International In-house Counsel Journal Vol. 7, No. 25, Autumn 2013, 1

I Can Name that in Three Notes: Non-Traditional for Traditional Goods

KATHRYN BELLEAU Assistant General Counsel - and Procurement Legal, Pitney Bowes Inc., USA

People are exposed to trademarks on a daily basis. Trademarks are a part of everyone’s everyday life. Trademarks are used on clothing, food, entertainment, cosmetics, etc. Unlike other aspects of law, there is no minimum educational requirement or level of sophistication to understand and/or recognize what a is and how it relates to the goods and/or services with which it is used. Kids can readily recognize a brand from a young age, e.g., FISHER-PRICE toys. Teens recognize the well-known , e.g., COKE for soft drinks and NIKE for sports shoes. Along with these words that are used as trademarks, brand owners also use stylized lettering or designs. COCA-COLA uses stylized lettering for their soft drinks and Nike utilizes a Swoosh design on its sports shoes. These designs are also well recognized as trademarks by the general public. What people are less familiar with are the non-traditional marks that companies use to distinguish their goods and/or services from those of their competitors. One of the most common is the use of color. Other non-traditional types would be the non-functional shape of the goods or packaging for the goods; sound, usually in the form of musical notes; texture, the feel of a product or label therefor; finally, smell. All of these non- traditional trademarks need to be handled in a particular manner in order to ensure that rights are established and, once perfected, are not lost by misuse. Because a trademark identifies the source of the goods and/or services by the very nature of what a trademark is, words and designs are not the only manner of identifying the source. An identification can be made based on many different factors, all of which fall under this “identity of source” definition. In any article about trademarks, whether traditional or not, it is important to reiterate the definition propounded by the United States Patent and Trademark Office is: A trademark is a brand name. A trademark or includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. (http://www.uspto.gov/trademarks/index.jsp) The term “trademark,” as used in this article, shall be used to denote a trademark or a service mark. We are familiar with a trademark that is a word or symbol, e.g., CITIBANK; a symbol or device, e.g., the NIKE Swoosh , or a combination of a word and design. These trademarks identify the source of the goods/services, which is the foundation of trademark law. When a consumer looks at a word or symbol that identifies the source, he/she expects certain consistency and level of quality of the product associated therewith.

International In-house Counsel Journal ISSN 1754-0607 print/ISSN 1754-0607 online 2 Kathryn Belleau

There are other types of trademarks companies utilize which do not fall under the traditional concept of a trademark, for example, color, shape, sound, smell, and touch. These are more difficult to identify. In fact, one may not even realize that what they are used to see, smelling, touching, etc. is actually a company’s trademark. When a consumer identifies a color, for example, with a particular product and/or company that is the true definition of a trademark and trademark usage as it ultimately identifies the source. In order to get a better idea of these specific types of non-traditional trademarks, I have broken out each unique type of trademark, describing the features and benefits of each type of trademark, what is deemed an acceptable use, from not only a pure trademark perspective, but also from a Trademark Office perspective to understand what is proper use, and what is an acceptable specimen. The basic focus of this article is offered from a U.S. perspective, however, at the end of this treatise I have identified several jurisdictions where such non-traditional trademarks may be accepted on a global basis. Not every international trademark office has accepted these non-traditional trademarks as appropriate trademark use and does not give such marks any protection. When looking to non-traditional trademarks, the trademark owner must take into consideration the fact that there is a big educational process involved in getting the consumers to link these trademarks with its goods and/or services. The association needs to be made in the consumer’s mind when seeing, hearing, smelling or feeling these marks with the relevant goods and/or services. This also requires use of the non-traditional mark(s), under U.S. law. In order for a non-traditional mark to acquire secondary meaning as a trademark or be registered based on acquired distinctiveness, U.S. law recognizes five (5) years continuous and exclusive use of the mark as satisfying this criteria for registering such a mark. In addition, because of the nature of these trademarks and the scope of protection afforded and registration on the Principal Register, there needs to be a considerable amount of evidence in support of this claim. Appropriate evidence would be, in addition to the five (5) years of use, examples of advertising and promotional material relevant to the type of mark. A color mark will likely be promoted differently than a scent mark. Advertising expenditure is taken into consideration. It will, likely, at least initially, be more expensive to promote the non-traditional trademark as a brand of your company. The amount of money spent and the type of advertising done are an important consideration. However, probably the most persuasive evidence of all, consumer declarations. Since a trademark is supposed to identify the source of the goods and/or services, a consumer declaration to that effect is given a considerable amount of weight when determining whether or not this non-traditional trademark has acquired secondary meaning entitling it to formal registration. Focus groups, which can be an expensive though well-recognized resource, should also be considered. If research is conducted and a mark has been registered under §2(f), this means that the trademark owner has relied upon, and been deemed to have, a protectable non-traditional mark based on acquired distinctiveness and has furnished some or all of the aforementioned evidence in support of this claim. COLOR There are different types of color marks. There are the ones where the word mark or design itself is of a specific color used solely in conjunction with the specific word. An example of this is for supermarket services. The color marks being discussed herein that are deemed to fall within the non-traditional description relate to color as applied to the goods, a portion of the goods, or the packaging for the goods. Brand Clearance 3

An example is: The drawing is hatched for the colors purple and green; the mark covers a variety of goods including CDs and luggage and also entertainment services. The leading case in this area is In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985). It relates to the color pink as applied to fiberglass residential insulation. The color pink was deemed not functional because the color pink is not required for the product to work. It does not identify a feature, quality or function of the product. In addition, the color was found to be registrable because the applicant submitted evidence in the form of advertising, packaging, consumer recognition, etc. for the requisite period of time that showed that the color had acquired secondary meaning. Merely entering a claim of long-term use is not sufficient to support a claim of acquired distinctiveness without the additional factors. In addition, Owens Corning, to promote its color PINK, developed a concerted advertising campaign. It not only used that color scheme for the wording and background of its advertising, but used the Pink Panther as its “spokesperson.” This was a subtle but effective way of educating the public that PINK is a color to be associated with Owens Corning and, initially, their home insulation, but ultimately, other offerings from the company. As with traditional trademark applications, a drawing of the mark is required. “Color marks are visual and should be depicted in color drawings, accompanied by: (1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement naming the color(s) and describing where the color(s) appear and how they are used on the mark. 37 C.F.R. §2.52(b)(1).” (TMEP §1202.05 (d)) There is a basis in practicality when it comes to showing the non-traditional mark in a drawing; sometimes depending upon what the goods actually are, for example, if the mark consists of color(s) used on liquids or powders. The mark might consist of fuchsia body oil or red, white, and blue granular washing machine detergent. In these cases, the nature of the drawing will depend on the manner of use of the liquid or powder. If the liquid or powder is visible through the product package, the drawing should consist of the shape of the product package shown in broken or dotted lines, with the description of the mark identifying the color(s) of the liquid or powder. SHAPE Another non-traditional mark covers shape, but in this instance, the shape cannot be functional or the subject matter of a utility patent which would promote the functionality. It needs to be a non-functional ornamental design; it could be the subject of a design patent that, by its nature, protects ornamental designs. An example of a shape that is not protectable would be the shape of the handle of a hand tool that may have a wavy design on the grip for use by the consumer and have ergonomic features. Here, the shape would be necessary for the user to utilize the tool. An example of a protected trademark for shape is the Haig & Haig whiskey bottle. The bottle may be functional to as a container to hold the product, however, the design feature, i.e., the concave or pinched sections are not functional but are a design feature. A cylindrical or square bottle would work as well and not be protectable as being functional: . As with other non-traditional trademarks, as long as the shape of the product is not useful and serves a purpose, it is entitled to trademark protection. The specimen furnished with the application is usually a photograph of the product showing the unique features, and the 4 Kathryn Belleau application also needs to include a description of what the mark covers. In the Haig application the mark is the configuration of the container for the goods with the unique concave inserts. SOUND A sound application has its own unique issues unlike some other non-traditional trademarks. For a sound trademark application to be complete, no drawing can be submitted. “Sound” cannot be the subject of a drawing because it is non-visual. Therefore, the description of the mark, which can identify the notes or sounds that comprise the mark, is critical to be able to identify the mark. In addition the specimen for the mark can be in the form of a .wav, .mp3, or something similar so that the Examiner can hear the trademark. If necessary, the specimen may be a video if that better identifies the trademark to the Examiner and, ultimately, the consuming public. A leading trademark in this area, which goes back to 1970, is the NBC sound registration for the three-note trademark. The description of the mark is “the mark comprises a sequence of chime-like musical notes which are in the key of C and sound of the notes G, E, C, the "G" being the one just below middle C, the "E" the one just above middle C, and the "C" being middle C, thereby to identify applicant’s broadcasting service.” Based on the description and the .wav file furnished as the specimen, it is clear what the mark is. Harley-Davidson, Inc. attempted to get protection for the unique sound of their motorcycles with the following description, “the mark consists of the exhaust sound of applicant's motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use,” claiming a date of first use back to 1930. Even though the examiner accepted this as a trademark and it went to publication, it was opposed and the opposition upheld. The opposer felt that the scope of protection would have been too broad. Notwithstanding this decision, most people can recognize the unique sound of a Harley-Davidson motorcycle. SMELL The non-traditional trademark for smell is one that most people do not understand. It would be obvious to consider that the specific odor of a perfume is a trademark. However, since smell is a feature or quality of the product, it cannot function as a trademark. A standard refusal from the Examiner would be that the applied-for mark, as shown on the specimen, does not function as a trademark because it is scent and is not inherently distinctive of the goods. According to the TMEP §1202.13, “The scent of a product may be registrable if it is used in a non-functional manner.” Scent has been found protectable for sewing thread and embroidery yarn and motor oil. However, the scent of an automobile air freshener serves a utilitarian purpose, and is, therefore, considered to be functional and not registrable. It is important to take into consideration that the amount of evidence required to establish that a scent or fragrance functions as a mark is substantial. Here, again, the standard drawing is not possible so the description of the mark is important, along with the specimen of use in order to demonstrate to the Examiner exactly what the trademark is and how it is used in connection with the goods and/or services. The Trademark Manual of Examining Procedure clarifies this [note, the same holds for a flavor trademark]: Pursuant to TEMP §904.03(m): “To show that the specimen for a scent or flavor mark actually identifies and distinguishes the goods and indicates their source, an applicant must submit a specimen that contains the scent or flavor and that matches the required description of the scent or flavor. In most cases, the specimen will consist of the actual goods themselves because Brand Clearance 5 the examining attorney must be able to smell or taste the scent or flavor in order to determine whether the specimen shows use of the mark in connection with the goods. When submitting such a specimen, the applicant should clearly indicate on the specimen itself that it is a specimen for a scent or flavor mark application so that the USPTO will properly route the actual specimen to the examining attorney. A “scratch and sniff” sticker for a scent mark is an acceptable specimen, provided that it is part of the packaging for the goods or is used in such a manner as to identify the goods and indicate their source.” SUMMARY With the variety of non-traditional trademarks and service marks available to corporate marketing departments, it is important to take a step back and see whether any of these sorts of marks are relevant to the types of goods and/or services being offered. Sometimes there is a competitive advantage to developing a marketing plan that is deemed, for all intents and purposes, to be “outside the box” or diverging from the norm. It may result in consumers looking at the goods and/or services in a new light and in a way that shows that the branding plan is thought provoking, new and fresh – not just words and phrases incorporating random designs. It is critical that any marketing plan that utilizes any of these non-traditional trademarks takes into consideration the amount of education needed for the general consumer as well as the unique way the trademark is to be incorporated in any marketing plan. For example, FFS Holdings promoted the scent of coconut for retail store services. One would not consider a smell to identify a service. However, the subtle aroma of coconut wafted through its stores when a customer entered. Because the smell served no function, but was still apparent to consumers as being an odor unique to these stores, when they were asked to complete declarations in support of the trademark claim, that would associate the retail stores with the odor in the consumers’ mind, they all recognized the coconut smell as being associated with the applicant. In addition, through their advertising campaign, they further emphasized the relationship between the coconut smell and the type of products offered by the stores (reminiscent of pina coladas as the clothing was primarily beachwear). This is a unique way to have a non-traditional trademark acquire secondary meaning for a service. So, a directed advertising campaign, specimens highlighting the non-traditional trademark, and care to ensure that the trademark is not functional, are key to looking towards protecting non-traditional marks for a company’s goods and/or services. Because we are all looking at our marketing campaigns from a global perspective, it is also important to note whether or not such non-traditional marks will be afforded protection outside of the U.S. and in your specific jurisdictions. I have chosen a handful of countries where some limited protection may be obtained but it is always important to look to your long-term marketing plan and, if necessary, consult a trademark expert. Finally, the Appendix attached hereto gives some examples from the United States Patent and Trademark Office of non-traditional trademarks. NON-U.S. NON-TRADITIONAL MARKS Australia: Marks that can be reproduced graphically and can distinguish the goods or services of one entity from the other are protectable. This includes certain three- dimensional shapes, color, sound and smell are all protectable. Brazil: Marks that can be reproduced graphically and can distinguish the goods or services of one entity from the other are protectable. This includes certain three- dimensional shapes and color combinations but not color on its own. 6 Kathryn Belleau

Canada: The shape of the goods or the container therefore is registrable with evidence of distinctiveness. Non-functional shapes are, in general, inherently registrable without evidence of distinctiveness. Color is only registrable if the shape is distinctive or if it is applied to the goods of a particular shape. Color per se is not registrable. China: Marks that can be reproduced graphically and can distinguish the goods or services of one entity from the other are protectable. This includes certain three- dimensional shapes and color are protectable. Community Trademark (CTM – covering 28 members of the ): Since use is not an issue when it comes to a CTM, acquired distinctiveness is not required for registrability. Certain three-dimensional shapes, color, sound and smell are all protectable. Japan: Marks that can be reproduced graphically and can distinguish the goods or services of one entity from the other are protectable. This includes certain three- dimensional shapes without any limitation or claim to color. Mexico: Marks that can be reproduced graphically and can distinguish the goods or services of one entity from the other are protectable. This includes certain three- dimensional shapes. Combinations of color are protectable but not color on its own. *** Kathryn Belleau has been in the intellectual property field for more than thirty years, working for both law firms and as in-house counsel. She has been in her current position with Pitney Bowes Inc. for five years. With a strong international background, and knowledge of several foreign languages, she is able to offer a global view to her clients and a versatility and insight not readily available from others without an international background. In addition to practicing intellectual property law, she also teaches several sessions on Trademarks, US and Global Enforcement, and Domain Names and at UCONN Law School. Pitney Bowes provides technology solutions for small, mid-size and large firms that help them connect with customers to build loyalty and grow revenue. Many of the company’s solutions are delivered on open platforms to best organize, analyze and apply both public and proprietary data to two-way customer communications. Pitney Bowes includes direct mail, transactional mail and call center communications in its solution mix along with digital channel messaging for the Web, email and mobile applications. Pitney Bowes: Every connection is a new opportunity™. www.pb.com.