It is possible to register something other than a word, slogan or logo as a trademark in the U.S.
Consider the distinctive start chime of an Apple Mac computer; the “flowery musk scent” in a Verizon store; the pink color of Owens Corning insulation; or the sexy shape of a Gibson Les Paul guitar. These elements are all trademarks registered by the United States Patent and Trademark Office (USPTO).
Federal trademark law defines a trademark to “include any word, name, symbol, or device, or any combination thereof used by a person…to identify and distinguish his or her goods…from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”
This means that a registered trademark can theoretically be anything detectable by a consumer’s five senses, as long as the mark effectively identifies and distinguishes the source of the goods or services.
Barriers to Registration
A mark cannot be a functional feature of the goods or services. Utility patents are the proper instrument for protecting novel, useful and non-obvious functional elements.
There are four things the USPTO looks at when trying to decide if a proposed mark is functional:
- A utility patent with a claim for the feature proffered for registration;
- Advertising publicizing “the utilitarian advantages” of the feature;
- Availability to competitors of alternate features; and
- Whether the feature is a byproduct of the simplest and most inexpensive way to manufacture the product.
To be registerable, a mark must be distinctive enough to designate a source because it is either inherently distinctive or has acquired distinctiveness through use and advertising (known as acquiring “secondary meaning”).
- Inherent distinctiveness is context based—for example, the mark is a coined term (like Xerox) or is arbitrarily applied to the product or service (like Apple for computers). Non-traditional marks often cannot be considered inherently distinctive unless they are applied to packaging for a product (e.g., distinctive container) or a service (e.g., distinctive restaurant décor).
- Acquired distinctiveness is obtained when consumers have come to recognize that the feature indicates that the product comes from a single source. For example, over time consumers came to understand that pink signified insulation made by Owens Corning.
Non-traditional Trademarks Formats
The color must act as an indicator of source. Bandages shaded to blend in with skin tones would be an example of a functional use of color. Also, the natural color of a product cannot serve as a trademark and will not be registered. An arbitrary combination of colors may be more distinctive and easier to register.
Sound marks have the problem of differentiating between sounds serving as distinctive marks and those that are part of the good or service.
Common sounds without secondary meaning are not distinctive. For example a “Ship's Bell Clock” was denied registration as a service mark for radio broadcast services because it was a common-place sound for which there was no evidence of secondary meaning.
An application to register a scent mark also requires evidence of acquired distinctiveness. The first US registration for a scent was obtained by Clarke's Osewez based on a wealth of evidence that consumers had been invited to, and in fact had, come to associate the scent with the applicant’s company. The applicant was also able to prove that no one else was using scent as a mark for thread.
A scent mark cannot be a functional part of the product. Cherry scent for synthetic lubricants for vehicles is a good example of a non-functional mark.
Taste marks have never been registered in the United States and face barriers of both functionality and distinctiveness.
A pharmaceutical company attempted to register orange flavor as a mark for antidepressants. Registration was denied because orange flavor was a common feature of oral drugs.
The taste was also functional because: (1) orange flavoring covered up the taste of the medicine, (2) it was the byproduct of adding orange citrus to the manufacturing process, and (3) evidence showed that orange flavor was a consumer preference. The flavor was there to enhance the product’s appeal, not to indicate source.
Shapes break down into two categories, product shapes and packaging shapes.
- Products. Product shapes require a demonstration of acquired distinctiveness. Take the shape of a Gibson Les Paul guitar. Although the line debuted to acclaim in 1952, its shape was not registered until 1993. It took forty years for sufficient evidence to be submitted that consumers associated that shape with a particular company.
Functionality is also an issue. The curved shape of a Gibson Les Paul guitar is comfortable and therefore possibly functional. However, there are a wide variety of comfortable guitar shapes available to competitors, and the shape does not add anything to the sound. The totality of the shape was found non-functional.
- Packaging. Unlike products themselves, product packaging can be inherently distinctive, not requiring proof of acquired distinctiveness. Consider a Happy Meal sold in a McDonald’s restaurant. Many restaurants sell kid’s meals, but McDonald’s house shaped basket design makes it an inherently distinctive identification of its source.
Though rare, touch marks do exist. They face the same challenges as shapes in terms of distinctiveness and functionality, but they are reviewed even more rigorously. Louis Vuitton has succeeded in obtaining a registration of a “textured pattern utilized as a surface feature” on luggage and related leather products.
Registration of moving images has been rare for the same reasons as registration of sound marks, although the prevalence of new technologies may see moving images become easier to register. Twentieth Century Fox has registered the iconic image of searchlights swinging back and forth that appears at the beginning of its studio features.
Lastly, positioning trademarks have been required to prove secondary meaning in order to acquire registration. Levi Strauss & Co., for example, holds a number of registrations for the position of tags on its clothing. Registration of these marks did not occur until decades after they were introduced in the 1930’s.