Best Practices for Demonstrating Distinctiveness of Nontraditional Trademarks

INTA’s Non-Traditional Trademarks Committee—U.S. Subcommittee recently held a panel discussion with the United States Patent and Trademark Office (USPTO) trademark examiners, law office managers, policy specialists, and executives on examination of nontraditional trademarks (NTMs). The panel included several INTA representatives—in-house trademark lawyers from industries spanning entertainment, finance, consumer products, e-commerce, energy, and fashion; and a dozen of the USPTO’s leaders in various roles whose work focuses on NTMs.

It was a rare and valuable opportunity to exchange ideas with the USPTO’s foremost authorities on NTMs. The two-hour discussion covered two broad topics:

1. The USPTO’s renewed emphasis on design codes for NTMs covered in the article “$350 Buys a Trademark Application in the US—But Nontraditional Marks Present Unique Challenges”;
2. Best practices for showing acquired distinctiveness of NTMs, which will be discussed here.

What is a Nontraditional Trademark?

Nontraditional trademarks extend beyond words and logos to include colors, sounds, scents, product shapes, textures, motions, and other symbols (there really isn’t any limit) that are capable of serving as brand identifiers. Famous examples include Tiffany & Co.’s robin’s egg blue, MGM’s roaring lion, Christian Louboutin’s red-soled shoes, the distinct sequence of the NBC chimes, and the unique scent of Play-Doh.

Interestingly, our USPTO panelists emphasized that examiners do not really think in terms of “traditional” versus “nontraditional” marks. To them, they are all just trademarks—the key question is distinctiveness. That said, proving acquired distinctiveness for NTMs often presents unique challenges, given rules and processes originally designed with traditional marks in mind.

See INTA’s Fact Sheet in Non-Traditional Marks for more information.

Surveys as Evidence of Distinctiveness

Examiners underscored that they “love a properly constructed survey.” Well-crafted surveys remain one of the strongest forms of evidence, provided they:

• Use the correct universe of respondents (the actual consumer demographic);
• Include methodology, not just results;
• Ask neutral, non-leading questions;
• Present stimuli that realistically mirror marketplace conditions; and
• Submit the survey to the USPTO in its entirety, not just as selective excerpts of survey questionnaires or results.

Of course, traditional surveys (and the outside experts hired to do them) can be prohibitively expensive in the context of prosecution of a trademark application, as opposed to trademark litigation, where the expense of surveys and survey experts is more generally accepted as a necessary part of the process. So, we asked the examiners what they thought about “do-it-yourself” (DIY) surveys, such as those designed by an applicant or its counsel and run through a platform like Qualtrics. The USPTO examiners and law office managers acknowledged some skepticism but said that, as long as it is well-constructed and meets the above criteria, even lower-cost surveys can be persuasive.

Examiners also cautioned that survey results showing unrealistically high recognition (e.g., 90 percent or more) may suggest methodological flaws. Interestingly, they noted that when survey results are strong, applicants usually have equally strong evidence from other sources.

Other Evidence of Consumer Recognition USPTO Examiners Like to See

• Unsolicited media and social media coverage | User comments on social media—when specifically referencing the NTM that is the subject of the application—can be powerful evidence. General references to a product as a whole, however, carry less weight.
• “Look for” advertising | Examiners enthusiastically encouraged use of campaigns that explicitly call attention to the NTM as a brand element (e.g., UPS’s WHAT CAN BROWN DO FOR YOU?). They were surprised to hear from the practitioners on the panel that many companies still underutilize, and sometimes even resist, this brand-building strategy.
• Advertising/marketing spend | Broad advertising and marketing spending figures are of limited value. Evidence is far more persuasive when spending is tied directly to promoting the specific NTM that is the subject of the application.

A Few More Practical Tips from USPTO Examiners

• Avoid overly broad applications | Multiclass applications or lengthy goods descriptions make proving distinctiveness harder and raise concerns over an applicant’s bona fide intent to use the NTM for all the claimed items.
• Frontload evidence | Applicants should consider submitting strong evidence of acquired distinctiveness when filing their initial applications, rather than waiting for a refusal. For most NTMs, applicants should expect distinctiveness to be a challenge. So why not put your best foot forward with the initial filing? Examiners saw no downside to “frontloading” evidence of acquired distinctiveness. While this shifts cost to the time of filing, that cost would likely be incurred later anyway, and it avoids wasting a “bite at the apple” during prosecution.
• Keep submissions organized | Whether evidence is frontloaded or filed later in prosecution, the examiners made clear that being organized is absolutely critical. Indexes, tables, and cross-references make voluminous evidence manageable. A 500-page PDF dump with no indices or cross-references will not win an examiner’s favor.
• Petition early for special drawings | For NTMs requiring multiple renderings (e.g., motion marks), examiners encouraged filing a petition for special drawings promptly after receiving a serial number, rather than waiting for an office action. The USPTO team helpfully noted that, if submitted shortly after the initial application filing, submissions of this nature often can be decided before the application is examined. These can be sent to [email protected].

Where to Start

Examiners encouraged practitioners to consult the Trademark Manual of Examining Procedure (TMEP), study successful NTM registrations, and reach out to [email protected] or [email protected] with specific questions.

Author’s Note

These conversations remind us that, while proving acquired distinctiveness for nontraditional marks is not easy, the path forward is clearer when examiners and practitioners are working together, and this panel of USPTO experts gave me more confidence in that than ever.

To read further on the work the committee has down with the USPTO including its renewed emphasis on design codes for NTMs, see Madeline Thomas’ article $350 Buys a Trademark Application in the US—But Nontraditional Marks Present Unique Challenges.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2025 International Trademark Association