A company’s branding strategy and the associated trademark protection are critical to the company’s success in the marketplace. Trademarks surround consumers every day and help them to make valuable and informed decisions about the goods and services that they purchase. The more traditional trademarks generally use words, slogans or logos to create the branding for the selected goods and services. Consumers easily recognize the YouTube® trademark and associate it with the popular online video broadcasting services. Non-traditional trademarks have also been effectively used in the marketplace. Apple Inc. was recently granted a trademark registration for the three-dimensional shape of its iPod® media player. In this highly-competitive marketplace, companies should give consideration to the use and protection of non-traditional trademarks.
Trademarks are generally words, phrases, symbols or designs used to identify and distinguish the source of a company’s goods and services from its competition. More traditional trademarks involve the use of a word, slogan or logo in connection with certain goods and services. For example, when consumers see or hear the phrase “Just Do It®,” they immediately think of goods offered by Nike, Inc. Consumers also associate goods and services offered under a specific trademark with different levels of quality. The Lexus® trademark is generally recognized as being associated with luxury automobiles.
Nationwide protection is achieved by filing and registering with the United States Patent & Trademark Office. Registration is generally based on either use of the trademark in commerce or a party’s bona fide intent to use the trademark in commerce. Although one can use a trademark without federal registration, there are advantages to receiving federal registration. For example, a company that obtains federal registration of a trademark is presumed to be the owner of the trademark for the associated goods and services and is afforded exclusive nationwide use of the trademark within a recognized scope of business.
Non-traditional trademarks have also been effectively used in branding. In early 2008, Apple Inc. was granted a federal registration for the three-dimensional shape of its iPod® media player. Although Apple Inc. already owned a registration for the iPod® word mark, it saw the value of additional protection for the three-dimensional shape. As another example of the use of shapes as trademarks, The Coca-Cola Company uses, and has been granted a registration for, the familiar shape of its beverage bottle. When consumers see the Coca-Cola® bottle, they immediately think of goods offered by The Coca-Cola Company. Registration of a shape can be obtained so long as the shape is distinctive rather than merely functional. For example, if the shape aids or promotes better function of the bottle or the hand-held device, then the shape would not receive federal registration.
As an alternative to trademark registration of a shape, one may consider protection via a design patent. For example, a design patent can protect the design of a bottle, a hand-held device or jewelry. However, a design patent has a term of 14 years, while trademark protection lasts as long as use of the trademark continues.
Non-traditional trademarks also include the use of color as a trademark. Deere & Company uses the colors yellow and green in connection with its machines and equipment. Owens-Corning was granted a registration for the pink color of its insulation used in buildings. In contrast, the maker of the Pepto-Bismol® stomach medicine was unable to protect its pink color because such color was merely functional.
Non-traditional trademarks also include the use of sound as a trademark. The famous three-note chime used by NBC Universal, Inc., was one of the first registered sound trademarks. More recently, the quack of the AFLAC® duck has been registered in connection with insurance underwriting services.
Fragrances can also be used as non-traditional trademarks. A floral fragrance has been allowed as a trademark for sewing thread and was not considered functional when used in connection with such goods. However, the use of a fragrance in connection with perfumes or air fresheners, where the goods are known for such fragrance, would most likely be held functional and not granted protection.
In conclusion, a company should regularly review its branding strategy and the associated trademark protection for both new and existing goods and services. As a part of such review, the use of both traditional and non-traditional trademarks should be considered by the company’s marketing professional and legal counsel.
Vasilios Peros is a member at the law firm of Thomas & Libowitz, P.A., and heads the firm’s Technology & Intellectual Property practice. Munachi O. Nsofor is an associate at the law firm of Thomas & Libowitz, P.A.