“Trademark” is broadly defined in Section 45 of the Lanham Act, 15 U.S.C. §1127, as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes goods and indicates source. The same definitional breadth applies to service marks, certification marks and collective membership marks. The Supreme Court has supported such breadth where it stated in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995) “ … since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive.” [Emphasis added].
Is this a case of “anything goes” in the U.S. Patent and Trademark Office (USPTO) for registration of nontraditional marks? The answer appears to be in two parts: “almost,” given the broad range of nontraditional marks the USPTO has registered, and “not quite,” as the spectrum of distinctiveness applies and marks must not be functional.
Here are examples of many different types of nontraditional marks the USPTO has registered:
Sound marks: The cricket-like chirp for computer software that notifies consumers about weather conditions (RN 2827972), the “Looney Tunes” musical theme for “animated television programs,” among other services (RN 2469364), and the sound mark “D’OH” said by the Homer Simpson character (RN 3411881).
Scent marks: The PLAY-DOH scent for “toy modeling compounds,” which is defined as the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough” (RN 5467089); the scent of bubblegum for footwear (RN 4754435); grape-scented lubricants and motor fuels (RN 2568512); and store scents, such as “the flowery musk scent” in Verizon Stores (RN 4618936) and the coconut odor used by retail stores selling sandals, flip-flops and items for use at the beach (RN 4113191, cancelled due to nonuse).
Motion marks: The sequence of ducks walking from the outside to a fountain inside a hotel lobby and back outside, for “hotel services,” among other services (RN 2710415), and the scissor-like opening and closing of Lamborghini car doors (RN 2793439).
Hologram marks: Holographic paper reflecting a spectrum of color in a pattern of oblique, parallel lines for “cigarettes” (RN 2730207, cancelled due to nonuse of the mark).
Single color marks: The red sole of Louboutin women’s high-fashion shoes with a contrasting upper (RN 3361597), the pink color of fiberglass residential insulation (RN 1439132), yellow plastic baseball bats (RN 3579003), and the blue for stadium turf for intercollegiate sporting events and sports exhibitions given in a stadium (RN 3707623).
Color combination marks: The red and white Target bull’s-eye for retail department store services (RN 2473434) and the green and yellow color combination on John Deere forestry machinery (RN 4084104).
Trade dress: The early PlayStation controller (RN 2098696), the interior of retail stores for travel related products that looks like the interior of a 1960’s era passenger airplane (RN 3453856), a bottle with a painted interior that does not reveal the contents for “eau de toilette” (RN 3663724) and the spiral shape of a corn-based chip (RN 3839907).
Light marks: High-intensity columns of light in a preprogrammed rotating sequence projected into the sky to locate a source at their base, for high-intensity searchlights. (RN 2323892).
Texture marks: A flocked label for wines (RN 2751476).
Uniforms: The Atlanta Braves baseball uniform worn by a costumed mascot character for “entertainment services in the nature of baseball games and mascot performances” (RN 5581624).
While flavor marks theoretically are possible, in two instances, USPTO rejections of flavor marks were affirmed on appeal. In In re N.V. Organon, 79 USPQ 2d 1639 (TTAB 2006), the Trademark Trial and Appeal Board (TTAB) held an orange flavor as a trademark for flavored quick-dissolving antidepressant pharmaceuticals was functional because flavors are added to pharmaceutical preparations to mask their unpleasant taste, and that the flavor did not function as a mark because consumers would not perceive it as a mark. Similarly, in In re Pohl Boskamp GmbH & Co. KG, 106 USPQ 2d 1042 (TTAB 2013), involving a peppermint flavor and a peppermint scent for pharmaceutical formulations of nitroglycerin, the TTAB found the flavor was functional and did not function as a mark and the scent failed to function as a mark.
While the conceptuality of nontraditional marks may appear simple, the registration process for them is quite complicated. Should you wish to have a nontraditional mark registered, BakerHostetler’s attorneys are well-versed in the specific registration requirements for each type and stand ready to assist you.