1. Non-Traditional Marks
Sharon Marsh
Deputy Commissioner for Trademark Policy
Cynthia C. Lynch
Administrator for Trademark Policy & Procedure
January 22, 2013

2. Product Design
RN for costume helmets and collectible toy helmets

3. Product Packaging
RN for edible oil in liquid form

4. Three-Dimensional Marks: Product Design or Packaging
Functionality:
Patents
Advertising
Alternative designs
Relative cost to manufacture

5. Product Design Functionality
In re Becton, Dickinson & Co., 675 F.3d 1368, 102 USPQ2d 1372 (Fed. Cir. 2012)
Design of closure cap for blood-collection tubes
Functionality refusal affirmed
Assessed overall design
Utility patent & ads touting utilitarian advantages
Dissent – majority addressed individual elements rather than mark as a whole; design patents & alternative designs weigh against functionality

6. Three-Dimensional Marks: Product Design
Distinctiveness:
Product Design – never inherently distinctive, per Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, (2000)
Heavy burden to establish distinctiveness

7. Product Design Quiz: Non-Functional & Distinctive?
In re Hershey Chocolate and Confectionary Corp., Serial No (June 28, 2012) [not precedential]
Configuration of a candy bar with 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle

8. Packaging: Inherently Distinctive? Seabrook Test
(1) a “common” basic shape or design;
(2) unique or unusual in a particular field;
(3) a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or
(4) capable of creating a commercial impression distinct from the accompanying words.

9. Three-Dimensional Marks: Product Packaging
In re The Procter & Gamble Co., 105 USPQ2d 1119 (TTAB 2012)
Refusal for lack of distinctiveness reversed
Design of mouthwash
Bottle cap deemed
inherently distinctive

10. Three Dimensional Marks: Product Packaging

11. Color Marks
Marks that consist solely of one or more colors used on particular objects or substances can serve as trademarks, per Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 161 (1995)
Usually perceived as an ornamental feature of the goods or services
Never inherently distinctive, per Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, (2000)
Can also be functional

12. Color Marks
RN for a variety of goods/services, including jewelry and retail
store services

13. Color Marks
Christian Louboutin S.A. v. Yves Saint Laurent America Inc ., 696 F.3d 206 (2nd Cir. 2012)
Reversed district court holding that a single color can never serve as a trademark in the fashion industry

14. Color Marks – Louboutin cont’d
Louboutin’s mark has acquired “limited” secondary meaning – registration to be amended
Affirmed denial of preliminary injunction against YSL’s use of red sole on red monochrome shoe

15. Sound Marks
Identify and distinguish a product or service through audio rather than visual means
For broadcasting of
television programs
For films and
entertainment services

16. Sound Marks In re Powermat Inc. (TTAB Jan. 18, 2013)
Sound mark for battery chargers
“The mark consists of five short electronic chirps, lasting less than half a second, with each chirp increasing slightly in pitch from the previous chirp.”
The chirps occur when a product is placed in or removed from the battery charger

17. Trade Dress Service Marks
RN for Retail store services featuring computers, computer software, computer
peripherals and
consumer electronics,
and demonstration of
products relating
thereto

18. Trade Dress Service Marks
In re Chevron Intellectual Property Group LLC, 96 USPQ2d 2026 (TTAB 2010)
Mark for “vehicle service station services and automobile maintenance and repair services”

19. Tactile Marks RN 3348363 for perfumes; colognes; and eau de toilette
Mark description includes "pebble-grain" texture and rubberized "soft-touch" feel.

20. Tactile Marks
RNs and for entertainment services and clothing
The mark consists of the wording "STEVIE WONDER" in Braille code and the corresponding raised dots

21. Motion Marks SN
for Telephony
communication services

22. Scent Marks
Strawberry and grape scents registered on the Supplemental Register for lubricants for land vehicles and watercraft (RN & )
Peppermint scent registered on the Supplemental Register for office supplies (RN )

23. Suggestions on non-traditional mark policy or procedure?