Posts Tagged ‘non-traditional trademarks’

Earlier this week I wrote about a host of new Apple Watch related trademark filings from Apple, including TAPTIC ENGINE.  The New York Times reviewed the watch this week and I was quite intrigued by this statement: “The Apple Watch’s most ingenious feature is its “taptic engine,” which alerts you to different digital notifications by silently tapping out one of several distinct patterns on your wrist.”

The author, Farhad Manjoo, went on to explain how this works in more detail:

“As you learn the taps over time, you will begin to register some of them almost subconsciously: incoming phone calls and alarms feel throbbing and insistent, a text feels like a gentle massage from a friendly bumblebee, and a coming calendar appointment is like the persistent pluck of a harp. After a few days, I began to get snippets of information from the digital world without having to look at the screen — or, if I had to look, I glanced for a few seconds rather than minutes.”

Could the sensation of the tapping patterns themselves function as trademarks? It is possible that other watches could use vibrations (assuming there are no patent issues). But if Apple’s sensation for, let’s say, receiving a new email, be unique enough to function to the user of the watch to indicate the source (i.e. brand) of the watch and/or software?

“Touch” or texture marks are registrable at the USPTO (for example, the Crown Royal registration for a purple cloth pouch bag, or the expired registration for a leather wrapping around a wine bottle). Sounds can be registered. Trademarks can be three dimensional, whether they are product shapes (Legos for example), or something else. Anything that serves to differentiate the source of the product, even goats on a roof!

Do you think Apple’s Taptic Engine vibration patterns are registrable?  Are they purely functional? Perhaps they can be registered if acquired distinctiveness is shown?

Last month, Apple received three sound mark registrations from the USPTO for sounds made by Siri.

U.S. Trademark Registration No. 4689365 is for “a synthesized bell tone playing a C#5 sixteenth note, followed by another C#5 sixteenth note” for use with computer hardware good in Class 9.

U.S. Trademark Registration No. 4689044 is for the same sound, “a synthesized bell tone playing a C#5 sixteenth note, followed by another C#5 sixteenth note,” but for use with computer services. I believe this is the sound Siri makes when activated or turned on.

U.S. Trademark Registration No. 4689043 is for “a synthesized bell tone playing a G#5 sixteenth note, followed by another G#5 sixteenth note.” I believe this is the sound makes at the end of a receiving voice request.

For more on the Siri sounds, see “The iPhone’s UI Sounds” from Beyond the Beep.

Apple also owns a registration for the sound of “a synthesizer playing a slightly flat, by approximately 30 cents, G flat/F sharp major chord” in Registration No. 4257783. That is the sound made when an Apple computer is turned on.

Other nontraditional Apple trademarks include the design of an Apple Store, charger icon, the shape of the iPhone, the shape of the iMac, the shape of a mouse, and more.


image from

Trademark Registration 4641345, is a sound mark for a commercial jingle. It was issued to Nationwide insurance in November of 2014, and consists of “a vocalist singing the words, “NATIONWIDE IS ON YOUR SIDE” accompanied by the seven musical notes. E, G, G, G, A, C, C. In the first measure, vocalist sings “NA” [E5 Eighth Note] “TION” [G4 Eighth Note] “WIDE” [G4 Eighth Note] “IS” [G4 Eighth Note] “ON” [A4 Eighth Note] “YOUR” [C5 Quarter Note] “SIDE” [C5 Eighth Note tied to C5 Dotted Half Note of the second measure] followed by a quarter-note rest.

A recent commercial for Nationwide uses and builds upon the registered jingle brilliantly. Broncos Quarterback Peyton Manning humms the tune, and goes through practice and his routine (ice bath, driving home, eating a meal) using the tune to utter several other phrases… 50 Omaha said ‘hut’…. losing feeling in my toes…. nothing beats that new car smell.  The ad reinforces the jingle. Which makes it even catchier, even more likely to get stuck in your head.

And at the end of ad, Manning does turn on the television to find that a Nationwide ad is playing. And then the original jingle  – Nationwide is on your side – is heard through the TV. Brilliant.

The ad debuted a few weeks ago. According to an article in the Denver Business Journal, “From a paid-media perspective, it’s one of our single most effective ads ever,” [senior vice president for brand marketing Jennifer Hanley said. “From a social-media perspective, ‘Jingle’ is by far the most talked about ads in the history of Nationwide.” No wonder. The ad is fun and catchy. And uses a nontraditional trademark in a very effective manner.

Article: Peyton Manning Sings About Losing Feeling in His Toes (Denver Post)

© 2015 Erik M. Pelton & Associates, PLLC. The nontraditional trademark lawyers.®



15 years of Nontraditional trademarks

Posted by ipelton on: January 6th, 2015

As you may know, last month marked my fifteenth year in private practice filing trademark applications for clients. Over that time, I have handled many nontraditional trademarks. I even coined and registered the slogan, The Nontraditional Trademark Lawyers®!

Here are some of the nontraditional registrations obtained on behalf of clients:

  • Trademark imageThe mark consists of the three dimensional configuration of a building featuring a stepped front and a three dimensional package of fries appears on the top step, a three dimensional beverage cup with straw appears on a step below the fries, a three dimensional hot dog appears on a step below the cup, and a three dimensional hamburger appears on the bottom step; the dotted lines in the drawing are not a part of the mark but are intended to show the position of the mark on the building.
  • Trademark imageThe mark consists of a three-dimensional configuration of piece of jewelry in the shape of an infinity symbol and a heart
  • Trademark imagemark used as background on product packaging
  • Trademark imageThe mark consists of the configuration of a lumbar support cushion.
  • Trademark imageThe mark consists of the configuration of a roof; the matter shown in broken lines merely shows the positioning of the mark and no claim is made to it.
  • Trademark imageThe mark consists of the color blue in a horizontal stripe applied to the center of a rectangular license plate
  • Trademark imageThe mark consists of the configuration of a bottle used as a container for tequila and containing a totem with a stylized face on it on the inside of the bottle.
  • Mark ImageThe mark consists of three dimensional gates featuring one large span with the wording “EDEN CENTER” underneath and two small spans on each side.
  • Trademark imageThe mark consists of the non-functional elements of a three-dimensional ice cream cup costume consisting of a hot pink cup with light green spiral designs, a dark pink rectangle near the top of the cup, white and black eyes, a light pink smile, hot pink arms and hands, green legs extending from the bottom of the cup, and a light pink ice cream swirl atop the cup.

In addition, several more nontraditional mark applications filed by our firm are pending.

Top Trademark TrendsSM of 2014

By Erik M. Pelton & Associates® – The Nontraditional Trademark Lawyers®

Once again, trademarks and pop culture collided frequently in 2014. For example, more than 50 “JOHNNY ____” applications were filed this year as quarterback Johnny Manziel was drafted by the Cleveland Browns including JOHNNY MAN’Z ALE, JOHNNY CLEVELAND, JOHNNY HOCKEY, JOHNNY PIGSKIN, and JOHNNY BENCHWARMER. Another football trademark story made big news as the U.S. Patent and Trademark Office (“USPTO”) ruled in a case to cancel the Redskins trademark registrations.  Other big news stories, like the ebola outbreak, also were reflected the trademark filings. Another remarkable trademark story from 2014 was the Supreme Court, for the first time in several years, hearing a trademark case (B&B Hardware, Inc. v. Hargis Industries, Inc.). The case involves the differences in proceedings before the USPTO’s trademark appeal board and the Federal courts, and the Court will likely rule on it in the spring of 2015. Here is a summary of the year’s major trademark related developments:

Washington, DC Professional Football Team Trademark. In June, the USPTO’s Trademark Trial and Appeal Board granted a request filed by several Native Americans to cancel those trademarks that feature the term “Redskins.” However, the decision is now on appeal and the ongoing dispute, which has lasted for over a decade, continues. Following the decision, many other applicants filed trademark applications for potential team names, such as WASHINGTON AMERICANS, WASHINGTON NATIVES, WASHINGTON FEDSKINS, WASHINGTON WARRIORS.

Popular Terms: Selfie, Drone, Weed, Vape, and more. Once again, the most popular words and phenomena in pop culture made their way into many trademark filings. The 2014 word of the year, according to Oxford English Dictionary, is “Vape.”  And business owners certainly agree as more than 300 applications were filed at the USPTO featuring the word VAPE. Other popular trademark terms in 2014 included SELFIE (140+ applications), DRONE (100+ applications), and WEED (150+ applications). More than 100 filings in 2014 contain the “#” hashtag symbol. Online and environmental branding trends from the last few years contained in 2014 as SOCIAL remained popular (400+ applications), along with CLOUD (700+ applications), while more than 1,000 applications were filed featuring GREEN.

Logo Trends. As even more business and advertising moves online and via mobile devices, logos are trending to simpler smaller designs, which make them faster to load and easier to see on mobile screens. Terrific logo redesigns from popular online businesses include those from FOURSQUARE , PayPal, and AirBnB.

 PayPal Logo

Ebola. The spread of ebola was certainly a big story in 2014. At the USPTO, there were several applications filed for ebola related treatments and products including ZMAPP (Pharmaceutical preparations for treatment of Ebola virus infections), EBOLAHOL (antiviral disinfectant products for Ebola), EBOLAWAY (Antibacterial and antiviral sprays and wipes for eliminating bacteria and virii), and EBOLA OUTBREAK MAP.

Controversial Trademark Filings. The ALS Association rode a wave of viral social media activity last summer to raise more than $100 million dollars. Most of the activity was the result of the “ice bucket challenge.” The Association made quite a stir later in the summer when it applied to register four trademarks featuring the phrase, including ICE BUCKET CHALLENGE and #ICEBUCKETCHALLENGE. However, following a rapid backlash questioning the charitable intent and legality of claiming sole ownership and control of the phrase, the Association withdrew the applications.  Other questionable trademark filings included names related to tragedies, such as the MH17 and MH370 airplanes.  Last year’s trends noted the numerous BOSTON STRONG trademark application filings; as of today all but one of them has been abandoned.

Trademark scams continue. Despite one law firm’s successful quest to shutdown an operation preying on trademark holders, such scams from numerous companies offering negligible or questionable services remain prolific. Join a petition to “Request USPTO Investigation and Action Regarding Trademark Scams” here.

What to look for in 2015. Expect even more trademark disputes to go viral via social media, building upon the success of EAT MORE KALE fending off a claim from Chik-fil-A and Eat Mor Chikin. Also expect the number of nontraditional trademark filings to continue to grow as more brands protect colors, sounds, shapes, and other indicators of source featuring more than words or logos.


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© 2014 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

About Erik M. Pelton: Erik Pelton® has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates, PLLC®, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 2,000 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2014, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association and a junior high school class.

Prior issues of Top Trademark TrendsSM