1. Non-Traditional Trademarks
American Intellectual Property Law Association
Non-Traditional Trademarks
JTA/AIPLA Joint Meeting
April 8, 2013
Joseph A. Calvaruso Orrick, Herrington & Sutcliffe LLP

2. Background a) used by a person . . .
“any word, name, symbol, or device, or any combination thereof . . .
a) 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. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995)
Goods: “machine parts; namely, press pads and covers for press pads for commercial and industrial presses”.
Color: “a particular shade of green-gold applied to the top and side surfaces of the goods”.
The USPTO registered the plaintiff’s color mark but when suit was brought to enforce the mark against a competitor, the courts initially held the registration to be invalid.
The Supreme Court reversed the decision.

4. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995) (cont’d)
“[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)

5. EXAMPLES OF NON-TRADITIONAL MARKS: Color Mark, Tiffany and Company

6. EXAMPLES OF NON-TRADITIONAL MARKS: Three-Dimensional Mark, The Coca-Cola Company

7. EXAMPLES OF NON-TRADITIONAL MARKS: Sound Mark

8. EXAMPLES OF NON-TRADITIONAL MARKS: Sensory Mark

9. EXAMPLES OF NON-TRADITIONAL MARKS: Sound Mark, National Broadcasting Co., Inc.

10. EXAMPLES OF NON-TRADITIONAL MARKS: Sensory Mark, Moroccan Oil, Inc.

11. EXAMPLES OF NON-TRADITIONAL MARKS: Motion Mark, Yamaha

12. PROVING ACQUIRED DISTINCTIVENESS LITIGATION
Acquired distinctiveness (also referred to as secondary meaning) requires proof that the consuming public associates the mark with a single source.
It is not necessary to prove that the relevant public can identify the source of the product by name.

13. PROVING SECONDARY MEANING OR ACQUIRED DISTINCTIVENESS
Factors for proving secondary meaning include:
direct evidence
testimony from individual purchasers
consumer surveys showing that the mark is associated with a single source

14. PROVING SECONDARY MEANING OR ACQUIRED DISTINCTIVENESS (cont’d)
Factors for proving secondary meaning include:
indirect evidence
amount of advertising expenditures
types and extent of advertising
length, manner and exclusivity of use
sales success
unsolicited press coverage mentioning the mark

15. FEATURE, IF FUNCTIONAL ≠ TRADEMARK
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.

16. COLOR MARK: Louboutin v. Yves Saint Laurent America Inc. , Docket No
COLOR MARK: Louboutin v. Yves Saint Laurent America Inc., Docket No (2d. Cir., Sept. 2012)

17. COLOR MARK: Louboutin v. Yves Saint Laurent America Inc. , Docket No
COLOR MARK: Louboutin v. Yves Saint Laurent America Inc., Docket No (2d. Cir., Sept. 2012) (cont’d)
[I]n fashion markets, color serves not solely to identify sponsorship or source, but it is used in designs primarily to advance expressive, ornamental and aesthetic purposes.
The law should not countenance restraints that would interfere with creativity and stifle competition by one designer . . .

18. Second Circuit Decision
COLOR MARK: Louboutin v. Yves Saint Laurent America Inc., Docket No (2d. Cir., Sept. 2012) (cont’d)
Second Circuit Decision
Reversed the district court, holding that a single color can serve as a trademark in the fashion industry so long as secondary meaning is established.
Louboutin established secondary meaning in the marketplace, but only when the red sole contrasts with the remainder of the shoe.

19. Second Circuit Mandate to USPTO
Pursuant to 15 U.S.C. § 119, the Director of the United States Patent and Trademark Office shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597 held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.

20. USPTO Proposed Amendment
The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the “upper”). The dotted lines are not part of the mark but are intended only to show placement of the mark.

21. Louboutin’s Proposed Amendment
The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark.

22. Sound Marks
Sounds that are inherently distinctive can be registered without a showing of acquired distinctiveness.
Commonplace sounds (e.g. alarm clocks, telephones) made in the “normal course of operation” may be registered only with evidence that purchasers recognize the sound and associate it with a single source.
Sound marks may not be registered if functional.
Trademark “Sound Mark” Examples, sp

23. SOUND MARKS: Ride the Ducks L. L. C. v. Duck Boat Tours, Inc. , No
SOUND MARKS: Ride the Ducks L.L.C. v. Duck Boat Tours, Inc., No. 04-CV-5595 (E.D. Pa. March 21, 2005)
Registered service mark for “a quacking noise made by tour guides and tour participants by use of duck call devices throughout various portions of [tours over land and water by amphibious vehicles].”

24. SOUND MARKS: Ride the Ducks L. L. C. v. Duck Boat Tours, Inc. , No
SOUND MARKS: Ride the Ducks L.L.C. v. Duck Boat Tours, Inc., No. 04-CV-5595 (E.D. Pa. March 21, 2005) (cont’d)
Court’s Decision
Plaintiff’s quacking noise was a familiar noise that was not inherently distinctive.
Plaintiff had not produced enough evidence of secondary meaning
sound mark had been in use for only one tourist season;
advertising was not directed at making the sound representative of plaintiff’s services; and
evidence showed that customers associated the physical device with plaintiff but not the sound itself.

25. SENSORY MARKS: Scent, flavor, and taste
Must be distinctive and used in a nonfunctional manner.
e.g. a perfume scent is considered functional and not registrable.
If the sensory mark is not functional but has not yet acquired distinctiveness, can be registered on the Supplemental Register.

26. SENSORY MARKS: Scent, flavor, and taste (cont’d)
In re Clarke 17 U.S.P.Q 2d 1238 (T.T.A.B 1990)
Application to register scent of Plumeria blossoms for sewing thread and embroidery yarn
Applicant showed acquired distinctiveness through use – But
“[t]he amount of evidence required to establish that a scent or a fragrance as mark is substantial” TMEP §

27. SENSORY MARKS: In re Pohl-Boskamp BmbH & Co. KG, Serial Nos
SENSORY MARKS: In re Pohl-Boskamp BmbH & Co. KG, Serial Nos and (Feb. 25, 2013)
Application to register the flavor and scent of peppermint as a trademark for nitroglycerin spray product used to treat chest pain.
Board noted that nothing in Trademark Act precludes the recognition of flavor or scent as a trademark.

28. Board Refused Registration:
SENSORY MARKS: In re Pohl-Boskamp BmbH & Co. KG, Serial Nos and (Feb. 25, 2013) (cont’d)
Board Refused Registration:
Mark failed to function as a trademark to identify and distinguish Applicant’s goods.
“The critical question before us is whether the flavor and scent sought to be registered would be perceived as source indicators or merely as physical attributes of applicant’s pharmaceutical product.”

29. SENSORY MARKS: In re Pohl-Boskamp BmbH & Co. KG, Serial Nos
SENSORY MARKS: In re Pohl-Boskamp BmbH & Co. KG, Serial Nos and (Feb. 25, 2013) (cont’d)
Insufficient evidence of acquired distinctiveness.
Although applicant’s marks had been in use a substantial amount of time, a directly competing product having a peppermint flavor and scent also was in the market.
Advertising materials made only passing reference to the flavor and scent but did not actually promote the features.
Declarations of physicians were deemed not persuasive because the testimony discussed numerous aspects of the product and were nearly identical.

30. What Brand Owners Can Do to Protect a Non-Traditional Mark
Choose a non-functional mark for which your exclusive use will not disadvantage competitors.
Choose a mark that is not “commonplace” or “familiar” with respect to the goods or services offered.
An extensive search of common law uses may be prudent since many sound marks are in use but not registered.
When registering a non-traditional mark, describe the mark with precision in order to make it easier for a court to compare the mark to an accused infringing mark in the event of litigation. E.g. utilize the PANTONE color system to define a color mark.

31. Enforcing a Non-Traditional Mark in Litigation
Seek to build acquired distinctiveness in the minds of consumers:
Engage in extensive advertising of the non-traditional mark.
Engage in advertising that causes consumers to equate the non-traditional mark with the source of the goods or services.
Advertise the product or service in a manner that makes clear that the mark is not simply ornamentation, decorative, or a mere product feature. i.e., “Look for ” advertising.
In advertisements, be careful not to advertise functional or utilitarian aspects of the claimed mark.

32. Enforcing a Non-Traditional Mark in Litigation
Keep careful records identifying the location of sales and advertising, and the amount of dollars spent advertising the non- traditional mark.
Keep records of media coverage depicting the non-traditional mark.
Use the non-traditional mark on an ongoing, uninterrupted basis as the length of use will be a consideration.
Consider conducting consumer surveys to submit as evidence that consumers associate the non-traditional mark with the brand owner.
Obtain individualized declarations from store owners or consumers who identify the goods or services with the brand owner based on the non-traditional mark.

33. Thanks for your attention! Questions?
Joseph A. Calvaruso
Orrick, Herrington & Sutcliffe LLP
51 West 52nd Street
New York, NY, 10019
Joseph A. Calvaruso