From signature product features to distinctly recognizable colors, brands today are embracing (and protecting!) non-traditional trademarks to stand apart from the competition and to stay relevant in a rapidly changing business landscape.
A “traditional” trademark may consist of words, numbers, logos, or graphic designs applied to products or packaging, or used on advertisements for services.
Slogans or taglines for a brand might have been the original “non-traditional” trademark. While taglines do not always have the staying power of a product brand name (of course, there are exceptions to every rule such as: “Just Do It” – “Breakfast of Champions” – “Got Milk?”), taglines are everywhere now and are frequently registered with the U.S. Trademark Office in the same manner as traditional trademarks.
Non-Traditional
Over time, brands have used additional – or alternative – elements to identify the source of goods or services. These alternative elements are referred to as “non-traditional” trademarks and can include colors, product or packaging configuration (e.g., the physical shape or look of the product), and even sounds or scents!
To be registered at the U.S. Trademark Office, non-traditional trademarks must meet the same requirements as traditional trademarks: distinctiveness, non-functionality, and use in commerce. The big difference between the two? Non-traditional trademarks often require more evidence to prove distinctiveness. Many non-traditional trademarks, such as product configuration and color, are not considered to be “inherently distinctive.” This means that your client’s use of a non-traditional mark over time is very important, and it is also especially important to keep a record of it!
Non-traditional trademarks can be quite recognizable to consumers: (1) colors and color schemes of products themselves and/or the packaging can catch a busy consumer’s eyes more quickly and effectively; (2) product shapes can become the unique clue to the source of a product and indicate distinct qualities of that product; and (3) sounds can trigger instant recognition to consumers of a service. Each of these elements can be employed to quickly indicate a product or service’s source and serve as a strong trademark, making these elements invaluable to a brand but at increased risk of counterfeiting or copying.
Enforcement
When enforcing non-traditional trademarks, the trademark itself may face more scrutiny due to the non-traditional trademark being more subjective in nature. For example, without a federal registration, courts will require clear evidence of consumer recognition and association of the pertinent products or services with the brand. Similarly, if federal registration is sought for such a non-traditional trademark, the U.S. Trademark Office will also require the submission of evidence of consumer recognition and association with the associated products or services.
Brand protection needs to keep pace with the diversifying and changing mechanisms for standing out as a provider of products or services (think: brands gone wild on social media platforms). As a result, your client should be advised of some best practices. First, maintain consistent use of the trademark (this goes for both traditional and non-traditional trademarks) in marketing and branding. Second, document all instances of use and consumer recognition of that non-traditional brand. These two simple and common-sense steps will significantly strengthen enforcement claims and/or the odds of more easily registering a non-traditional trademark in the United States.
Benefits of Federal Registration
The reasons to register a non-traditional trademark are the same as any other trademark – to help prevent others from adopting a similar mark that would be likely to cause confusion and to elevate the value of the brand (and the company) by registering that trademark (e.g., tagline, color scheme, product configuration features, sound, scent, etc.).
For example, online sales forums generally require some evidence that your client’s trademark is registered at the U.S. Trademark Office. Brand counterfeiting is the bread and butter for a bad faith seller of products. These bad players rely on the popularity and goodwill associated with your client’s unregistered non-traditional brands to sell their unauthorized products. If your client uses elements not traditionally thought of as a trademark, but otherwise associated strongly with its brand, then your client should seriously consider seeking federal trademark registration for those unique elements.
