June/July 2010 / Intellectual Property
Use of Non-Traditional Marks Expanding
The definition of a trademark is no longer limited to words or symbols. Courts and the U.S. Trademark Office have recognized a more liberal construction of trademarks, and increasingly protection is being sought for new forms of trademarks. These include audible, visual, tactile, and olfactory marks, and there may be others. These non-traditional marks also serve as source identifiers. The key to registering non-traditional trademarks federally is to convince an examiner in the U.S. Trademark Office that the average consumer associates a product’s attribute exclusively with a single source. To be eligible for registration a non-traditional mark must pass the same tests as traditional marks, distinctiveness and non-functionality.
The Supreme Court did not recognize that colors could serve as a trademark until 1995, when it held that color alone can be registered, but only where it has become a distinctive feature of the applicant’s goods. Since then a number of famous color marks have registered, including canary yellow for Post-it® Notes and pink for fiberglass insulation.
Shapes also can be registered. Coca-Cola has registered the shape of its bottle, and Mercedes-Benz has registered its vehicle hood ornament. Scent marks that have been registered include “lemon fragrance” for skin toner, “fresh grass” for tennis balls, and “vanilla” for office supplies – file folders, hanging folders, paper expanding files.
