1 1 AIPLA Firm Logo American Intellectual Property Law Association Registration of Non-Traditional Trademarks in the United States and Japan – Are they compatible? George W. Lewis （ジョージ・ルイス）米国弁護士 服部 健一 米国弁護士

2 2 AIPLA Firm Logo What is a Registrable Trademark under U.S. “any word, name, symbol, or device, or any combination thereof... used by a person... to identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods,...” (15 U.S.C. § 1127)

3 3 AIPLA Firm Logo The Broad Scope of Registrability “[T]he language of the Lanham Act describes [the universe of things that can qualify as a trademark] in the broadest of terms... since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally is not restrictive.” ― Qualitex v. Jacobson Prods. Co., 514 U.S. 159, 115 S. Ct (1995)

4 4 AIPLA Firm Logo The Basic Standard for Registration of Trade Dress as a Trademark Trade dress is registrable if the matter sought to be registered is: (1) inherently distinctive or has acquired distinctiveness; and (2) is not functional.

5 5 AIPLA Firm Logo INHERENT DISTINCITVENESS Three following factors are to be considered in assessing a package design whether the designs at issue are inherently distinctive: (1) whether the packaging is a common basic shape or design; (1) whether it is unique or unusual in the particular field, and (1) whether it is 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.

6 6 AIPLA Firm Logo ACQUIRED DISTINCTIVENESS LITIGATION Acquired distinctiveness (also referred to as secondary meaning) requires proof that the consuming public associates the mark with a single source.

7 7 AIPLA Firm Logo FEATURE, IF FUNCTIONAL ≠ TRADEMARK 特徴が機能的であると商標にならない  A feature is functional if it:  is essential to the use or purpose of the product, or  it affects the cost or quality of the product and would put competitors at a significant non-reputation related disadvantage.

8 8 AIPLA Firm Logo Color Mark 8 Mark Goods Red Bull Aktiengesellschaft Applicant Non-alcoholic Energy Supplying Beverages (Class 32) App. No Registered

9 9 AIPLA Firm Logo Color Mark 9 Mark Services Seven-Eleven Japan Applicant Retail Services (Class 35) App. No Not Registered

10 AIPLA Firm Logo EXAMPLES OF NON-TRADITIONAL MARKS: 非伝統的マークの例 Single Color as applied to the goods, Tiffany and Company ティファニーの箱 “The mark consists of a particular shade of green-gold applied to the top and side surfaces of the goods. The representation of the goods shown in phantom lining not a part of the mark and serves only to indicate position. The drawing is lined for the color gold.”

11 AIPLA Firm Logo Current Pending Application – Description of the mark: The mark consists of a border around the lid of a container. DRAWING SPECIMEN

12 AIPLA Firm Logo CURRENT PENDING ITU APPLICATION CLAIMIMG COLOR - ALLOWED DRAWING DESCRIPTION IF THE MARK The color(s) red, yellow, orange, blue, purple, green is/are claimed as a feature of the mark. The mark consists of an upside down rainbow in red, orange, yellow, green, blue and purple.

13 AIPLA Firm Logo The Application was rejected because the mark was an ornamental design and because the mark of the drawing and the specimen are different. Drawing submitted with ITU application Specimen submitted with the Statement of Use

14 AIPLA Firm Logo Allowed Pending ITU Application Serial No for GUM DESCRIPTION OF MARK: The mark consists of A circular- shaped shield with a line dividing the shield in half and a sparkle on the upper right half. Will likely be rejected when the Statement of Use is submitted because issue related to use are not examined until the Statement of Use is submitted Is this registrable in JPO? IS it registrable under U.S. law” What is the actual mark of the Application © AIPLA

15 AIPLA Firm Logo The Application was rejected because the mark of the drawing and the specimen are different. Drawing submitted with the application Specimen submitted with the Statement of Use

16 AIPLA Firm Logo Sound Mark 16 Mark Goods Registrant Tea, Tea Drinks Ito En This trademark consists of a person’s voice saying “O-i Ocha (“Hi, tea”)”, and is four seconds long. Registered Reg. No

17 AIPLA Firm Logo SOUND MARK in the U.S. A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they “assume a definitive shape or arrangement” and “create in the hearer’s mind an association of the sound” with a good or service. Specimen - applicant must submit a specimen that contains a sufficient portion of the audio or video content to show how the mark is used on or in connection with the goods/services/collective membership organization. The SOUND MARK must be affixed to the goods. Us in advertising i.e. an advertising jingle – will not likely qualify.

18 AIPLA Firm Logo Hologram Mark 18 Mark Services Sumitomo Mitsui Card Applicant The Issuance of Gift Cards and the Provision of Information Relating Thereto (Class 36) Reg. No Registered

19 AIPLA Firm Logo Holograms Not Registrable Drawing Must Show Only One Mark. –Differs from a three-dimensional mark and drawing – that is one drawing one mark. –Multiple drawings would be required to properly and fully display hologram and that would appear to violate rule of one application one mark

20 AIPLA Firm Logo Thanks for your attention! Questions? George W. Lewis, Esq. Westerman, Hattori, Daniels & Adrian