By: Suzan Hixon and Brittany Riley
Trademarks usually encompass words, logos, and images that are used to identify the source of a product or service. They appeal to our visual sense and our ability to relate what we see as an identifier. However, the scope of trademarks has been expanded to include four of the five senses: hearing, sight, touch, and smell. Companies have successfully registered sound, motion, texture, color, fragrance, product shape, and product packaging through the United States Patent and Trademark Office.
Some sounds automatically register with us as belonging to a certain product. A certain sound of a quacking duck immediately makes us think of Aflac. “Yahoo!” sung in a yodeling style causes us to picture an internet search engine. Although there are numerous sounds that are associated with certain services and products, not just any sound can be registered. Additionally, the sound cannot be commonplace in that it is normal in the course of operation. The sound must have an “acquired distinctiveness” in that it must be unique and distinctive. A distinctive sound is one that is capable of distinguishing the goods or services upon which it is used from the goods or services of others.
Motion marks on television and websites can be a very effective marketing tool. Unfortunately, researching motion trademarks in the United States can prove difficult. Although not much information exists regarding registering motion trademarks in the United States because it is rare, motion trademarks may be easier to register than sound trademarks because registrants do not have to prove acquired distinctiveness. The difficulty in registering a motion is in producing the drawings required by the USPTO.
Motion marks also include holograms. A hologram is used to perform the trademark function of uniquely identifying the commercial origin of products or services. In order to register a hologram as a trademark, there must be evidence that consumers would perceive it as an indicator of source. This standard is hard for trademark applicants to meet because the common use of holograms for non-trademark purposes means that consumers are less likely to perceive the use of holograms as trademarks.
Unlike a motion trademark, to register a texture trademark the registrant must prove that the mark has an acquired distinctiveness. However, a texture trademark has an additional requirement that may lead to difficulty in registration: the texture being registered cannot be a functional feature of the product. For instance, The David Family Group, LLC was able to register a mark that consists of a leather texture wrapping around the middle surface of a bottle of wine. On the other hand, the maker of BAWLS soft drinks was unable to register the bumpy textures of its bottles because the “bumps” served as grippers to keep the bottle from slipping out of consumers’ hands.
In the past, color, by itself and not as part of a design, has been considered incapable as serving as a trademark. The USPTO relied on numerous reasons for this conclusion, mainly mere functionality. Color was viewed as an enhancer of the aesthetic quality of the object or design. These conclusions regarding color marks still remain in some instances; however, a color mark can be registered if it consists solely of one or more colors and is not functional. A color will be deemed functional if it has a utilitarian advantage/purpose, is more economical, or is aesthetically pleasing and helps to improve the salability of a good or service. Companies such as UPS and Christian Louboutin have successfully registered color marks.
Successful registration of scent marks in the United States has been limited. The doctrine of functionality is the main reason for the restricted registration of fragrances. A seminal case allowed for the registration of scented sewing thread and embroidery yarn; however, at the time of registration, no other company had ever offered these products for registration. Recently, Amyris Biotechnologies, Inc. registered the citrus scent for biofuel.
With ever-changing technology, the registration of non-conventional trademarks is prevalent. Although the requirements for registration can be difficult to achieve, registration of such trademarks is important in protecting entrepreneurs’ rights to their products. The creation of new technology will allow us to see how far trademark protection will span; however, the definition of trademark inherently allows for a wide range of protection and flexibility.