a competitor at a significant, non-reputation-related disadvantage. Most importantly, the determination that a proposed mark is functional constitutes an absolute bar to registration on either the Principal or Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness.
To determine functionality, the US Patent and Trademark Office (USPTO) will consider:
- the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
- advertising by the applicant that touts the utilitarian advantages of the design;
- facts pertaining to the availability of alternative designs; and
- facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
If an applicant is filing a trademark application that consists solely of colours employed in connection with specific goods or services, it must submit a drawing that displays the mark in colour, as well as:
- a colour location statement in the description of the mark field, which names the colours of the mark and where they appear; and
- a claim that the colours are a feature of the mark.
Colour marks cannot be categorised as inherently distinctive and applicants seeking to register a colour must satisfy the high burden of proving secondary meaning. In order to navigate these registration requirements, applicants must attach Section 2(f)-based evidence demonstrating distinctiveness. Although applicants may typically prove acquired distinctiveness through evidence of five years’ use, in the context of colour marks this alone is insufficient to show acquired distinctiveness. When reviewing Section 2(f) evidence to determine whether a single colour has acquired distinctiveness, the USPTO will look at factors such as duration of use, promotion of the colour in advertising, consumer recognition of the colour as a mark and use of colour by competitors.
Although difficult to clear, many colour marks have passed for registration by satisfying these requirements. For example, jewellery company Tiffany & Co has successfully registered the robin’s egg colour “Tiffany blue” for boxes and bags (Registrations 2,359,351 for boxes, 2,416,795 for shopping bags and 2,416,794 for catalogue covers). Further, shoe designer Christian Louboutin has registered the lacquered red outsole on women’s footwear only when it contrasts with the colour of any visible portions of the remainder of the shoe (Registration 3,361,597).
Under 37 CFR §2.52(e), sound marks may also function as source indicators when they are fixed in a definitive shape or arrangement while creating a strong connection between the sound and a good or service in the listener’s mind. For the Principal Register, sound marks must be unique or distinctive. Sound marks must be used in a way that registers in the subliminal mind of the hearer – the listener must be able to recall the mark later on a subsequent hearing in a manner that signals that a certain product or service is associated with a specific source.
Further, a mark’s form or ontological status is almost irrelevant in comparison to its source-distinguishing ability. As with a more visually perceptible type of mark, a sound can be utilised as a source indicator; thus, the mark need not be in graphic form. A sound mark depends on the listener’s aural perception. Therefore, a distinction must be made between distinctive sounds and those that resemble commonplace sounds. Commonplace sounds made in the normal course of operation may be registered only when supported by evidence that purchasers identify the sound and associate it with a single source. For instance, in Ride the Ducks, LLC v Duck Boat Tours, Inc the court noted that the quacking sound made by ducks is the kind of familiar noise that would not qualify as so inherently distinctive that evidence of secondary meaning is not necessary to link the noise to the plaintiff’s provision of an amphibious boat tour (04-CV-5595, 2005 WL 670302 (ED Pa March 21 2005).
Registration of a sound mark requires the submission of a detailed description of the mark. The applicant must describe the sound with sufficient particularity, which may be achieved by submitting the musical notes associated with a particular sound or describing it in layman’s terms (eg, “the mark comprises a lion roaring”). Applicants should also submit a specimen in audio form. Further, commonplace sounds require proof of acquired distinctiveness, whereas inherently unique or distinctive sound marks need no additional showing of secondary meaning.
Despite these complications, many sound marks have passed for registration – notably, the Metro-Goldwyn-Mayer lion roar (Registration 1,395,550) and Homer Simpson’s ‘D’oh’ exclamation (Registration 3,411,881) are both live on the Principal Register.