by Erik Pelton, Erik M. Pelton & Associates – The Nontraditional Trademark Lawyers®
In the United States, a wide array of ‘nontraditional’ trademarks are eligible for registration. For example, colors, smells, textures, building shapes, packaging designs, uniforms, motion marks like software display that feature moving or changing logos, and much more have all been registered with the USPTO.
Product shapes, colors, scents, and flavors, however, can never be inherently distinctive. As a result, nontraditional registrations will often appear on the weaker Supplemental Register of trademarks unless a showing of acquired distinctiveness can be made. When asserting acquired distinctiveness, an application will generally be greatly aided by “look for” advertising that highlights the feature. Public opinion surveys and affidavits can also be helpful evidence of demonstrating acquired distinctiveness.
The first protected nontraditional marks in the U.S. were colors (In re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed Cir. 1985)( finding the colorpink protectable forfiberglass insulation). The Supreme Court then clarified the requirements in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).
Nontraditional marks, of course, must meet all the normal registration requirements, such as: a lack of confusing similarity with any registered marks, serving as an indicator of source, a proper drawing of the mark, and a proper specimen showing use of the mark in connection with the relevant goods or services. For motion marks, the drawing can depict up to five frames showing the movement and must include a detailed description and specimen of use featuring the entire motion; such evidence could be a video clip or series of photos or screenshots. Note that conducting a clearance search for nontraditional marks is often quite difficult.
The biggest hurdle a nontraditional trademark must overcome is functionality. If the mark is found to be functional, then it is not registrable, even with a claim of acquired distinctiveness. A feature of the mark is functional if “the exclusive use of the [mark] would put competitors at a significant non-reputation-related disadvantage.” Qualitex, 514 U.S. at 165.
Recent litigation affirming protectable rights in nontraditional marks featured Louboutin’s red soled shoes (Christian Louboutin S.A. v. Yves Saint Laurent America Inc., 696 F.3d 206 (2nd Cir. 2012); Maker’s Mark bourbon’s red wax bottle seal (Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410 (6th Cir. 2012); and a toilet paper design (Georgia-Pacific Consumer Products v. Kimberly-Clark, 647 F.3d 723 (7th Cir. 2011).
A few of the more interesting nontraditional trademarks registered in recent years include:
- Reg. 2793439: The mark consists of the unique motion in which the door of a vehicle is opened in a motion parallel to the body of the vehicle.
- Reg. 4558864: The mark consists of a crowd cheering the following words “Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Razorbacks!”
- Reg. 5467089: Scent of Play-Doh “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.”
- Reg. 5527388: Sound of a Zippo ‘windproof lighter opening, igniting, and closing’ (link to sound:
- Reg. 2508347: a building configuration mark for the Rock and Roll Hall of Fame in connection with entertainment and various services.
- Reg. 3896100: for wines (The mark consists of a leather texture wrapping around the middle surface of a bottle of wine.)
- Reg. 3697306 for hotel services (The mark consists of a lighting design projected on the front of building.)
For more on non-traditional trademarks:
- A hodge-podge of non-traditional trademarks
- What are ‘nontraditional’ trademarks
- Trademark visual: The nontraditional trademark lawyers®