Registration of Nontraditional Trademarks in the U.S. and EU

In recent years, innovative approaches toward brand creation and marketing have given rise to a new family of trademarks, referred to as nontraditional marks, which include, among others, color, motion and non-visual marks. Trademark laws in both the United States and Europe are being clarified to accommodate these new marks. Many such provisions are harmonious across both regions, but there are some procedural and substantive differences that should be considered before a company invests its time and resources into the creation of an international nontraditional brand. Further, registration of most nontraditional marks often requires a showing that the mark acquired distinctiveness through extensive use, which can be a heavy burden to meet under the law of both jurisdictions.

A nontraditional trademark can be visible or invisible. Visible marks include colors, lights, motion (moving images, such as the image on the computer screen when a browser is resolving a Web site), holograms, gestures, and positions (a mark that is specified by its position on a product (eg, the Mercedes three-point star). Non-visible marks include sounds, scents, tastes, and textures. The most common nontraditional trademarks are sound, color, and scent marks.

The Trend Toward Registration of Nontraditional Marks

In the United States

In the United States, a trademark is any word, name, symbol or device, or any combination thereof, used in trade to identify and distinguish one's goods or services from others in the marketplace. 15 U.S.C. '1127 (commonly referred to as the “Lanham Act”). The Lanham Act specifically provides that “no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration … on account of its nature” (save exceptions such as immorality, deceptiveness, etc.). Lanham Act, Section 2; 15 U.S.C. '1052. In 1995, the U.S. Supreme Court clarified that any mark capable of being or becoming distinctive, including colors, sounds and other nontraditional configurations, can function as a trademark. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 172 (1995).

Thus, nontraditional marks are accepted for registration in the United States, provided that they are capable of distinguishing a product. Most nontraditional marks are considered to lack inherent distinctiveness, but can acquire distinctiveness (secondary meaning) through use. A showing of acquired distinctiveness requires proof of substantially exclusive and continuous use of the mark in commerce to identify the source of one's goods or services. Five consecutive years of such use will support a claim of acquired distinctiveness. Lanham Act, Section 2(f); 15 U.S.C. '1052. A mark that has not yet acquired distinctiveness can be registered on the Supplemental Register (which offers narrower protection); the registration can be transferred to the Principal Register once secondary meaning is shown. Lanham Act, Section 27; 15 U.S.C. '1095.

As with conventional marks, a symbol or device will be denied registration if it is functional ' ie, if it is essential to the use or purpose of a product or service, or affects its cost or quality. See, Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982). For example, the color black was refused for outboard motors because black decreases the apparent size of the motor and is compatible with many different boat colors. Brunswick Corp. v. British Seagull, 32 USPQ 2d 1120 (Fed. Cir. 1994), cert. denied.

In the EU: The Community Trademark

The Harmonization Directive and the Council Regulation on the Community Trademark define a trademark as any sign capable of being represented graphically, provided that it is capable of distinguishing the goods or services of one undertaking from those of others. (First Council Directive of Dec. 21, 1988, to Approximate the Laws of the Member States Relating to Trade Marks (89/104/EEC), Article 2; Council Regulation of 20 December 1993 on the Community Trade Mark (40/94/EEC), Article 4). The European Court of Justice (“ECJ”) has continuously maintained, in several key cases decided in 2002-2003, that a nontraditional sign can function as a trademark as long as it has distinctive character and is capable of being represented graphically in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” way. See, Decision C-104/01; Decision C-273/00; Decision C-283/01.

The European definition of a trademark differs from that of the Lanham Act in two key aspects: 1) there is no requirement that a mark be used in commerce prior to registration (although one must show use if acquired distinctiveness is a prerequisite to registration); and 2) there is a requirement that the mark must be capable of graphic representation. As discussed in more detail below, the second difference has proved to be a stumbling block for scent marks in the European Union, and has been the subject of interpretation in several ECJ decisions concerning color, sound and scent marks.

As in the United States, nontraditional marks are generally considered to lack inherent distinctiveness, but can acquire distinctiveness through use. Harmonization Directive, Articles 3(1)(b) and 3(3). Acquired distinctiveness requires substantial evidence to show that a sufficient number of relevant persons recognizes the sign in question as a trademark. See, Examination Division Practice Note, Evidence of Use, v1, March 1999. Although some nontraditional marks have been registered without a showing of acquired distinctiveness, such a showing is likely to be mandatory in the future with respect to color marks. Decision C-104/01. Similar to the United States, a sign will be denied registration if it is functional. Council Regulations, Article 7(1)(e).

Treatment of Color, Sound and Scent Marks

Color

United States: The Supreme Court definitively allowed registration of colors per se in 1995. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (considering the green-gold color applied to dry cleaning press pads). A single color (ie, color that is not embodied in a logo or design) can be registered as a trademark if it meets “ordinary legal trademark requirements,” but it can never be inherently distinctive and may acquire distinctiveness only through secondary meaning. Qualitex Co. v. Jacobson Prods. Co., Id. at 160-161; see also Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (clarifying lack of inherent distinctiveness).

Practical Requirement: An applicant must submit a drawing, a color specimen and a detailed written description of the mark. Trademark Manual Examining Procedure, Chapter 1202.05(d), (e), (f).

European Union: The ECJ ruled that a color per se is capable of registration provided that it has a distinctive character and may be represented graphically. Decision C-104/01, 2003 (the Liebertel decision, considering the color orange for telecommunication services); Decision C-49/02, 2004 (the Heidelberger decision, considering combinations of colors). Both the Liebertel and the Heidelberger decisions emphasized that marks consisting of colors will not be registered without a showing of acquired distinctiveness, save in exceptional circumstances. Although several Community registrations have been granted for color and color-combination marks without a showing of acquired distinctiveness, post Liebertel and Heidelberger such registrations may be vulnerable to attack. As to the requirement for graphic representation, it is best met by indicating an internationally recognized color code, such as a Pantone code; a sample of the color is not sufficient. Liebertel, Decision C-104/01.

Sound

United States: A sound can serve as a trademark if it is sufficiently distinct to identify the commercial origin of a brand. See, In re General Electric Broadcasting Co., 199 USPQ 560, 563 (T.T.A.B. 1978) (setting forth the criteria for registration of sound marks). USPTO's general position is that sound marks can be inherently distinctive, but if the mark imitates a common sound, acquired distinctiveness must be shown. Familiar examples of registered sound marks are the NBC chimes (first registered in 1950) and the roar of the MGM lion. Harley Davidson's application to register the roar of its V-twin engine was allowed, but withdrawn after 6 years of opposition by competitors wishing to fire up their own V-twin engines without fear of infringement.

Practical Requirement: An applicant must submit a written description of the sound, accompanied by a specimen of a sound recording or a musical score; a drawing is not required. Trademark Manual of Examining Procedure, Chapter 1202.15.

European Union: A sound can function as a trademark provided it has a distinctive character and can be represented graphically. ECJ 2003, Decision C-283/01, the Shield Mark decision. A showing of acquired distinctiveness does not appear to be a prerequisite to registration, but the graphic representation requirement may be problematic for marks consisting of noises. While a musical score satisfies the requirement, a mere written description of the sound or an onomatopoeic description of a noise (eg, “kukelekuuuuu” for the sound of a rooster's crow) is not sufficient. Shield Mark decision. Thus, sounds that are difficult to set forth in a musical notation, such as a rooster's crow or a dog barking, may prove difficult to register. The ECJ has not yet addressed whether a sound recording will satisfy the graphical representation requirement.

Scent

United States: A scent can be registered as a trademark upon a showing of acquired distinctiveness, provided that the scent is non-functional (ie, not applied to products primarily sold for their scent). In re Clarke, 17 USPQ2d 1238 (TTAB 1990) (allowing the first U.S. scent mark registration for the “high-impact, fresh, floral fragrance, reminiscent of plumeria blossoms,” applied to embroidery yarns). Pursuant to the Trademark Manual of Examining Procedure, Chapter 1202.13, substantial evidence is required to show that a scent mark has acquired distinctiveness, making it difficult to register a scent mark, which is perhaps evidenced by the so few registrations for scent marks today. Existing registrations include the scent of bubble gum for oil-based metal cuttings and removal fluids, and three registrations for the scents of strawberry, cherry and grape applied to lubricants and motor fuels. Except for the scent of cherries, these registrations are on the Supplemental Register.

Practical Requirement: The applicant must submit a clear written description of the scent, which may be problematic given the subject matter; a drawing is not required. Trademark Manual of Examining Procedure, Chapter 1202.13.

European Union: Although there is no per se prohibition of a scent functioning as a trademark, the graphical representation requirement is not satisfied by a chemical formula, a written description, a deposit of a sample, or any combination of these methods. ECJ 2002, Decision C-273/00, (the Sieckmann decision, regarding an application to register a scent described as “balsamically fruity with a slight hint of cinnamon”). Pending further clarification from the ECJ or an alternative means to satisfy the graphic representation requirement, scent marks are unlikely to be registered in the EU.

Even prior to Sieckmann, only one scent mark had been registered (for the “smell of fresh cut grass” as applied to tennis balls; the graphic representation was met by a written description). As of July 15, 2005, the CTM-online database shows that two applications for scent marks (both filed prior to Sieckmann) are currently pending on appeal. When resolved, these cases may shed new light on the graphic representation requirement.

Conclusion

The approach toward nontraditional marks in the United States and the European Union is largely congruent. The key difference is the EU requirement that a mark must be capable of graphic representation; this prerequisite has currently stalled registration of scent marks and may cause problems with registration of noises that are difficult to represent using a musical score. Thus, businesses wishing to appeal to their consumers' auditory or olfactory senses should be wary that it might not be possible to obtain international protection for their marks.

In recent years, innovative approaches toward brand creation and marketing have given rise to a new family of trademarks, referred to as nontraditional marks, which include, among others, color, motion and non-visual marks. Trademark laws in both the United States and Europe are being clarified to accommodate these new marks. Many such provisions are harmonious across both regions, but there are some procedural and substantive differences that should be considered before a company invests its time and resources into the creation of an international nontraditional brand. Further, registration of most nontraditional marks often requires a showing that the mark acquired distinctiveness through extensive use, which can be a heavy burden to meet under the law of both jurisdictions.

A nontraditional trademark can be visible or invisible. Visible marks include colors, lights, motion (moving images, such as the image on the computer screen when a browser is resolving a Web site), holograms, gestures, and positions (a mark that is specified by its position on a product (eg, the Mercedes three-point star). Non-visible marks include sounds, scents, tastes, and textures. The most common nontraditional trademarks are sound, color, and scent marks.

The Trend Toward Registration of Nontraditional Marks

In the United States

In the United States, a trademark is any word, name, symbol or device, or any combination thereof, used in trade to identify and distinguish one's goods or services from others in the marketplace. 15 U.S.C. '1127 (commonly referred to as the “Lanham Act”). The Lanham Act specifically provides that “no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration … on account of its nature” (save exceptions such as immorality, deceptiveness, etc.). Lanham Act, Section 2; 15 U.S.C. '1052. In 1995, the U.S. Supreme Court clarified that any mark capable of being or becoming distinctive, including colors, sounds and other nontraditional configurations, can function as a trademark. Qualitex Co. v. Jacobson Prods. Co ., 514 U.S. 159, 172 (1995).

Thus, nontraditional marks are accepted for registration in the United States, provided that they are capable of distinguishing a product. Most nontraditional marks are considered to lack inherent distinctiveness, but can acquire distinctiveness (secondary meaning) through use. A showing of acquired distinctiveness requires proof of substantially exclusive and continuous use of the mark in commerce to identify the source of one's goods or services. Five consecutive years of such use will support a claim of acquired distinctiveness. Lanham Act, Section 2(f); 15 U.S.C. '1052. A mark that has not yet acquired distinctiveness can be registered on the Supplemental Register (which offers narrower protection); the registration can be transferred to the Principal Register once secondary meaning is shown. Lanham Act, Section 27; 15 U.S.C. '1095.

As with conventional marks, a symbol or device will be denied registration if it is functional ' ie, if it is essential to the use or purpose of a product or service, or affects its cost or quality. See, Inwood Laboratories, Inc. v. Ives Laboratories , Inc ., 456 U.S. 844 (1982). For example, the color black was refused for outboard motors because black decreases the apparent size of the motor and is compatible with many different boat colors. Brunswick Corp. v. British Seagull , 32 USPQ 2d 1120 (Fed. Cir. 1994), cert. denied.

In the EU: The Community Trademark

The Harmonization Directive and the Council Regulation on the Community Trademark define a trademark as any sign capable of being represented graphically, provided that it is capable of distinguishing the goods or services of one undertaking from those of others. (First Council Directive of Dec. 21, 1988, to Approximate the Laws of the Member States Relating to Trade Marks (89/104/EEC), Article 2; Council Regulation of 20 December 1993 on the Community Trade Mark (40/94/EEC), Article 4). The European Court of Justice (“ECJ”) has continuously maintained, in several key cases decided in 2002-2003, that a nontraditional sign can function as a trademark as long as it has distinctive character and is capable of being represented graphically in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” way. See, Decision C-104/01; Decision C-273/00; Decision C-283/01.

The European definition of a trademark differs from that of the Lanham Act in two key aspects: 1) there is no requirement that a mark be used in commerce prior to registration (although one must show use if acquired distinctiveness is a prerequisite to registration); and 2) there is a requirement that the mark must be capable of graphic representation. As discussed in more detail below, the second difference has proved to be a stumbling block for scent marks in the European Union, and has been the subject of interpretation in several ECJ decisions concerning color, sound and scent marks.

As in the United States, nontraditional marks are generally considered to lack inherent distinctiveness, but can acquire distinctiveness through use. Harmonization Directive, Articles 3(1)(b) and 3(3). Acquired distinctiveness requires substantial evidence to show that a sufficient number of relevant persons recognizes the sign in question as a trademark. See, Examination Division Practice Note, Evidence of Use, v1, March 1999. Although some nontraditional marks have been registered without a showing of acquired distinctiveness, such a showing is likely to be mandatory in the future with respect to color marks. Decision C-104/01. Similar to the United States, a sign will be denied registration if it is functional. Council Regulations, Article 7(1)(e).

Treatment of Color, Sound and Scent Marks

Color

United States: The Supreme Court definitively allowed registration of colors per se in 1995. Qualitex Co. v. Jacobson Prods. Co ., 514 U.S. 159 (1995) (considering the green-gold color applied to dry cleaning press pads). A single color (ie, color that is not embodied in a logo or design) can be registered as a trademark if it meets “ordinary legal trademark requirements,” but it can never be inherently distinctive and may acquire distinctiveness only through secondary meaning. Qualitex Co. v. Jacobson Prods. Co., Id. at 160-161; see also Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (clarifying lack of inherent distinctiveness).

Practical Requirement: An applicant must submit a drawing, a color specimen and a detailed written description of the mark. Trademark Manual Examining Procedure, Chapter 1202.05(d), (e), (f).

European Union: The ECJ ruled that a color per se is capable of registration provided that it has a distinctive character and may be represented graphically. Decision C-104/01, 2003 (the Liebertel decision, considering the color orange for telecommunication services); Decision C-49/02, 2004 (the Heidelberger decision, considering combinations of colors). Both the Liebertel and the Heidelberger decisions emphasized that marks consisting of colors will not be registered without a showing of acquired distinctiveness, save in exceptional circumstances. Although several Community registrations have been granted for color and color-combination marks without a showing of acquired distinctiveness, post Liebertel and Heidelberger such registrations may be vulnerable to attack. As to the requirement for graphic representation, it is best met by indicating an internationally recognized color code, such as a Pantone code; a sample of the color is not sufficient. Liebertel, Decision C-104/01.

Sound

United States: A sound can serve as a trademark if it is sufficiently distinct to identify the commercial origin of a brand. See, In re General Electric Broadcasting Co., 199 USPQ 560, 563 (T.T.A.B. 1978) (setting forth the criteria for registration of sound marks). USPTO's general position is that sound marks can be inherently distinctive, but if the mark imitates a common sound, acquired distinctiveness must be shown. Familiar examples of registered sound marks are the NBC chimes (first registered in 1950) and the roar of the MGM lion. Harley Davidson's application to register the roar of its V-twin engine was allowed, but withdrawn after 6 years of opposition by competitors wishing to fire up their own V-twin engines without fear of infringement.

Practical Requirement: An applicant must submit a written description of the sound, accompanied by a specimen of a sound recording or a musical score; a drawing is not required. Trademark Manual of Examining Procedure, Chapter 1202.15.

European Union: A sound can function as a trademark provided it has a distinctive character and can be represented graphically. ECJ 2003, Decision C-283/01, the Shield Mark decision. A showing of acquired distinctiveness does not appear to be a prerequisite to registration, but the graphic representation requirement may be problematic for marks consisting of noises. While a musical score satisfies the requirement, a mere written description of the sound or an onomatopoeic description of a noise (eg, “kukelekuuuuu” for the sound of a rooster's crow) is not sufficient. Shield Mark decision. Thus, sounds that are difficult to set forth in a musical notation, such as a rooster's crow or a dog barking, may prove difficult to register. The ECJ has not yet addressed whether a sound recording will satisfy the graphical representation requirement.

Scent

United States: A scent can be registered as a trademark upon a showing of acquired distinctiveness, provided that the scent is non-functional (ie, not applied to products primarily sold for their scent). In re Clarke, 17 USPQ2d 1238 (TTAB 1990) (allowing the first U.S. scent mark registration for the “high-impact, fresh, floral fragrance, reminiscent of plumeria blossoms,” applied to embroidery yarns). Pursuant to the Trademark Manual of Examining Procedure, Chapter 1202.13, substantial evidence is required to show that a scent mark has acquired distinctiveness, making it difficult to register a scent mark, which is perhaps evidenced by the so few registrations for scent marks today. Existing registrations include the scent of bubble gum for oil-based metal cuttings and removal fluids, and three registrations for the scents of strawberry, cherry and grape applied to lubricants and motor fuels. Except for the scent of cherries, these registrations are on the Supplemental Register.

Practical Requirement: The applicant must submit a clear written description of the scent, which may be problematic given the subject matter; a drawing is not required. Trademark Manual of Examining Procedure, Chapter 1202.13.

European Union: Although there is no per se prohibition of a scent functioning as a trademark, the graphical representation requirement is not satisfied by a chemical formula, a written description, a deposit of a sample, or any combination of these methods. ECJ 2002, Decision C-273/00, (the Sieckmann decision, regarding an application to register a scent described as “balsamically fruity with a slight hint of cinnamon”). Pending further clarification from the ECJ or an alternative means to satisfy the graphic representation requirement, scent marks are unlikely to be registered in the EU.

Even prior to Sieckmann, only one scent mark had been registered (for the “smell of fresh cut grass” as applied to tennis balls; the graphic representation was met by a written description). As of July 15, 2005, the CTM-online database shows that two applications for scent marks (both filed prior to Sieckmann) are currently pending on appeal. When resolved, these cases may shed new light on the graphic representation requirement.

Conclusion

The approach toward nontraditional marks in the United States and the European Union is largely congruent. The key difference is the EU requirement that a mark must be capable of graphic representation; this prerequisite has currently stalled registration of scent marks and may cause problems with registration of noises that are difficult to represent using a musical score. Thus, businesses wishing to appeal to their consumers' auditory or olfactory senses should be wary that it might not be possible to obtain international protection for their marks.