Non-traditional trademarks: a comparative analysis
Following a rise in the number of non-traditional trademark registrations, practitioners should be aware of the differences between obtaining protection in the European Union and the United States.
The key to the success of any brand is to distinguish its products and services from those of its competitors and to make them instantly recognisable to consumers. While the name and logo associated with a particular brand are usually the main identifying features in the mind of consumers, there are many other aspects of a brand that may act as source identifiers and be valuable enough to warrant protection.
Both EU and US trademark legislation provide for the protection of a variety of characteristics. Article 4 of the EU Trademark Regulation (2017/1001) states that a trademark may consist of:
any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of being represented on the register, in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
Similarly, the US Lanham Act provides that a trademark may consist of “any word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others”.
Therefore, rights holders in both the United States and the European Union can protect any aspect of a brand that distinguishes the source of the goods, provided that it is distinctive and not descriptive or functional. Non-traditional marks may thus encompass sounds, colours and shapes, as well as motions, holograms, smells, tastes and textures. Since such marks are, in principle, capable of distinguishing the origin of goods and services, they may be protected through trademark registration. However, in practice, obtaining protection for non-traditional marks can be an uphill struggle.
In this article, we explore the different types of non-traditional mark and analyse the inherent difficulties associated with their registration.
Sound them out
Until recently, EU trademarks had to be capable of graphical representation in order to be registrable. This meant that sound marks were typically represented by musical scores. Other representations, such as sonograms and spectrograms, were also accepted, provided that they depicted pitch, progression over time and volume.
In 2005 the EUIPO began to accept sound files submitted through online applications. At first, these had to be accompanied by a graphic representation. However, since the EU trademark reforms have come into force, the EUIPO and national IP offices may now accept digital sound files as the sole means of representation of an applied-for sound mark. This means that, in theory, it has become easier for rights holders to register sounds as trademarks. However, they must still pass the distinctiveness hurdle.
As with any non-traditional mark, it is the distinctiveness requirement that often proves to be more of a restriction than the need for graphical representation. In Globo Comunicação e Participações S/A v EUIPO (Case T-408/15) Globo applied for a sign that was represented by musical notes on a stave accompanied by a clef, rests and accidentals.
The court noted that for a sound mark to be registrable, it must have a certain resonance, which enables target customers to perceive it as a trademark, and must not consist of a functional element or an indicator without any inherent characteristics. The court determined that Globo’s sign was characterised by “excessive simplicity” and therefore was incapable of conveying a memorable message to consumers. As a result, consumers would not regard it as a trademark unless it had acquired distinctiveness through use. In this regard, the court found that the technical nuances that Globo claimed in the sound were not heard when it was played. Arguably, if Globo had submitted a recording of the sound played on an instrument (or instruments) with an unusual tone or timbre, it may have been distinctive enough to afford protection.
The USPTO also accepts digital sound files to identify sound marks, but requires a detailed description of the mark as well. In addition, if the sound mark includes music or words set to music, the USPTO encourages applicants to submit sheet music to supplement the written description of the mark.
Sound marks that function as source indicators are protectable in the United States, provided that they are arbitrary or otherwise distinctive. Sounds that are emitted in association with a product’s ordinary operation can be registered on the Principal Register only if they have acquired distinctiveness – generally through extensive use and advertising in the marketplace over a sufficient period.
In In re Powermat Inc (105 USPQ2d 1789, 1793 (TTAB 2013)) the TTAB found that so-called ‘chirp’ sounds emitted by battery chargers, which increase and decrease in pitch, are associated with the ordinary operation of a charger; therefore, they are not inherently distinctive and require evidence of acquired distinctiveness in order to be registrable. Proof of acquired distinctiveness generally requires that the sound:
- has been used substantially and exclusively as a trademark in the United States for five or more years; and
- has been clearly presented to consumers as a source identifier in substantial advertising and promotions.
The colourful world of trademarks
Single colours can be registered as EU trademarks if they have acquired distinctiveness. Colour combinations can also be protected, provided that the application for registration includes a systematic arrangement associating the colours in a predetermined and uniform way (see Red Bull GmbH v EUIPO, Joined Cases T-101/15 and T-102/15). It is standard practice to apply for colour marks by using an internationally recognised identification code, such as Pantone. Referencing an agreed and specific gradation system will help applicants to ensure that the scope of protection sought is clear and precise.
When assessing a colour mark, the registry will consider whether the colour is capable of identifying the source of the goods or services and distinguishing them from competing products in the minds of the relevant public. For example, the EUIPO has stated that turquoise blue is a basic colour that comes naturally to mind and that the public often faces for products such as household linen, paint or decorative objects. For this reason, however emblematic turquoise blue may be for a decorative brand, it cannot be considered distinctive (see EUIPO, Sarah Lavoine SAS, Trademark Application 016412884). This stance also supports a general interest not to unduly restrict the availability of colours for other brand owners that offer the same goods or services.
Consequently, applications covering a large number of goods or services are less likely to be granted than those that are more specific. In addition, there are only a limited number of colours in internationally accepted codes; therefore, strong evidence must be provided to show that the public expects the goods sold under a particular colour to be those of the applicant. Examples of successfully registered single-colour trademarks include 3M’s post-it note mark for the colour canary yellow and Christian Louboutin’s trademark for the colour red applied to the sole of a shoe.
Similarly, in the United States, a colour or colour combination applied to an object can be registered if it has acquired distinctiveness and is non-functional. Colour marks are depicted in trademark applications as colour drawings, accompanied by written statements naming the colour or colours and describing where and how they are applied to an object. In recent years, the USPTO has also accepted identification codes from commercial identification systems, such as Pantone, as part of the colour-mark statement.
Colour marks are never considered inherently distinctive in the United States; therefore, applicants must submit a successful claim of acquired distinctiveness. In many cases, this requires proof of extensive use, sales and advertising specifically highlighting the colour as a trademark (often described as ‘look-for’ advertising). Proving that a colour is non-functional can also be a significant hurdle for applicants, and the US system adopts many approaches to defining ‘functional’. Primarily, a ‘functional’ colour is one that is “essential to the use or purpose of the article or if it affects the cost or quality of the article” (Qualitex Co v Jacobson Prods Co, 514 US 159, 165, 34 USPQ2d 1161, 1163-64 (1995), quoting Inwood Labs, Inc v Ives Labs, Inc, 456 US 844, 850, n10, 214 USPQ 1, 4, n10 (1982)) and is never registrable. For example, orange and yellow are functional colours for safety signs because they are easy to see, while pink is a functional colour for surgical wound dressings because it closely resembles certain shades of human skin (In re Ferris Corp, 59 USPQ2d 1587 (TTAB 2000)).
A colour may also be functional if it is more economical to manufacture or use (eg, if it is a by-product of the manufacturing process).
Perhaps less intuitive than other types of functionality, the ‘aesthetic functionality’ doctrine provides that in some cases a colour may be functional because it provides a particular non-reputational competitive advantage.
Despite these hurdles, some single-colour marks have been found to be non-functional and to have acquired distinctiveness in the United States, including robin’s egg blue for Tiffany boxes and chocolate brown for UPS delivery services.
Forming a distinctive shape
Obtaining registration for shape marks is notoriously difficult, as registries and courts will often find that a shape on its own does not operate as a signifier of origin, instead attributing more significance to any verbal elements that appear on the applied-for mark.
Article 7 of the EU Trademark Regulation provides the primary considerations with regard to the registrability of shape marks. In particular, signs cannot be registered if they consist exclusively of “the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods”.
Although adding additional elements to a mark may mean that it does not consist exclusively of one of the features set out above, the mark may still be ineligible for registration if, in the mind of the relevant customer, its shape merely denotes the goods for which registration is sought. In this case, the shape will be considered descriptive or non-distinctive.
Indeed, there are a number of other legal barriers to registering shapes as trademarks – even with the removal of the graphic representation requirement. Case law has shown that applications to register shape marks based on their verbal descriptions can fail due to lack of clarity, precision and objectivity. For example, in Dyson v Registrar of Trademarks (Case C-321/03) the Court of Justice of the European Union (CJEU) held that Dyson could not register the concept of “a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner” as this could take on any number of appearances. Similarly, in JW Spear & Son Ltd v Zynga Inc ((2013) EWCA Civ 1175) the manufacturers of Scrabble were prevented from registering the shape of a Scrabble playing tile, which was described in the application as “a three dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10”. The court held that the mark was not a sign as it could cover multiple signs achievable through the permutations, presentations and combinations of the numbers and letters on each tile.
While shape marks can provide a key tool for enforcing IP rights in the United States, brand owners face the same two primary hurdles when claiming that the shape of a product functions as a mark: functionality and distinctiveness. If a shape mark is deemed to be functional, it cannot be registered.
As with colour marks, a shape mark is functional – and therefore unregistrable – if it is essential to the use or purpose of the product, or if it affects the cost or quality of the product. Applicants should be cognisant that a shape – no matter how unique – will not be afforded trademark protection if a utility patent exists that discloses utilitarian features of the shape. For example, in In re Howard Leight Indus, LLC (80 USPQ2d 1507 (TTAB 2006)), which involved an application covering bullet-shaped earplugs, the TTAB found that the applicant’s “expired utility patent, which specifically discloses and claims the utilitarian advantages of [the] applicant’s earplug configuration and which clearly shows that the shape at issue ‘affects the... quality of the device’, is a sufficient basis in itself for finding that the configuration is functional”.
In contrast, US design patents are not necessarily inconsistent with the concept of shape marks, and a design patent may even buttress an applicant’s claim that its use of a particular shape in the marketplace has been exclusive for years – thereby furthering its argument that the mark has acquired distinctiveness among consumers.
As with all non-traditional marks, the distinctiveness of a shape is key to obtaining protection and successful enforcement. A mark that consists of a product design cannot be inherently distinctive and therefore is not registrable unless the applicant establishes that the mark has acquired distinctiveness (see Wal-Mart Stores, Inc v Samara Bros, 529 US 205 (2000)).
In some instances, a dispute may arise over whether the asserted subject matter of the shape is purely the product design or whether it constitutes product packaging. This distinction is key to determining the burden for the applicant, because product packaging can be considered inherently distinctive (and therefore capable of functioning as a trademark from inception), while a product design or configuration cannot be considered inherently distinctive (see In re Pacer Tech, 338 F3d 1348 (Fed Cir 2003), whereby a product’s cap packaging was not inherently distinctive and did not function as a trademark because “winged configuration is, at best, a variation or ‘mere refinement’ of useful, basic design scheme for adhesive product applicator caps”). Applicants seeking to register a product design or to assert an unregistered product design during litigation face a heavy burden in establishing that the design has acquired sufficient distinctiveness to function as a trademark (see In re Gibson Guitar Corp, 61 USPQ2d 1948 (TAB 2001), in which 66 years of use was deemed insufficient to have acquired distinctiveness of the guitar design). Some basic shapes are so common that they may never reach the appropriate threshold to become a trademark. Long use of a unique shape will help a mark to achieve distinctiveness but may not be enough to meet the rights holder’s burden of proving this. Often, the party asserting acquired distinctiveness in a shape mark will need to show a history of specific advertising, which establishes that consumers may link the use of the design with its source. In addition, particularly in the context of litigation, the asserting party may need to retain an expert to demonstrate – through a consumer survey – that the public recognises the product shape as a source indicator.
On the move: motion marks and holograms
Before the abolition of the requirement to represent trademarks graphically, motion marks were typically protected by graphical representations through a series of frames which, when viewed in succession, showed the movement in question. Trademarks that have been successfully registered in this fashion include Kraft Foods’ mark for chocolate confectionary, which depicts the breaking apart of a chocolate orange (see Figure 1), and Asda’s registration for a double-tap on the back pocket of a pair of jeans or a skirt (see Figure 2).
Similarly, applications to register an EU hologram mark had to contain images of each different view of the hologram, unless the mark was so simple that the image did not change according to the angle at which it was viewed.
Thus, the requirement for graphic representation made it extremely difficult for applicants to provide representations showing their entire mark. Since the abolition of this requirement, the application process has become much simpler, as motion marks and holograms can now be registered by filing a video of the mark in question.
In the case of holographic marks, applicants may also submit a copy of the hologram itself. In April 2018 ZWILLING JA Henckels AG became the first brand owner to take advantage of this new format with its application for the trademark LET THE AROMA RAIN DOWN LA COCOTTE. Moreover, since 1 October 2017 over 30 motion mark applications have been filed taking advantage of the ability to submit videos.
Motion marks that involve a short, repetitive motion can also be registered in the United States. Applicants must submit:
- a drawing depicting the mark (either a single point in the movement or up to five freeze frames);
- a written description of the mark; and
- a specimen that shows the entire repetitive motion, as well as how the mark is used on or in connection with the goods and services.
Video clips or a series of still photos or screen shots are acceptable specimens.
Trademarks will be refused registration where the motion contributes to the utilitarian or functional aspect of the product, such as where the arms of a gripping tool move in and out in order to grip objects (see In re Loggerhead Tools, LLC 119 USPQ2d 1429 (TTAB 2016)).
Successfully registered motion marks include Meetup’s US Registration 5536323 for a swarm of dots moving to create the letter ‘M’, Dallas Fort Worth Airport’s US Registration 5536125 for a line moving horizontally across the airport’s logo and US Registration 4471065 for the movement of the letters in the word ENERGY rearranging to spell GREEN.
A hologram can be registered in the United States if the applicant is able to provide evidence that consumers would perceive the hologram as a trademark. In the absence of evidence of consumer recognition, the examining attorney will refuse registration. Holograms with two or more views will also be refused registration on the ground that the applicant is seeking to register more than one mark. Given these limitations, it is particularly challenging to obtain a US registration for a hologram.
What is that smell?
Previously, the requirement for graphical representations of smells, scents or odours posed significant practical difficulties for applicants, as CJEU case law provided that this criteria would not be satisfied by chemical formulae (which represent a substance, rather than the smell emitted by that substance), written descriptions, odour samples or any combination thereof. As a result, many applications for registration have been refused. Indeed, at the time of writing, there is no single olfactory mark on the EUIPO register.
In EUIPO, 4th Board of Appeal, Institut pour la Protection des Fragrances (R186/2000-4) the EUIPO held that, even when accompanied by a written description, a coloured matrix was not capable of being perceived by consumers as the sign for which protection was sought (ie, a given fragrance) and was unlikely to give consumers a clear and precise idea of the identity of its owner and the scope of its protection. For the EUIPO, the applied-for mark depicted a representation code used by professionals in the perfumery industry and was not intelligible among the public, which would be unable to read this interpretation of the fragrance.
Nonetheless, some EU member states have taken a more generous view of the registration of scents. In the United Kingdom, Sumitomo Rubber Industries owns a trademark for a “floral fragrance/smell reminiscent of roses” as applied to tyres, while Unicorn Products owns a mark for “the strong smell of bitter beer applied to flights for darts”. However, it is worth noting that these marks were registered before the decision in Ralf Sieckmann v Deutsches Parent-und Markenamt (C-273/00) and the EUIPO has stated that it does not agree with the granting of either registration; the marks are yet to be challenged.
Even with the removal of the requirement for graphic representation, practical difficulties remain around registering a smell mark. Under new legislation, it is theoretically possible to submit a sample of a scent as part of a trademark application. However, this is arguably insufficient for the requirement that the representation be durable, as a bottled scent is likely to deteriorate over time, meaning that it could not be kept on the trademark register.
Further, applicants for smell marks must still demonstrate that:
- the relevant public associates the smell with the commercial entity producing the relevant goods, rather than with the goods themselves; and
- the smell does not directly relate to the nature of the goods specified in the classification.
For this reason, Chanel’s application to register the scent of its famous No 5 perfume was unsuccessful, as it was deemed to be the very essence of the product; therefore, the requirement for distinctiveness was not satisfied.
In practice, to register a smell mark, applicants will likely require substantial evidence to prove acquired distinctiveness. Accordingly, obtaining registration for such marks continues to be a challenge.
Similarly, scent marks are notoriously difficult to register in the United States, where they also require a showing of non-functionality and distinctiveness. Non-functionality is a significant obstacle for most scent mark applicants, as any utilitarian purpose will be considered functional. In other words, the applied-for mark cannot be an essential component to the use or purpose of the applied-for goods (eg, the scent of a perfume or an air freshener). If an applicant can prove that the smell of the mark is not a necessary feature of the product, the mark can be registered on the Principal Register provided that it has acquired distinctiveness. However, as with other types of non-traditional mark, substantial evidence may be required to prove this.
Despite these difficulties, the USPTO has approved the registration for several scent marks. The most well-known was for the plumeria blossom scent of Clarke Osewez’s sewing thread, described specifically as “a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms”. The TTAB held that because Clarke Osewez was the only company producing scented yarn, the smell was “not an inherent attribute or natural characteristic of [the] applicant’s goods”, but rather “a feature supplied by [the] applicant” (see In Re Clarke 17 USPQ2d 1238 (TTAB 19 September 1990)). Clarke Osewez was able to prove the acquired distinctiveness of the mark through its advertisements, which highlighted the scent of the yarn, and affidavits demonstrating that “customers, dealers and distributors of [its] scented yarns and threads [had] come to recognize [the] applicant as the source of these goods” (id).
More recently, Hasbro, Inc successfully registered the smell of Play-Doh, which it described as a “unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough” (US Registration 5467089). While the application was initially refused for lack of distinctiveness, Hasbro pointed to its 60 years of exclusive use and national renown in the children’s toy market. Nonetheless, most applicants for US scent marks are unable to overcome a finding of functionality or a lack of distinctiveness.
A bitter taste
Tastes have traditionally been hard to protect as trademarks, partly owing to the requirement for some kind of graphical representation beyond a description, sample or chemical formula. In addition, many IP offices have argued that a taste cannot constitute a trademark – one reason being because consumers will taste the goods in question only after they have purchased them.
Although it is no longer necessary to represent a trademark graphically in an application, a taste sample, or even the description of such, is unlikely to satisfy the criteria of being “clear, precise, self-contained, easily accessible, intelligible, durable and objective” – especially given that tastes are subjective and extremely difficult to define and compare.
The challenges of establishing distinctiveness and asserting that a taste is not merely a functional result of the goods themselves are also particularly difficult to overcome. In most cases, consumers would struggle to distinguish between the natural flavour of a product and the recipe used by the manufacturer, which distinguishes its products from those of its competitors.
An application for a taste mark may also involve having to divulge a recipe which has previously been a closely guarded trade secret (eg, the recipes for Coca-Cola, McDonald’s Big Mac sauce or KFC chicken). Even if legislative amendments were to make it easier to register taste marks, companies may choose to rely on trade secrets as their primary means of protection, rather than risk divulging their recipes to the public domain.
Although tastes can be registered as US trademarks, the TTAB has held that a taste will never be found to be inherently distinctive because flavour is typically a feature of the goods and does not serve as a strong source identifier. Therefore, to successfully register a taste mark, the applicant must prove that this particular flavour or taste has acquired distinctiveness.
Another difficulty in registering a taste mark is that taste is often found to serve a functional purpose, rather than acting as a source identifier, and – as with other types of non-traditional mark – functional tastes are unregistrable.
In In re NV Organon a pharmaceutical company applied to register the orange flavour that it used to coat pills and tablets. The TTAB found that the flavouring was functional because it was “effective in achieving increased patient compliance, which, in turn, is a utilitarian feature that provides a competitive advantage” (79 USPQ2d 1639 (TTAB 2006)). Because patients were more likely to take their medicine as a result of the orange flavour, and because medicine is frequently flavoured for this reason, the TTAB held that the orange flavour served a functional purpose; therefore, it could not be registered as a trademark.
In addition to medicine, US courts have also held that flavour serves a functional purpose with regard to food. In New York Pizzeria, Inc v Syal the court found that because flavour affects quality, customers were “paying a premium beyond what it would take to simply satisfy their basic hunger needs” (56 F Supp 3d 875, 882 (SD Texas 2014)). Further, the court held that if consumers are more likely to visit a particular restaurant because of the flavours of the food there, then such flavours are providing the restaurant with a competitive advantage – thus serving a functional purpose.
Although flavours can be registered as taste marks in the United States (because theoretically anything that serves as a source identifier can be registered as a trademark), proving that a flavour has acquired secondary meaning or distinctiveness, as well as establishing that the taste or flavour serves a non-functional purpose, has proven to be exceedingly difficult for US trademark applicants.
Getting the feel of a touch or texture mark
Some products can be manufactured in a manner that gives the goods or their packaging a distinctive sensation to the touch, which can distinguish them from the products of competitors. However, tactile trademarks are rare in the European Union – partly due to the need to represent the mark graphically in the application.
Writing on a product in braille is relatively easy to depict. Indeed, on 22 March 2003 the German Patent and Trademark Office registered the first tactile mark written in braille (Trademark 30259811) in Classes 32 and 33. However, other textures, such as a “velvet textured covering on the surface of a bottle of wine” are not so easy to protect.
It remains to be seen whether the removal of the requirement for graphical representation will result in more tactile marks being registered.
In the United States, touch marks are often tied to a product’s trade dress, as it is typically a product’s packaging that features a textural element. For example, US trademark registrations have been obtained for “a velvet textured covering on the surface of a bottle of wine” (Registration 3155702) and for “a leather texture wrapping around the middle surface of a bottle of wine” (Registration 3896100).
Similar to other non-traditional marks, touch marks are difficult to register as the applicant must prove that the mark is non-functional and distinctive.
Applied-for touch marks have been deemed functional if they allow consumers to better grip a product or if the material providing the sensory element of the mark is required by the nature of the product itself (see Serial 85007641 – the examining attorney found “nitroglycerin formulations packaged in certain plastics will not be as effective as those packaged in glass and the container having the allegedly distinctive feel is glass and coated with transparent plastic which assists in containing the glass and medication should the bottle be shattered”).
Further, touch mark applications are often refused on the basis that the applied-for mark is merely ornamental, meaning that it does not act as a source identifier.
Distinctiveness is also difficult to prove, primarily because of the subjectivity of touch. This obstacle was highlighted in the TTAB’s rejection of an application for the distinctive touch and feel of a glass pump spray bottle with a plastic surface (Serial 85007641). The TTAB held: “It is also clear that the sensation of touch and feel is extremely subjective and what one individual may feel is distinctive would not be perceived as anything uncommon or unusual by someone else.”
Therefore, due to the nearly conflicting requirements of non-functionality and non-ornamentally, few applicants have successfully proved that a touch mark is both non-functional and a source identifier.
In the European Union, registrations for non-traditional trademarks are a rare occurrence. Between 1996 and 2012, 99% of EU trademark applications were for word or figurative marks. While the recent removal of the requirement to represent marks graphically simplifies the application process for certain types of non-traditional mark (particularly sound marks, motion marks and touch marks), in practice, there seems to have been little increase in applications – at least before the EUIPO.
Regardless of how a sign is identified, it must be distinctive and non-descriptive in order to obtain registration. This can prove to be an uphill struggle for non-traditional trademark owners and often requires evidence of acquired distinctiveness to demonstrate that the relevant public has come to identify a particular brand characteristic as originating from one undertaking.
In the United States, the process for filing a non-traditional mark is relatively straightforward. However, applicants face similar hurdles to registration, as well as enforcement. The main challenge is often demonstrating that a non-traditional mark is non-functional, taking into account the varied ways in which US trademark law defines ‘functionality’. For those rights holders able to overcome this barrier, the next big challenge is often proving that a non-traditional mark has acquired distinctiveness in the marketplace and has come to be identified as signifying the source of the goods or services. Years of exclusive use only may not be enough to meet the burden of this high standard.
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