Consideration of Non-Traditional Trademarks in Branding Strategy

Many are surprised to learn that a scent can be a trademark. For example, toy and board game company Hasbro has registered the “Play-Dough” scent mark, which it described as “a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” The Play-Dough scent mark is one about a dozen active scent mark registrations in the U.S. Patent and Trademark Office. Other registered scent marks include bubble gum scent for sandals, registered by Brazilian footwear company Grendene for its line of bubble gum-scented jelly sandals, and coconut scent mark, obtained by footwear chain Flip Flop for sandals.

So, what is a trademark? Broadly speaking, a trademark is defined as any attribute, feature or characteristic, which can act as a source identifier. Traditionally, trademarks consisted of words or symbols.

There are, however, several types of “Non-Traditional” trademarks, including color, sound, scent, business décor, product design, texture, motion, flavor and marketing techniques, which are also capable of acting as source identifiers. Often unknown and overlooked, non-traditional marks can play an important role in protecting and promoting a business’ image and enhancing appeal for its products and services. Prior to enactment of the current U.S. trademark law, known as the Lanham Act, which was signed into law in 1946, trademarks were restricted to words and symbols. The Lanham Act vastly expanded the scope of potentially protectable marks by providing that “nothing … shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.” Since then, courts, the USPTO and congress have gradually expanded the universe of features, attributes and characteristics that can potentially act as source identifiers, to expand the list of the non-traditional marks. Thus, sound was first registered as a mark in 1950; marketing techniques gained recognition as a trademark in 1982; scent was first registered as a trademark in 1990; restaurant menu and décor were found to be protectable in 1992; and pure color was added to the non-traditional list in 1995. A basic requirement for all trademarks is distinctiveness. Distinctiveness can be inherent in the mark itself or acquired by consumer recognition through use in trade and commerce.

Protectable word marks are classified in categories of generally decreasing distinctiveness as fanciful, arbitrary, suggestive and descriptive. The first three categories are deemed to be inherently distinctive and are entitled to registration. Descriptive word marks are not protectable unless they have established “acquired distinctiveness,” by a showing of “secondary meaning,” i.e., that consumers have come to associate the mark with the source. Sound marks was the first category of non-traditional mark to gain registration at the USPTO shortly after enactment of the Lanham Act, when NBC successfully obtained registration for its musical chimes in 1950. Perhaps the best-known sound trademark is MGM’s lion roar, which has been a recognized mark for identifying MGM’s films for decades.

The USPTO allowed registration of the first scent mark in 1990. The mark at issue was described as “a high impact, fresh, floral fragrance reminiscent of plumeria blossoms” for sewing thread and embroidery yarns. Smead Manufacturing has obtained registration of scent marks of apple cider, peppermint, vanilla, peach, lavender, and grapefruit in connection with “office supplies, namely, file folders, hanging folders, paper expanding.

Restaurant décor, defined as the totality of elements making up the look and feel of a restaurant, was recognized as a protectable mark in 1992 by a decision of the U.S. Supreme Court. The mark at issue was described as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.” Likewise, the method of arranging and displaying wine in a retail store has been found to be protectable.

Color was admitted into the non-traditional trademark club by another decision of the U.S. Supreme Court in 1995. Even a single color can function as a source identifier and thus be entitled to protection as a trademark. For example, a mark descried as “a special shade of green-gold color on the pads that it makes and sells to dry cleaning firms for use on dry cleaning presses” was found to be protectable. In another case a court found that color combination of pills can be protectable. Other examples include the UPS, which successfully obtained registrations for the color chocolate brown for its delivery trucks and uniforms, and Christian Louboutin, which owns a registration for the color red as applied to women’s designer footwear.

In the category of sensory marks, back in 2006, the USPTO issued a trademark to American Wholesale Wine & Spirits, Inc. for a “velvet textured covering on the surface of a bottle of wine for use in connection with wines.” Louis Vuitton received a trademark for “distinctive man-made textured pattern utilized as a surface feature of applicant’s variously configured products.”

Product shapes have long held to be protectable. The classic Coca-Cola bottle obtained registration in 1960. Gucci’s “G” shaped watch face was held to be protectable. Later, the shape and overall design of Ferrari vehicles was found to be protectable.

A mark that can’t qualify for registration for lack of distinctiveness, has the option of registration on the supplemental register. Thus, a number of applicants have amended their applications for registration on the principal register to applications for registration on the supplemental register after encountering an acquired distinctiveness refusal. Examples include an application for an apple cider scent, for a peppermint scent, for a vanilla scent, for a peach scent, for a lavender scent and for a grapefruit scent, all in connection with office supplies. After a mark has existed for five or more years on the supplemental register and additional evidence of acquired distinctiveness has been obtained, the registrant may file a new application for registration of its mark on the principal register.

By, Dr. Dariush Adli President of ADLI Law Group