Programs and Events
Nontraditional Trademarks: Prosecution and Enforcement Strategies
Discussion Outline


a. Requirements for Registration

b. Relevant TMEP Sections

i. For Product Designs - See TMEP §1202.02(b)(i)
ii. For Product Packaging - See TMEP §1202.02(b)(ii)
iii. Functionality - See TMEP §1202.02(a) - §1202.02(a)(viii)

c. Representative Case Law

i. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000) 
ii. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)
iii. Maker's Mark Distillery Inc. v. Diageo North America Inc., 679 F.3d 410 (6th Cir. 2012)
iv. Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010)


a. Requirements for Registration

i. Acquired Distinctiveness
ii. Must be non-functional

b. Relevant TMEP Sections

i. Color as a mark - See TMEP §1202.05
ii. Functionality - See TMEP §1202.02(a)(viii)

c. Representative Case Law

i. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995).
ii. Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206, 224 (2d Cir. 2012)
iii. Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co., 550 F. 3d 465 (5th Cir. 2008)
iv. In re Florists’ Transworld Delivery, Inc., 106 U.S.P.Q.2d 1785, (T.T.A.B. 2013)


a. Requirements for Registration

i. A sound mark identifies and distinguishes a product through audio rather than visual means. Unique, different or distinctive sounds can be registered without proof of secondary meaning, but acquired distinctiveness must be shown to register “commonplace” sounds.

ii. Examples of "commonplace" sound marks include goods that make the sound in their normal course of operation (e.g., alarm clocks, appliances that include audible alarms or signals, telephones, and personal security alarms).  Therefore, sound marks for goods that make the sound in their normal course of operation can be registered only on a showing of acquired distinctiveness under §2(f).

iii. A detailed description of a sound mark is required in order to register a mark.

iv. PRACTICE TIP:  Although not required, an audio reproduction (such as an .mp3 or .wav file) of the sound mark should be submitted as part of the application.  The purpose of this reproduction is to supplement and clarify the description of the mark. The reproduction should contain only the mark itself; it is not meant to be a specimen.

v. In order to show that a sound mark actually identifies and distinguishes the goods/services and indicates their source, an applicant must submit a specimen that contains a sufficient portion of the audio or video content to show how the mark is used on or in connection with the goods/services.

vi. No drawing is required to be submitted for a sound mark. 

b. Examples of Registered Sound Marks

i. NBC Chimes, for broadcasting of TV programs (U.S. Reg. No. 916522, July 13, 1971).
ii. Roar of the MGM lion (U.S. Reg. No. 1395550, June 3, 1986)
iii. The sound of the AFLAC duck quacking the company’s name for a variety of insurance underwriting services in Class 36 (U.S. Reg. No. 2607415, Aug. 13, 2002).
iv. Pillsbury Doughboy giggle (U.S. Reg. No. 2692077, March 4, 2003).
v. Other examples at

c. Relevant TMEP Sections

i. Sound Marks Generally – See TMEP § 1202.15
ii. “Drawing” of Sound Mark - SeeTMEP §  807.09
iii. See TMEP §§904.03(f) regarding specimens for sound marks

d. Representative Case Law

i. In re General Electric Broadcasting Company, Inc., 199 U.S.P.Q. 560 (T.T.A.B. Apr. 12, 1978)
ii. In Ride The Ducks LLC v Duck Boat Tours Inc., No. 04-CV-5595, 2005 U.S. Dist. Lexis 4422 (E.D. Penn March 21, 2005)


a. Requirements for Registration

i. Registration of a scent is not permissible where the product is sold primarily for the scent, e.g. perfume, scented household products.
ii. The scent of a product may be registrable as a trademark only if it is used in a non-functional manner.
iii. The amount of evidence required to establish that the fragrance works as a mark, i.e., has acquired distinctiveness, is substantial.
iv. No drawing is required to be submitted for a scent mark. 
v. A detailed written description of the mark must be provided.

b. Relevant TMEP Sections

i. Scent Marks Generally - See TMEP 1202.13
ii. “Drawing” of Scent Mark - SeeTMEP §  807.09
iii. See TMEP §904.03(m) regarding specimens for scent marks

c. Representative Case Law

i. In re Clarke, 17 USPQ2d 1238 (TTAB 1990)
ii. Enforcement of non-registered scents for perfumes have not been successful, absent infringement of another protectable element, such as a trademark in the name or rights in the trade dress of the bottle.  Compare Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500 (8th Cir. 1987) and Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968)


a. Requirements for Registration

i. Taste (or flavor) marks are capable of registration.  However, a flavor can never be inherently distinctive because it is generally seen as a characteristic of the goods.
ii. An application to register a flavor requires a substantial showing of acquired distinctiveness.
iii. No drawing is required to be submitted for a flavor mark. 
iv. A detailed written description of the mark must be provided.

b. Relevant TMEP Sections

i. Taste Marks Generally  - See TMEP §1202.13.
ii. “Drawing” of Non-Visual Mark  - SeeTMEP §  807.09
iii. See TMEP §904.03(m) regarding specimens for flavor marks.
c. Representative Case Law

i. In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (affirming refusal to register “an orange flavor” for “pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills,” on the grounds that the proposed mark was functional and failed to function as a mark).  The TTAB has observed that it is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function and consumers generally have no access to a product’s flavor or taste prior to purchase.

ii. N.Y. Pizzeria, Inc. v. Syal, 112 USPQ2d 1610 (S.D. Tex. 2014) (dismissing plaintiff restaurant franchisor’s trademark claim, based on defendants’ alleged infringement of flavor of plaintiff’s food, finding that flavors cannot be inherently distinctive, in that they do not automatically suggest product’s source, since, even if food flavors can acquire distinctiveness, they are functional, given that flavors are essential to purpose of food and affect its quality)


a. Requirements for Registration

i. Motion marks are registrable. 
ii. The applicant must submit a detailed written description of the mark. 
iii. The applicant must provide a drawing that either shows a single point in the movement or “up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark.” 37 C.F.R. §2.52(3).  See TMEP §807.11. 
iv. An acceptable specimen should show the entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g., a video clip, a series of still photos, or a series of screen shots).
v. Examples of Motion marks:

b. Relevant TMEP Sections

i. Drawing for Marks with Motion – See TMEP §807.11  
ii. See TMEP §904.03(l) regarding specimens for motion marks.


a. Requirements for Registration

i. Touch (or tactile) marks are registrable. 
ii. The touch mark has to be represented graphically. 
iii. While a touch mark may possibly be inherently distinctive, it is more likely that evidence of distinctiveness acquired through use will have to be provided before a touch mark is registrable as a trademark.
iv. The functionality doctrine may bar protection if the touch is essential to the use and purpose of the article or inherently affects its cost or quality.
v. Examples

b. Relevant TMEP Sections

i. “Drawing” of Non-Visual Mark - SeeTMEP §  807.09


a. Not to be confused with a motion mark, or a mark that has been modernized or changed over a long period of time, a fluid mark is one which undergoes significant and frequent change.

b. A fluid mark is one that is not always presented in a uniform format; instead, the mark is intentionally dynamic. 

c. Successful fluid marks are used temporarily, and are designed to coexist with the underlying mark, rather than replace the mark.

i. Variations must bring the original version of the mark to the consumer’s mind.
ii. To that end, the variations should either retain certain identifiable characteristics of the standard mark, appear in a context in which the consumer would expect to see the original mark, or both.
iii. The original mark should continue to be used in order to avoid claims of abandonment. 

d. Examples:

i. The “Google Doodle” that changes routinely on the search engine’s home page.
ii. The classic MTV Logos of the 1980’s and 1990’s which depicted the MTV logo in continuously changing animations.
iii. The Absolut Vodka bottle which has been transferred to a host of different objects.


a. A “phantom element” in a mark is a component (such as a specific alpha or numeric model number or other product designation, a date or a location) that is subject to change, as different designations are used for specific products.  The Federal Circuit has defined a “phantom mark” as “one in which an integral portion of the mark is generally represented by a blank of dashed line acting as a placeholder for a generic term of symbol that changes depending on the use of the mark.”  In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1515 n.1 (Fed. Cir. 1999

b. Phantom elements of marks run afoul of the requirement that an application be limited to one mark, and are refused registration under sections 1 and 45 of the Trademark Act.

c. Examples:

i. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999)
ii. In re Primo Water Corp., 87 USPQ2d 1376 (TTAB 2008)
iii. In re Dana Limited, Serial No. 85-447,797 (Jan. 30, 2014 TTAB)

d. Relevant TMEP Sections

i. “Phantom” Elements in Marks – see TMEP §§ 1214


a. Treat trademarks consistently as source identifiers.

b. Avoid statements in marketing/advertising that highlight a function of a product feature that would be important to competitors.

c. To establish secondary meaning, use “look for” advertising that helps consumer connect the unique trademark to the brand owner.

d. Document development of products/trademarks

e. Actively police trademark/trade dress rights (e.g., trademark audits, usage guidelines, educating internal business teams).

f. Collect customer complaints of infringing products.

g. Collect unsolicited references to the non-traditional mark in the media.