Understanding the Rise of Non-Traditional Marks in Modern Branding - Part I
The future of trademarks isn’t just about what you see, but what you hear, smell, and feel. Non-traditional trademarks have opened doors to new dimensions of branding.
In the highly competitive business world, intellectual property (IP) is evolving beyond traditional logos and slogans. Brands now use non-traditional elements like color, scent, and taste to create unique identities to match increased demand for immersive experiences from consumers. But this advancement also presents a host of IP challenges.
This is a two-part article that examines the impact and challenges of non-traditional trademarks on intellectual property (IP). Part 1 explores non-traditional marks’ scope and IP challenges, featuring real-world examples in the evolving trademark landscape. Part 2 will present actionable solutions to combat non-traditional trademark infringement.
The Uncharted Territories of Non-Traditional Marks
Traditionally, intellectual property protection has revolved around well-established forms of trademarks that include logos and slogans to create strong brand identifiers. Trademarks have long been recognized as powerful tools for distinguishing goods and services in a crowded marketplace, fostering brand recognition and consumer loyalty.
These trademarks have significantly evolved with today’s technological advancements, globalization, and changing consumer preferences into non-traditional trademarks.
The rise of non-traditional marks include:
Trade Dress - The Art of Product Design and Packaging
This encompasses product design, packaging, and configuration to create a visual language that instantly evokes a brand’s essence, allowing brands to express their deep-rooted identities. For example, the triangular prism shape and distinctive packaging of Toblerone chocolate bars make them instantly recognizable, setting them apart from other brands.
Sensory Immersion- Color, Scent, Sound, Taste, and Touch
Venturing beyond visual elements, brands are increasingly leveraging the power of sensory experiences to create lasting connections with consumers. These sensory marks include:
Color marks:
A specific color or combination of colors can be used to distinguish and identify the source of a product or service. To be registered as a trademark, the color must have acquired distinctiveness and not serve a functional purpose for the product. Iconic examples include Tiffany Blue and Cadbury Purple, which have transcended their functional roles to become emblematic of their respective brands. These colors create strong brand recognition and association, symbolizing luxury and quality for Tiffany & Co. and the rich, creamy taste of Cadbury chocolates.
Scent marks:
A unique type of trademark, capable of evoking strong brand associations through smell. The aroma of a luxury perfume or a fast-food chain can instantly remind consumers of a brand, fostering familiarity and loyalty. However, legally protecting these scents as trademarks is challenging due to the need to distinguish between functional and non-functional elements.
A notable example is Chanel’s attempt to trademark its iconic No. 5 perfume. Despite a detailed description of its floral and aldehydic notes, the application failed. The scent of a perfume is considered the product itself, making it functional and unable to distinguish the brand in a non-functional way.
In contrast, Hasbro successfully registered the scent of Play-Doh with the United States Patent and Trademark Office (USPTO). The distinctive scent is described as “a unique combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.”
These examples highlight products whose sole purpose is smell, such as perfumes or air-fresheners, are not trademarkable. However, if the scent is not the key element of the product but serves to enhance the brand recognition, then it can be trademarked.
Sound marks:
These can include jingles, musical notes, or other audio signatures such as Netflix’s “Ta-Dum” Sound which plays at the opening of content, or the five-note jingle used by Intel in its advertisements. These auditory cues have become inextricably linked to their respective brands.
Taste:
Like scent marks, this is a rare type of trademark and involves the distinct flavor of a product used to identify its source. However, they must be non-functional, serving only as brand identifiers without being essential to the product itself. For instance, KFC’s unique chicken flavor, despite being a trade secret, hasn’t been trademarked as it’s an integral part of the product. Similarly, pharmaceutical companies like Eli Lilly have faced challenges in registering the taste of artificial flavors to medicines due to their direct connection to product consumption and utility.
Touch:
These marks rely on the tactile sensations they evoke to distinguish a brand. These marks protect the unique feel of a product, which consumers can identify through touch. An iconic example is Louis Vuitton’s textured pattern on its Epi leather handbags. The tactile feel of the Epi leather’s unique raised and textured lines serves as a distinctive brand identifier.
The Multimedia Frontier - Integrating Moving Images and Animations
In the digital era, brands are increasingly leveraging multimedia elements to captivate audiences. Dynamic animations, interactive logos, and motion graphics serve as non-traditional marks that enrich the brand experience. A notable example of this strategy is seen with Universal Pictures and Illumination Entertainment, who have successfully trademarked the “Despicable Me” Minions. These iconic characters are now synonymous with a range of goods and services, including toys, clothing, and promotional materials, enhancing brand identity and engagement through their distinctive and beloved imagery.
Challenges Posed by Non-Traditional Marks
Ambiguity in Identifying and Defending Against Infringements
Non-traditional marks, unlike traditional trademarks, often lack clear definitions and are open to subjective interpretation, making their identification and protection challenging. This inherent ambiguity complicates the process of proving infringement, as these marks are not as immediately recognizable. Safeguarding non-traditional marks typically demands substantial proof like marketing activities, sales data, and consumer surveys.
Christian Louboutin’s defense of its iconic red soles against other fashion brands is a key example. The brand had to prove that the red sole wasn’t just a color for the brand but had become a luxury symbol for its consumers.
Legal and Jurisdictional Variations in Recognizing Non-Traditional Marks
The recognition and protection of non-traditional marks vary significantly across jurisdictions. What is protectable in one country might not be recognized in another. Differences in recognizing sound and color marks between regions like the U.S. and European Union can lead to inconsistencies, creating challenges for global brand owners as a protected mark in one area may not have protection elsewhere. For instance, Mattel’s Scrabble tile shape mark is recognized as a trademark in the US and Canada yet denied by the European Union and the UK.
Risks of Unforeseen Competition and Brand Dilution
Non-traditional marks are particularly susceptible to brand dilution and unforeseen competition. For instance, a unique packaging design (trade dress) that gains popularity might inspire copycat designs that erode the distinctiveness of the original. Similarly, sound marks, which rely on auditory distinctiveness, can be easily mimicked, leading to confusion among consumers and weakening the original brand’s identity.
These challenges highlight the evolving IP complexities around non-traditional marks in an increasingly competitive marketplace. Let’s explore real-world case studies that illustrate how brands have successfully defended their non-traditional trademarks.
Case Studies: Illustrating Defense Strategies in Action
Source : washingtonpost.com
Trade Dress Survives Beyond the Virtual World - Hermès Berkin Vs MetaBirkin
Hermès sued Mason Rothschild over “MetaBirkin” NFTs, alleging trade dress infringement, dilution, and cybersquatting. These NFTs were digital images of handbags inspired by Hermès’ Birkin bag, misleadingly covered in faux fur. Hermès argued that Rothschild’s use of the “BIRKIN” mark violated their IP rights, while Rothschild claimed artistic commentary protection under the first amendment.
The court found evidence that proved Hermès Berkin consumers were confused due to MetaBerkin, and Rothschild’s profit motive with the trade dress of the famous Berkin bags. Rothschild was liable to pay Hermès $133,000 for the damages of its brand dilution. This case underscores the need to protect trademarks in the digital realm and sets a precedent for future disputes involving NFTs and digital assets.
The ‘Sound’ of Trademarks in Entertainment
In the entertainment sector, sound marks are particularly prevalent due to the audiovisual nature of the industry. These distinctive auditory cues can leave a lasting impression on audiences, reinforcing brand recognition and recall. Several iconic sound marks have been successfully registered and protected within the entertainment industry. Below are two iconic examples:
NBC Chimes
NBC’s three-tone chime, protected since the 1920s, exemplifies a successful sound mark defense. The network underlines its extensive use and brand association to defend this mark, showcasing the need for long-term brand-sound linkage for effective legal safeguarding.
MGM Lion’s Roar
Another noteworthy example is the roaring lion sound that precedes Metro-Goldwyn-Mayer (MGM) films is a trademarked sound. This distinctive roar has been a hallmark of MGM since the late 1920s and is recognized worldwide.
Barbie Pink -More than Just a Color!
Designed by Hubstream
Barbie’s iconic ‘pink’, specifically Pantone 219 C, recently gained trademark protection, exemplifying challenges and solutions in defending color marks as non-traditional trademarks. This shade, associated with Barbie since 1959, achieved distinctiveness through consistent, long-term use in branding and marketing. Initially, colors were not protectable. However, the Supreme Court’s 1995 decision in Qualitex Co. v. Jacobson Products Co. changed this, allowing colors to be trademarked if they acquired a secondary meaning. In the case of Barbie, Mattel’s consistent and long-term use of Pantone 219 C in branding, marketing, products, and promotions (like the pink billboards for the recent Barbie movie) helped this color achieve distinctiveness and a secondary meaning linked uniquely to Barbie.
In conclusion, non-traditional trademarks offer exciting opportunities and challenges for brand owners. These marks, including trade dress and sensory experiences, provide innovative ways to connect with consumers. However, they also present ambiguities and risks that require strategic approaches.
These case studies highlight the need for proactive measures and legal expertise in protecting these assets. By learning from real-world examples and staying informed about IP law, brand owners and brand protection teams can navigate complexities confidently.
In Part 2, we’ll explore strategies for protecting and enforcing non-traditional trademarks and cover legal frameworks, registration processes. We’ll also discuss enforcement mechanisms to help brands defend their unique identities in the global marketplace. Stay tuned for practical guidance on maximizing your IP portfolio.
