Building trademark expertise since 1986 NOVEMBER 2009| Issue 222 | Shapes, sounds and smells Non-traditional trademarks explored Nokia v HMRC Counterfeit transhipment case Chinese challenge Protecting brand 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 trade dress 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, intellectual property 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 logo 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