Build Your Brand with These Types of Marks

Continuing our trademark discussion. We’re going to discuss additional kinds of marks that are available to a business owner when developing a new product. Another kind of mark, sometimes called olfactory mark, is a mark that has a scent. The tricky part of this to understand is the scent must be ornamental not functional. What that means is, you can not get trademark protection for a scent when the product is supposed to have a scent, such as perfume. You can in some cases get trademark protection for a scent when that product otherwise is not supposed to have a scent, and the scent is distinctive. Examples are sewing thread that was infused with the fragrance of plumeria blossom.

Or the aroma of cinnamon for furniture, or the smell of fresh cut grass for tennis balls. One business consideration in choosing an olfactory mark is that many people are very sensitive to smell. And they may not want a particular product that is not supposed to have a smell to have one, but it is a mark that is available to you that you can consider whether it fits with your product. A touch mark is a very new trademark. It is not recognized in many countries outside of the US, though it is beginning to be recognized in Europe.

And a touch mark is literally where the product packaging has a tactile attribute, meaning your fingers will feel and sense something which is unrelated to that product. An the example in the US was velvet textured covering on the surface of a bottle of wine, and that’s because we don’t of a bottle of wine as necessarily having a textured covering. In this photo, it’s a little difficult to see, it is the photo from the US patent and trademark office database, but it shows a wine bottle covered with a velvet textured surface.

A motion mark is literally a visual mark that imparts a sense of motion. And if you have ever put a DVD in your home video player, you have sometimes seen the Sony TriStar horse come galloping towards you for a second or two before your film launches. That is a motion mark. We also see motion marks with many consumer software products where we boot up the software, and we see a particular image that appears on the screen with a sense of motion and often sound. And sound marks, indeed, are their own separate trademarks.

If you go to the URL that is at the bottom of this slide, you will see that the US Patent and Trademark Office has given you a number of different marks, that are sounds that have been registered, such as the Pillsbury Doughboy giggle, the AOL You’ve Got Mail, the NBC Chimes, and the MGM roaring lion as examples. So if you have a product where having a particular sound will help make a connection between that product and your consumer, you can secure federal registration for the sound. An example of a company that did that very well was Angry Birds. Several years ago it created a clever word mark, Angry Birds. It developed mascots and character images.

It developed a ringtone and made it available for free for download. And I can remember being in various meetings where people’s phones would go off and we would hear the Angry Birds jingle being played. Great marketing. And now, a very important part of trademark law, trade dress. Trade dress must be distinctive and nonfunctional for product packaging or product design in order to be protectable. And it’s sometimes very challenging to have discussions with engineers who often focus on function, and say in order for us to have protection from a trade dress perspective, what you come up with must be ornamental, aesthetic, but not functional.

So here are some slides illustrating different kinds of trade dress, the Coca Cola bottle, a very, very well known trade dress. So it’s the bottle itself, the particular shape, which is protected by trade dress. You also see an example in this slide of stylized letters, the Coca Cola red and white curling ribbon and the cursive writing.

Here is an example of a product, very inexpensive product, a dustpan.

And, even if you couldn’t read the red oval that says, OXO, O-X-O, you could see this particular product, squeegee, and you could tell that the company that created one, created the other, an excellent example of trade dress. So if you are only familiar with the dustpan, when you saw the squeegee available in your local store, you would realize it’s the same company. So a lot of thought was put into color and shape in the design of these inexpensive products.

A product from several years ago sort of created the world of handheld music devices, the iPod. And there was trade dress and design patent, which we’ll talk about later, for the physical ornamental layout of the iPod. The use of the circular wheel, the use of a screen, the placement of the screen. One of the most recognizable product packaging in the world, the Campbell’s soup. Very simple, great combination of the use of color, of stylized letters.

Another example of a company that had decided to launch a series of books. And although I might not have been convinced in the beginning that For Dummies was a great trademark name, perhaps after $1 billion later in book sales, and the use of this very clever design of the series of books, the book covers, themselves. The colors, the use of a lettering, the placement of the graphics, all create a distinctive look for the color of these books.

Another great example of marketing. In this case, by AstraZeneca, that created a pharmaceutical, a drug called Nexium, but when they launched their product they called it the purple pill. Indeed, they secured the URL purplepill and thepurplepill.com. The product was itself purple with these three design elements. And you’ll see here that AstraZeneca Secured trademark registration for the phrase The Purple Pill. On the bottom of this slide, you’ll see PRINCIPAL-2(F). And what that means is in the U.S. Trademark office, AstraZeneca had to prove that the phrase, The Purple Pill, which, as you can see, is descriptive of the product, had indeed acquired secondary meaning. That’s what it means when we see a 2(f) registration. It is descriptive but it acquired secondary meaning.

It is entitled to federal trademark protection. Another example of very distinctive and indeed famous trade dress, the Robin’s Egg Blue Tiffany Box. That means that no one else in this field, jewellery, can use that color or a confusingly similar color for their product.

A recent example, Christian Louboutin shoes have a distinctive red sole. And you can see here, there’s actually a federal registration in the United States for the red sole. The color red is claimed as a feature of the mark. The mark consists of a red lacquered outsole on footwear that contrasts with the color of the adjoining upper portion of the shoe. So it means there’s almost no product when you are developing that you can’t give some thought to whether color can help give you a competitive advantage. A rather remarkable trademark registration is that which Apple secured on the design and the layout of its retail establishment. And lot of thought went into the design of this retail establishment.

Indeed, there were many knockoffs around the world by companies that wanted to sell their technology, their computers, their mobile devices, in stores that look very much like this, and Apple has undertaken enforcement actions around the world. And the next slide we see the actual drawing that was submitted to the US Patent and Trademark Office to support the trade dress of the retail design. Another example is the wine store called Best Cellars. So it reminds us that even a retail establishment, through color and layout, can develop such a distinctive look that it can be registered, and can be enforced around the world.

Some thought to software, and in particular, mobile devices, is that you can secure federal registration for the icons that you use in your product. And on this slide, we see individual icons for which Apple has secured or has applied for registration. So as you develop your products, think about your user interface and whether you can develop through color and shape, a distinctive icon.

When you have a registered mark, worldwide, you use the R with a circle, and indeed, you need to use the registered symbol when your mark is registered, if you wish to secure certain kinds of remedies from courts. And if the mark is not registered, you can use a small TM, standing for trademark, or SM for service mark. I often advise clients to use the TM or the SM, because first of all it helps to signal to your purchasing public, that you are claiming that mark, as a trademark. And it helps develop a culture of being aware of the proper use of trademarks. In the United States we have what is called common law trademark rights.

This is rather unusual, most of the industrial world requires that you secure registration in order to have trademark rights at all in that country. And this is something that a company that is outside the US, and wishes to conduct business in the US, must be extremely knowledgeable, and work with local counsel, because, if that foreign entity comes into the US, and secures trademark registrations, or already has them, that company may think that they can use those marks exclusively in the US. They are not aware that companies that were here first, and use the mark first, can in fact limit the power of that registration.

The next few slides summarize why a company should consider securing registration, and we’re going to run through them quickly, because it’s really a matter just of reading the slides. First of all, it is evidence your mark is distinctive. If you walk into court with a federal registration, you have already met your burden of showing that your mark is distinctive. It’s up to the other side to show it is not. It’s proof that you are the owner of the mark and that the mark is registered. It is evidence that you have the exclusive rights to use that mark with those goods or services nationwide.

It gives you the ability to stop third parties from using similar marks even if they have never heard of you, even if they adopted their mark in good faith. It gives you the ability for what we call brand extension. You have a registered mark. It is easier for you to extend that brand to related goods or services. You can also exercise a great deal of power and prevent the importation into the US of third party goods. Not merely because they’re counterfeit, but because they’re confusingly similar.

You can use registrations as collateral for a loan. And indeed much of the work that we do at my law firm involves representing financial institutions who are loaning millions or hundreds of millions of dollars. And they take back a security interest in the trademarks of the debtor. If there’s going to be a dispute involving trademarks or domain names, you are in a much stronger position if your mark is registered. And, unlike copyright and unlike patent, trademark can exist forever if you continue to use the mark in connection with the goods or services. And finally, with respect to the benefits of federal registration.

In addition to being able to license the mark of third parties, you are better able to franchise the mark, you’re in a stronger position to sell the mark at a higher value because you have exclusive rights nationwide. You can use your federal registration as a basis for international registration, and you can access what we call anti-counterfeiting statutes. Meaning you can get the FBI, The Federal Marshals, Homeland Security, involved in anti-counterfeiting activities. And one of the reasons that the federal government is willing to be involved in anti-counterfeiting activities is not just the impact on business, but because the dollars generated from counterfeiting are used to support organized crime and terrorism.

And finally, as we discussed earlier, one of the benefits of Federal Registration is greater access to specific powerful remedies, such as getting an injunction, securing profits, being compensated for the damages, being reimbursed for the cost of litigation. In some cases, when the infringement is willful, treble damages you can secure three times the damages that you actually sustain. The destruction of the infringing articles, you can even cancel someone else’s registration, and you can sometimes secure from a court an order where the other party must issue and pay for advertising that corrects its error. In the next segment we’re going to talk about some considerations in selecting a mark.