Building expertise since 1986 NOVEMBER 2009| Issue 222 | Shapes, sounds and smells Non-traditional explored

 Nokia v HMRC Counterfeit transhipment case  Chinese challenge Protecting names  Online infringement Smart enforcement strategies

www.ipworld.com K US: NON-TRADITIONAL TRADEMARKS Building trademark expertise since 1986

United States: Shape, sound and smell marks

Lisa Martens and Alex Garcia explore levels of protection afforded to shape, sound and smell trademarks in the US

he marketing industry has always Pepsi then answered its own question in had a strong relationship with subsequent advertisements with “Pepsi Has T trademark law. This profession, the Swirl!” comprised of highly creative individuals, is Pepsi applied for registration responsible for developing some of the most for the shape and grooved appearance of its popular slogans, catch phrases and brand new soda bottle. The Trademark Trial and names of all time. Without their ingenuity, Appeal Board (Board) allowed the campaigns such as JUST DO IT (Nike) and registration of the new bottle, but the Board GOOD THINGS COME TO THOSE WHO excluded the registration from the Principal WAIT (Guinness) would not exist. Register, explaining instead that the proper However, advertising and marketing location for this new registration was the campaigns are not restricted to words or Supplemental Register. phrases. Rather, these professionals have a The evolution of trade dress continued to long history of utilising all of the human progress and eventually the Supreme Court senses to attract and retain consumer issued an opinion in Two Pesos, Inc. v Taco AUTHORS attention. From catchy musical tunes to Cabana, recognising that trade dress is Lisa Martens is a principal in the San distinctive three-dimensional designs, capable of inherent distinctiveness.2 Diego office of Fish & Richardson PC. current marketing and advertising practices Following on these early decisions, while Her practice emphasises trademark employ a vast array of gimmicks to entertain not true for the rest of the world3, non- prosecution and litigation for the food consumers. traditional trademarks in the United States service, health care, biotechnology, As these marketing and advertising have continued to expand and now computer, internet, and retail clothing techniques have evolved, so too must the incorporate anything that consumers can see, industries. Martens has significant laws that protect these practices, namely hear, smell, and sometimes even touch. experience in managing US and foreign trademark law. trademark portfolios for large Common burdens of registration international companies. History of the non-traditional mark While every format is different and presents Alex Garcia is an associate in the San Modern non-traditional trademarks arguably a unique set of obstacles, two universal Diego office of Fish & Richardson. His trace their roots to their predecessor, trade issues, functionality and distinctiveness, often practice emphasises trademarks, dress. hinder potential registration of non- copyrights, With the advent of television and other traditional trademarks. litigation, and media and modern media, advertisers quickly realised entertainment. the value in visually capturing consumer Avoiding functionality attention through the use of distinctive An obvious and well-established tenet of product packaging. While certainly not the trademark law is that a trademark should first attempt to attract consumers through never encompass a functional aspect of any the use of product configuration, a 1950s product. Reserved for the realm of patent Pepsi campaign asked consumers “Who’s Got law, a trademark is not an appropriate tool to the Swirl?”1 Shortly thereafter, Pepsi prevent third parties from using a functional launched a new soda bottle with unique aspect of a product. Furthermore, even if grooves, forming a swirl around the bottle. consumers recognise the functional aspect of

Reprinted from Trademark World #222 | November 2009 Building trademark expertise since 1986 US: NON-TRADITIONAL TRADEMARKS K

the product as a source-identifying feature, the proposed mark is still barred from If a party registered a shade of yellow for one registration. “product, and a second comer uses a slightly Demonstrating distinctiveness different shade of yellow for a similar product, in One of the original purposes of the reality, no matter what “shade” of yellow the Supplemental Register was to house the large number of applications for trade dress. second comer’s mark comprises, the second- The Supplemental Register offered applicants comer’s use of the colour yellow will likely be a limited scope of protection and provided them with the opportunity to obtain foreign found to infringe upon the party’s mark registration. ” Today, the Supplemental Register serves a similar purpose for non-traditional used with pharmaceutical tablets because not end with the fact finder’s assessment of a trademarks. It is often the case that non- they may identify a type or dose of the drug, likelihood of confusion. Even post-trial traditional trademarks are not inherently and white handles for cutlery because the injunctions are relatively difficult to enforce distinctive and require time to acquire white may assist in assessing the where the court must determine the distinctiveness before they are eligible for “cleanliness” of the products.7 appropriate boundary for each party’s use of advancement to the Principal Register. There are a number of practical and policy different shades of a colour. This has become Accordingly, the Supplemental Register issues which emerge with the enforcement of such a problem that some courts even serves as a temporary landing spot for some colour trademarks. At one time, colours were incorporate scientific colour detection non-traditional trademarks until they acquire not eligible for trademark protection, for fear techniques, such as the Pantone Matching the necessary distinctiveness for elevation to that registrants would deplete all available System, to enforce injunctions.10 the Principal Register. colours and prevent others from using As parties consider the registration of colours altogether. Advocates of this view colours, it is important to keep these issues in Non-traditional registration and argued that courts would also be unable to mind and, if possible, be the first to register. enforcement discern the true owners of numerous shades of colours. Shapes and 3D designs Single and multi-colour trademarks These concerns were resolved in the Similar to early product configurations and Colours add a creative element to any or Supreme Court’s Qualitex Co. v. Jacobson designs, three-dimensional shapes and design and are appealing to consumers. Prods. Co., Inc., decision where the court designs are a natural expansion of traditional They are also fairly easy to incorporate into found that the judicial system is fully capable trade dress. As a result, while considered marketing and advertising campaigns. of assessing similarities and differences non-traditional, these three-dimensional Accordingly, single and multi-colour among colours and that there is very little marks are merely a natural expansion of the trademarks are arguably the most common of realistic chance that registrants will deplete traditional. all non-traditional trademarks. So much so, all available colours.8 Unfortunately, while the Some great examples of modern three- that they may no longer need the “non- Supreme Court may have found that the dimensional trademarks are Porsche’s traditional” label. judiciary is capable of sorting through a vast registration for its very popular BOXTER For example, the “robin’s-egg blue” colour array of shades of colours, the court’s opinion line of sports cars and the National Academy for use with boxes, catalogues, and bags for a may not be the reality. of Television Arts and Sciences for its jewellery store suggests that someone will In litigation, the test is whether a Academy Award.11 soon receive an elegant piece of jewellery reasonably prudent consumer would be likely A three-dimensional mark often faces from Tiffany & Company, while a “chocolate to be confused between the parties’ use of challenges related to functionality. Similar to brown” delivery truck signifies that a two similar colours. If a party registered a traditional trade dress, three-dimensional package is on its way and will be delivered by shade of yellow for one product, and a second marks must not be functional. the United Parcel Service.4 -comer uses a slightly different shade of Like trade dress, three-dimensional shapes In Wal-Mart Stores, Inc. v. Samara Bros., yellow for a similar product, in reality, no or designs are capable of being inherently Inc., the Supreme Court decisively ended any matter what “shade” of yellow the second distinctive. However, similar to an argument debate over the issue of distinctiveness for comer’s mark comprises, the second comer’s of a “crowded field” in a traditional likelihood colour trademarks.5 The Court ruled that use of the colour yellow will likely be found of confusion analysis, sometimes if too many single-colour trademarks are never to infringe upon the party’s mark. third parties use the mark in a manner inherently distinctive and always require a Accordingly, the original registrant likely has sufficient to strip any source-identifying showing of secondary meaning. Multi-colour a monopoly over the colour yellow for its capability of a particular shape, the shape trademarks are subject to the same standard.6 goods or services. does not possess the required distinctiveness Applicants must avoid choosing colours However, it is important to note that this among consumers, making it generic. which are functional. Common examples monopoly is unlikely to extend to accessories, Borrowing from a traditional trade dress include black for outboard boat motors which are colour coordinated to match a example, a grape leaf on a wine bottle is not because the colour black minimizes the trademark owner’s mark.9 distinctive and is in fact generic.12 As a result apparent size of the motor, specific colours The difficulty of enforcing colours does of numerous third-party uses in connection K US: NON-TRADITIONAL TRADEMARKS Building trademark expertise since 1986

with wine, a grape leaf is simply not as a trademark must be “substantial”. distinctive. Accordingly, just as with any Musical scores are Further, trademark registration for fragrance other traditional word or phrase, applicants “better left to the trademarks is not permitted for scents or would be wise to select shapes or three- fragrances sold primarily for their fragrant dimensional marks which are unique and not realm of copyright law features, such as perfumes or colognes. Even commonly associated with a particular and are unlikely to some scented household products, designed product or service. to mask their chemical odours, are prohibited receive protection as from registration. Sound trademarks trademarks. Further, Those successful at registering fragrance Sounds have a great deal of source marks are able to register a particular identifying quality. They are easy to musicians cannot use fragrance or scent for aspects which would incorporate in television, radio, or internet trademark law in an not normally be viewed as incorporating marketing or advertising, often through traditional uses of a fragrance. For example, catchy jingles or other tag lines. Well known attempt to prevent successful applications include fragrances for examples of sound trademarks include the others from using automobile oil and for a type of yarn.18 Metro-Goldwyn-Mayer lion roaring at the Although, in all reality, many of these marks introduction of a movie and the chimes of the their songs begin on the Supplemental Register. National Broadcasting Company before or ” As a practical matter, those seeking after a television program.13 registration of a fragrance mark should Sound trademarks can be inherently While not as common as other non- submit a specimen comprised of a paper distinctive. If a sound is unique or different, a traditional trademarks, the sound trademark sample with the fragrance affixed to the piece trademark applicant need not demonstrate is eligible for protection in the United States, of paper. An often-used method of submitting secondary meaning to obtain registration. so long as it remains within the proper fragrance specimens is to submit a “touch to Obviously, non-distinctive sounds require a confines of trademark law and does not stray activate fragrance” sample in which the showing of secondary meaning. to the realm of copyright. examining attorney can activate the fragrance. Even if the United States Patent and While there is no categorical denial of Trademark Office (PTO) stamps its seal of Motion trademarks scents and fragrances, applicants should be approval on an application by passing it A trademark need not be static. While an especially aware of the heightened standards along for review and opposition, some sounds extremely rare breed, motion trademarks are for both distinctiveness and functionality and are simply incapable of registration. For eligible for registration and protection. For expect that the mark will be registered on example, in the late 1990s Harley-Davidson example, car manufacturer Toyota registered the Supplemental Register until they can attempted to register the sound of the the smiling face of a character which moves a prove acquired distinctiveness. exhaust from the engines of its motorcycles. hand and touches the top of its head and The PTO published the mark for opposition. Columbia Pictures has a trademark for the Texture trademarks Harley faced opposition from other moving view of a woman statue at the There is nothing which prohibits trademarks motorcycle manufacturers and spent several beginning of every movie.16 that are comprised of a specific texture or years before the Board in opposition Motion trademarks present a few different feel from receiving registration as a proceedings. Harley eventually abandoned issues. Obviously, the proposed mark must be trademark. For example, a wine bottle the application in 2000. both distinctive and non-functional. In consisting “of a velvet textured covering on Sound trademarks also create an registering a motion trademark, the the surface” is registered on the Principal interesting intersection of trademark and applicant should also use a drawing which Register.19 copyright law. Importantly, just because depicts a single point in the movement or up In our opinion, these fascinating marks copyright law may protect a proposed sound to five freeze frames showing various should be subject to the same standards as mark, this does not automatically prevent the movements, whichever does the better job of those employed with fragrance trademarks. sound from registration as a trademark, depicting the trademark.17 That is, there should be a “substantial” although, copyright law may not protect all connection between the texture and the sounds. Regardless, trademark law cannot Fragrance trademarks product, such that the texture adequately serve as a substitute for copyright law. Fragrances are very unique and could be a functions as a trademark. Further, as with For example, musical scores are better left new way for marketing or advertising gurus fragrance marks, one can envision a number to the realm of copyright law and are to exploit the human senses in an attempt to of issues wherein an applicant may seek to unlikely to receive protection as trademarks. distinguish their products within the utilise a specific texture to enhance the Further, musicians cannot use trademark law marketplace. Once deemed unavailable for functional aspects of a product, such as to in an attempt to prevent others from using trademark registration, fragrance marks are enhance the grip of a product or perform their songs. The frequently cited case of now eligible for protection, with certain some other functional purpose. These should Oliveira v. Frito-Lay, Inc.15 provides an restrictions. Fragrance marks are not be excluded as contrary to the principals of explanation of this proposition. There, a inherently distinctive and require a showing trademark law. court found that use of an artist’s “signature” of secondary meaning. Therefore, while these texture trademarks song in a television commercial did not The amount of evidence necessary to are extremely rare, there is nothing which constitute . demonstrate that a fragrance or scent serves would expressly prohibit their registration. K US: NON-TRADITIONAL TRADEMARKS Building trademark expertise since 1986

Flavour as a trademark services. So long as these new proposed 8 Qualitex Co. v. Jacobson Prods. Co., Inc., 514 While many have tried, at this time, trademarks fall within the appropriate U.S. 159 (1995). trademarks consisting of flavours or tastes are boundaries of trademark law, namely 9 Deere & Co. v. Farmhand, Inc., 560 F.Supp. unlikely to receive trademark registration or avoiding functionality and possessing a 85 (S.D. Iowa 1982). protection. A pharmaceutical company briefly requisite level of distinctiveness, there is 10 Olay Co., Inc. v. Cococare Prods., Inc., 218 attempted to demonstrate that a specific no reason why trademark law should not U.S.P.Q. 1028 (S.D.N.Y. 1983). flavour associated with its line of products was continue to evolve to protect these new and 11 United States Reg. No. 3,389,149 (filed Sept. eligible for trademark protection.20 However, exciting marks. K 21, 2006); United States Reg. No. 1,649,437 the Board rejected these attempts. (filed Feb. 23, 1989). The greatest obstacle for these proposed Notes 12 Kendall-Jackson Winery, Ltd. v. E. & J. Gallo marks is their functionality. Even if these 1 In re Pepsi-Cola Co., 120 U.S.P.Q. 468 Winery, 150 F.3d 1042 (9th Cir. 1998). marks were to gain sufficient source- (T.T.A.B. 1959). 13 United States Reg. No. 1,395,550 (filed Aug. identifying recognition to withstand an 2 Two Pesos, Inc. v. Taco Cabana, Inc., 505 15, 1985); United States Reg. No. 916,522 argument against their distinctive nature, U.S. 763 (1992). (filed Jan. 23, 1970). the purpose of a taste is largely functional, 3 Chikako Mori, The Future of Japanese 14 United States Application No. 74/485,223 as it serves to appeal to a consumer’s Trademark Law: Protection of Nontraditional (filed Feb. 1, 1994). palate. Trademarks, INTA Bulletin, Jul. 1, 2009. 15 Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. This is not to say that at some point in the 4 United States Reg. No. 2,416,795 (filed Aug. 2001). future, a marketing executive or other 24, 1998); United States Reg. No. 2,131,693 16 United States Reg. No. 3,442,655 (filed Mar. advertising guru will not create some new (filed Dec. 26, 1995). 16, 2006); United States Reg. No. 1,975,999 way to use flavour in a non-traditional 5 Wal-Mart Stores, Inc. v. Samara Bros., Inc., (filed Dec. 1, 1994). manner, apart from the obvious. If possible, 529 U.S. 205 (2000). 17 Trademark Manual of Examination and there is no reason why flavours should not be 6 Bd. of Supervisors for Louisiana State Univ. Procedure § 807.11 – Marks with Motion. recognized as trademarks if they are non- Agric. and Mech. Coll., et al. v. Smack 18 United States Reg. No. 2,568,512 (filed Sept. functional and distinctive. Apparel Co., 550 F.3d 465 (5th Cir. 2008). 19, 1997); In re Clarke, 17 U.S.P.Q.2d 1238 7 Brunswick Corp. v. British Seagull Ltd., 35 (T.T.A.B. 1990). Continued expansion F.3d 1527 (Fed. Cir. 1994); Shire US Inc. v. 19 United States Reg. No. 3,155,702 (filed Mar. It is inevitable that the marketing and Barr Labs., Inc., 329 F.3d 348 (3d Cir. 2003); 23, 2005). advertising industries will generate new Russell Harrington Cutlery Inc. v. Zivi Hercules 20 In re N.V. Organon, 79 U.S.P.Q.2d 1639 ways to identify their products and Inc., 25 U.S.P.Q.2d 1965, (D. Mass. 1992). (T.T.A.B. 2006).

Reprinted from Trademark World #222 | November 2009