A Look at Non-Traditional Trademarks: Color, Sound & Scent In The United States
By Justin M. Jacobson, Esq.
Trademarks and service marks are essential and valuable assets of a company. They are used to identify the source of a particular good or service to the consuming public and are an indicator of the quality of the goods or services provided. A protected mark for a specific good or service helps a business increase its recognition and consumer loyalty. Additionally, an owner’s right in the mark continues to grow through use in commerce.
In the United States, a mark can be registered at either the state or federal level; however, prior to selecting a particular mark for a product or service, a trademark-screening search should be performed on all state and federal registered marks as well as pending marks. Based on the results of the search, a determination on whether to seek federal registration for the trademark can be made.
In America, trademark rights exist in both traditional and non-traditional marks. Words, phrases, symbols, logos and/or designs are all examples of traditional trademarks. In addition, to these traditional marks, exclusive rights can also exist for a particular color, sound, scent and/or any combinations of these. For the purpose of this article, we will focus specifically on non-traditional trademarks.
The Trademark Act of 1946, known as the Lanham Act, governs trademark matters in the United States. In the Supreme Court decision Qualitex Co. v. Jacobson Products Co, the Court ruled that non-traditional trademarks could be protected (514 U.S. 159). In order to protect a non-traditional mark, the Court required a finding of “secondary meaning.” “Secondary meaning” exists when the relevant consumers identify a particular mark for a certain product or service. This is typically due to an extended period of use of a mark for a specific service or good. This can be proved by submitting evidence that the mark has acquired distinctiveness through proof of sales success, advertising and promotional expenditures. This substantiates the length and exclusivity of use. Evidence can also include unsolicited media coverage confirming this fact, statements in the form of affidavits from industry leaders recognizing the mark as a source identifier as well as consumer studies and surveys substantiating this fact.
For trademark protection in a particular color, the color must “act as an indicator of source” and not serve any function. A few prominent examples of protected colors include: Home Depot’s “orange” color for “retail home improvement stores” (Reg. No. 4,300,027); Tiffany’s particular shade of blue used on its bags, boxes and catalogue for “Jewelry” (Reg. No. 4,804,204); Owens-Corning’s “pink” insulation for “foam insulation for use in building and construction” (Reg. No. 2,090,588); and, United Parcel Service’s (U.P.S.) “chocolate brown” as applied to the entire surface of its vehicles and employees’ uniforms for “transportation and delivery of personal property by air and motor vehicle” (Reg. No. 2,901,090). These protected colors have achieved secondary meaning, as the consuming public associates the protected color with the services provided by those companies. To protect a “color,” it is essential that the “color” is only used for promoting the brand’s identity without affecting the goods or services’ functionality.
Trademark rights may also exist in a particular sound that is distinctive and is describable in words. For example, a common telephone ring cannot become a registered trademark; however, a unique sound or musical arrangements utilized to indicate the source of specific goods or services can be protected. Examples of protected sounds include: NBC Universal’s chimes, described as “a sequence of chime-like musical notes which are in the key of “C” and sound the notes “G,” “E,” “C,” the “G” being the one just below middle “C,” the “E” just above middle “C,” and the “C” being middle “C” for “the broadcasting of television programs” (Reg. No. 916,522); MGM Studio’s “lion roaring” for “motion picture films and prerecorded video tapes” (Reg. No. 1,395,550); and, AFLAC insurance’s protected “sound of a duck quacking the word ‘AFLAC’” for “Insurance underwriting services in the fields of dental, health, life, cancer, hospital intensive care, accident and disability, hospital indemnity, hospital confinement indemnity, Medicare supplement, sickness, home healthcare, long-term healthcare, and convalescent health care” (Reg. No. 2,607,415).
Finally, a unique scent can also be protected as long as evidence exists that the scent has acquired distinctiveness for the listed goods or services and is not a functional part of a product. Examples of trademarked scents include: The Eddy Finn Ukulele Company’s “piña colada” scented ukuleles (Reg. No. 4,144,511); Brazilian company, Grendene’s “bubble gum” scented “shoes, sandals and flip flops” (Reg. No. 4,754,435); and, Lactona Corporation’s “strawberry” scented toothbrushes (Reg. No. 3,332,910). However, a particular perfume scent, such as “Chanel No. 5,” is unable to be registered due to the functionality requirement. Unlike many of the other forms of non-traditional trademarks, scent marks are extremely rare in the United States. This is due to the fact that the USPTO requires “substantial” evidence to prove distinctiveness (Trademark Manual of Examining Procedure § 1202.13). If an applicant is unable to demonstrate that a scent has acquired distinctiveness, the scent can only be registered on the Supplemental Register (Trademark Manual of Examining Procedure § 1202.13).
The use of traditional and non-traditional trademarks by a company is necessary for a business to distinguish themselves from their competitors. Without them, companies would be susceptible to similar products or services mimicking the successful aspects of the their brand. By extending protection to non-traditional, unique identifiers of a particular good or source, brands are able to fully protect the distinctive aspects that make their company’s unique services and products.
This article is not intended as legal advice as a professional specializing in the field, such as an attorney, should be consulted.
© 2017 The Jacobson Firm, P.C.