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

Product Design RN 3646331 for costume helmets and collectible toy helmets

Product Packaging RN 1858741 for edible oil in liquid form

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

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

Three-Dimensional Marks: Product Design Distinctiveness: Product Design – never inherently distinctive, per Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-216 (2000) Heavy burden to establish distinctiveness

Product Design Quiz: Non-Functional & Distinctive? In re Hershey Chocolate and Confectionary Corp., Serial No. 77809223 (June 28, 2012) [not precedential] Configuration of a candy bar with 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own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

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.

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

Three Dimensional Marks: Product Packaging

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, 211-12 (2000) Can also be functional

Color Marks RN 2359351 for a variety of goods/services, including jewelry and retail store services

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

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

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

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

Trade Dress Service Marks RN 4021593 for Retail store services featuring computers, computer software, computer peripherals and consumer electronics, and demonstration of products relating thereto

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”

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

Tactile Marks RNs 3495230 and 3495229 for entertainment services and clothing The mark consists of the wording "STEVIE WONDER" in Braille code and the corresponding raised dots

Motion Marks SN 3972865 for Telephony communication services

Scent Marks Strawberry and grape scents registered on the Supplemental Register for lubricants for land vehicles and watercraft (RN 2596196 & 2568512) Peppermint scent registered on the Supplemental Register for office supplies (RN 3140700)

Suggestions on non-traditional mark policy or procedure? Email tmtmep@uspto.gov