Lawyers Journal

Unusual trademarks: Sounds, scents, colors

by Martin J. O'Donnell
There are few areas of the law in which a handful of decisions serve as the repository of the learning in the field. The area of sound, scent and color trademarks is one of those areas.

The most common trademarks are visual: words, logos, images. Over time, however, the trademark armamentarium has been expanded to include trademarks that appeal to other senses, namely, sound and color. What is the source of this expansion?The term "trademark" includes any word, name, symbol or device, or any combination thereof:

(1) used by a person, or
(2) which a person has a bon fide intention to use in commerce and applies to register on the principal register established by this act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Sounds as trademarks
...a series of bells tolled during four-hour sequences, beginning with one ring at approximately a first half hour and increasing in number by one ring at approximately each half hour sequence.
The specimens comprised a tape recording of the bells. The Trademark Trial and Appeal Board noted that the standards for registrability of sound marks are the same as those for word marks:
The salient question provided for in the definition [of a service mark in §45 of the Lanham Act, 15 U.S.C. 1127] is whether what is sought to be registered serves "to identify the services of one person and distinguish them from the services of others" without regard as to the nature of the mark in question....Thus, the nature of a mark is no basis for refusing to register it either as a service mark or as a trademark if it performs as an indication of source and does not fall within the prohibitions of subsections (a) through (e) of Section 2 which, in essence, comprise a codification of common law principles that preclude the establishment of proprietary rights in a trademark that may be in derogation of an equal or superior right that another may possess therein.
199 U.S.P.Q. 560, at 562, 563.
However, unless the sound is clearly unique and arbitrary, a strong showing of secondary meaning is likely to be required as a condition of registration of such marks:
...a distinction must be made between unique, different, or distinctive sounds and those that resemble or imitate "commonplace" sounds or those to which listeners have been exposed under different circumstances....[T]hose that fall within the second category must be supported by evidence to show that purchasers, prospective purchasers, and listeners do recognize and associate the sound with services offered and/or rendered exclusively with a single albeit anonymous source.
In General Electric Broadcasting Co., supra, at 563. Scents as trademarks In Clarke, 17 USPQ2d 1238 (POTTAB 1990), the trademark examiner refused to register a scent comprising " a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms" as a mark for "sewing thread and embroidery yarn" on the grounds of functionality and failure to identify applicant as the source of goods. Applicant had submitted a declaration that, to the best of her knowledge, no other company had ever offered a scented embroidery yarn or thread; that customers, dealers and distributors in the embroidery field recognized applicant as the source of scented embroidery yarn and thread; and that others were free to use any other [distinguishable] scent for their yarns and threads.
The Trademark Trial and Appeal Board reversed, holding:
Under the circumstances of this case, we see no reason why a fragrance is not capable of serving as a trademark to identify and distinguish a certain type of product. It is clear from the record that applicant is the only person who has marketed yarns and threads with a fragrance. That is to say, fragrance is not an inherent attribute or natural characteristic of applicant's goods but is rather a feature supplied by applicant. Moreover, applicant has emphasized this characteristic of her goods in advertising, promoting the scented feature of her goods. Applicant has demonstrated that customers, dealers and distributors of her scented yarns and threads have come to recognize applicant as the source of these goods....We believe that applicant has presented a prima facie case of distinctiveness of her fragrance mark.
In Clarke, 17 USPQ2d 1238, at 1240.
This case is the seminal case in the area, and sets the standards for registration of such marks. However, where the scent is not an adjunct to the product but is the product itself, the doctrine of functionality will preclude registration. PTO Examination Guide No. 1-91.Colors as trademarks Historically, color, by itself and not as part of a logo or design, has been considered incapable of functioning as a trademark. Many reasons were advanced in support of this conclusion, primarily those of mere functionality, i.e., the color merely enhances the aesthetic appeal of the object with which it is associated or designates a property or grade of the object. Unique to color as a trademark, however, was the "color depletion" theory, i.e., there are only a limited range of colors, and to allow withdrawal of specific colors from the stock available for use in commerce would soon deplete the stock and severely impede competitors. The depletion theory played a major role in impeding the registration of well-known trademarks as the Campbell Soup red-and-black banded label. Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 81 U.S.P.Q. (BNA) 430 (3d Cir.), cert. denied, 338 U.S. 847, 83 U.S.P.Q. (BNA) 543, 94 L. Ed. 518, 70 S. Ct. 88 (1949).
In 1985, however, the Court of Appeals for the Federal Circuit found that the use of the color pink for Fiberglas was arbitrary and fanciful, and served to designate the source of the goods, i.e., that it was a proper trademark, and thus registrable. In Owens-Corning Fiberglas Corp., 774 F. 2d 1116, 1128 (CA Fed. 1985).
The court traced the long history of non-conventional marks, and the reasoning used to justify refusal to protect them as trademarks. It then noted the change in attitude that accompanied passage of the Lanham Act in 1946, and catalogued a variety of marks, previously considered unprotectable, to which registration was extended. Among these were the famous Haig & Haig "pinch" bottle for expensive whiskey Ex parte Haig & Haig, Ltd., 118 U.S.P.Q. (BNA) 229 (Comm'r Pat. 1958); a wine bottle for common table wine, In Mogen David Wine Corp., 51 C.C.P.A. 1260, 328 F.2d 925, 140 U.S.P.Q. (BNA) 575 (CCPA 1964); and the NBC chimes, Registration No. 916,522 issued to the National Broadcasting Co., Inc, among others. The dissent cited an equally lengthy list of cases, from a variety of district and circuit courts, in which protection had been refused, and noted the need for comity with sister courts, a substantial number of which did not grant protection to such marks. Noting that many of the decisions cited by the dissent were based on precedent prior to the Lanham Act, the court noted:
Under the Lanham Act trademark registration became available to many types of previously excluded indicia. Change was gradual and evolutionary, as the Patent and Trademark Office and the courts were presented with new concepts.. … The jurisprudence under the Lanham Act developed in accordance with the statutory principle that if a mark is capable of being or becoming distinctive of applicant's goods in commerce, then it is capable of serving as a trademark.
In Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 10/08/1985).
This decision has been especially influential. Because of its role in oversight of the Patent and Trademark Office, which can issue or deny trademark registration under the Lanham Act, its sits as "primus inter pares" among appellate courts in this area. It serves as a gatekeeper in defining what is or is not registrable, and thus strongly influences what is considered as protectable, even under the common law.
This role was implicitly recognized by the Supreme Court in Qualitex v. Jacobson Products, Co., 1995 S. Ct. 41, which dealt with the protectability of the use of a special shade of green-gold color on press cover pads that Qualitex makes and sells to dry cleaning firms for use on their dry cleaning presses. Qualitex had registered this mark under the Lanham Act (Registration No. 1,633,711, issued Feb. 5, 1991) but the Ninth Circuit, holding that color alone cannot serve as a trademark, and thus is not registrable, set aside the lower court's finding in favor of Qualitex that its mark is valid and had been infringed.
In a unanimous opinion authored by Justice Breyer, the court reasoned:
The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC's three chimes), and even a particular scent (of plumeria blossoms on sewing thread). See, e.g., Registration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17 U. S. P. Q. 2d 1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same?
Noting the myriad marks involving common words or expressions that have been found protectable (and registrable) once it has been shown that they have "secondary meaning" (i.e., do in fact point to a single source of the goods or services in question, even if the source is anonymous), the court again asked:
Again, one might ask, if trademark law permits a descriptive word with secondary meaning to act as a mark, why would it not permit a color, under similar circumstances, to do the same? We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where that color has attained "secondary meaning" and therefore identifies and distinguishes a particular brand (and thus indicates its "source").
Meeting the "color depletion" argument head-on, it quickly disposed of it:
This argument is unpersuasive, however, largely because it relies on an occasional problem to justify a blanket prohibition. When a color serves as a mark, normally alternative colors will likely be available for similar use by others. See, e.g., Owens-Corning, 774 F. 2d, at 1121 (pink insulation). Moreover, if that is not so — if a "color depletion" or "color scarcity" problem does arise — the trademark doctrine of "functionality" normally would seem available to prevent the anticompetitive consequences that Jacobson's argument posits, thereby minimizing that argument's practical force.
Much of the pre-1985 case law rested on statements in Supreme Court opinions that interpreted pre-Lanham Act trademark law and were not directly related to the holdings in those cases. Moreover, we believe the Federal Circuit was right in 1985 when it found that the 1946 Lanham Act embodied crucial legal changes that liberalized the law to permit the use of color alone as a trademark (under appropriate circumstances). At a minimum, the Lanham Act's changes left the courts free to reevaluate the pre-existing legal precedent which had absolutely forbidden the use of color alone as a trademark. Finally, when Congress re-enacted the terms "word, name, symbol, or device" in 1988, it did so against a legal background in which those terms had come to include color, and its statutory revision embraced that understanding.
Finally, the court concluded:
The upshot is that, where a color serves a significant nontrademark function-whether to distinguish a heart pill from a digestive medicine or to satisfy the "noble instinct for giving the right touch of beauty to common and necessary things," G. K. Chesterton, Simplicity and Tolstoy 61 (1912)-courts will examine whether its use as a mark would permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient. That examination should not discourage firms from creating aesthetically pleasing mark designs, for it is open to their competitors to do the same. See, e.g., W. T. Rogers Co. v. Keene, 778 F. 2d 334, 343 (CA7 1985) (Posner, J.).
Other unconventional trademarks
The shapes of three-dimensional objects have on occasion been protected as trademarks where there has been some element of arbitrariness as the particular aspect of the object to be protected. See, for example, the Haig & Haig "Pinch" bottle, cited above. How far will this extend?
The Supreme Court has shown considerable open-mindedness on the subject. In Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct. 2753, 120 L. Ed. 2d 615, 60 U.S.L.W. 4762, the court considered the protectablity of the décor of a Mexican restaurant. Rebuffing challenges to protection of the design on numerous grounds, it held that trade dress which is inherently distinctive is protectable under § 43(a) without a showing that it has acquired secondary meaning, since such trade dress itself is capable of identifying products or services as coming from a specific source. Thus, the scope of protection is broad indeed.Martin J. O'Donnell is a partner at Cesari & McKenna in Boston. He is a member of the American Bar, American Intellectual Property Law, Massachusetts Bar, Boston Bar, and Boston Patent Law Associations. The author of several law review articles, O'Donnell has served as a lecturer and panelist in the areas of patents, trade secrets, antitrust, unfair competition, and protection of computer software.1. See Michael Sapherstein, "The Trademark Registrability of the Harley-Davidson Roar: A Multimedia Analysis.", in 1998 Boston College Intellectual Property and Technology Forum, October 1998, fn. 16.
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