Non-Traditional Marks Committee Prepares INTA Bulletin Series on Protection and Enforcement of Nontraditional Marks

Published: June 15, 2022

Lynne E. Graybeal

Lynne E. Graybeal Perkins Coie LLP Seattle, Washington, USA Non-Traditional Marks Committee Chair

Xin Wei

Xin Wei Liuming International Beijing, China Non-Traditional Marks Committee Vice Chair

INTA’s Non-Traditional Marks Committee has authored a series of feature articles on the protection and enforcement of nontraditional marks in various regions for publication in the INTA Bulletin. The series includes an article on color marks entitled “Protecting Color as a Trademark in the United States,” posted in today’s edition. The Committee’s first article, “A Look at Nontraditional Marks in Latin America and the Caribbean,” appeared on March 9, 2022, in the INTA Bulletin.

Collectively, the articles provide a broad overview of the state of global protection options and challenges for nontraditional marks.

The articles reflect the work of members of the Non-Traditional Marks Committee during the 2020‒2021 Committee Term, when it focused its programming and advocacy on best practices for protecting and enforcing nontraditional marks, such as color, motion, smell, sound, taste, and texture. Members looked at various regions, including Asia-Pacific, Canada, India, Latin America and the Caribbean, and the United States.

Marking the first article in the series, the Latin America and Caribbean Subcommittee wrote an article about its analysis of the registrability of nontraditional marks across the region and the subsequent matrix summarizing its findings. The Subcommittee’s feature provides an overview of the registrability of nontraditional marks in the region and details registration issues related to color, hologram, motion, olfactory, position, sound, taste, texture, and 3D marks.

The Committee’s United States Subcommittee prepared the two-part article on color marks—Part 1 is published today and Part 2 will appear in an upcoming issue—and a second article on motion marks, “Best Practices for Protecting Motion Marks in the United States,” to be published in  the coming months.

The current article includes a brief overview of the history of the registrability of color marks in the United States and the findings of the Subcommittee’s review of the United States Patent and Trademark Office (USPTO) file histories for 350 color marks. The Subcommittee’s findings include the most filed colors, the primary classes, and the challenges color marks have faced establishing acquired distinctiveness. The article also includes take-away notes for practitioners.

The Subcommittee prepared its upcoming article on motion marks following the review of USPTO file histories for more than 200 motion marks. Motion marks have long been recognized as protectable in the United States but are still underutilized for brand protection. The article summarizes the registration challenges for motion marks and offers practical guidance on how to best overcome them.

Previously, in the 2018‒2019 Committee Term, the United States Subcommittee authored an article on sound marks entitled “Music to Your Ears; Best Practices for Prosecuting Sound Mark Applications.”

In other regions, in 2020, the Committee’s Asia-Pacific Subcommittee prepared a matrix summarizing the rules and practices of nontraditional marks in 18 jurisdictions—Australia, Brunei, Cambodia, China, Hong Kong SAR, Indonesia, Japan, South Korea, Laos, Macau SAR, Malaysia, Myanmar, New Zealand, the Philippines, Singapore, Taiwan, Thailand, and Vietnam. The Subcommittee’s upcoming article, “Nontraditional Marks Matrix in Asia-Pacific, summarizes its findings on the registration requirements for 10 types of nontraditional marks: combinations of colors, holograms, motion, position, single color, smell, sound, taste, 3D signs, and touch.

Another upcoming feature will explore the new Canadian Trademarks Act, adopted in 2019. The Act  expands the protection of nontraditional marks and introduced a new definition of “sign,” which now specifically includes a non-exhaustive list of nontraditional marks. The Canada Subcommittee’s article, “Canada Expands the Spectrum of Non-Traditional Marks,” provides an overview of the changes brought about by the new Act and the requirements for registration in Canada.

Lastly, the article prepared by the India Subcommittee, “Evolving Marketing/Branding Trends with Respect to Nontraditional Marks,” offers an interesting overview of the evolution of these marks in India and how they have been used by owners as an important marketing and branding tool. The article also addresses the challenges owners face in seeking statutory protection for their nontraditional marks.

All the yet unpublished articles will appear in the INTA Bulletin in the coming months.

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. 

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