Non-Traditional Trademarks: Protecting a Distinctive Sound, Color, Scent or Touch

July 2009

What is a trademark? A trademark is "any word, name, symbol, or device, or any combination thereof" that indicates the source (maker, distributor, manufacturer, etc.) of particular goods and/or services. This seems straightforward enough, but what does that really entail? We're all familiar with the concept that certain words, designs, and shapes can serve as trademarks: Apple® for computers, the Nike "Swoosh" for shoes, the Coca-Cola bottle for soda — the list goes on.

The Non-traditional Trademark

Beyond these customary types of marks, there exists a host of non-traditional marks. For example, a color can be trademarked, as can a scent. Other non-traditional marks include sounds, holograms, tactile materials and moving objects.

You may be asking yourself, "How can anyone trademark a color?!" It's all about the consumer's recognition of something, such as a word or a logo, as a brand.

The general formula for building consumer recognition in a trademark is simple:

goods + TM = source.

If you can get a consumer to recognize that specific goods, when combined with a certain "something" emanate from one source, then you're well on your way to establishing trademark rights, for example:

athletic shoes + "swoosh" design = Nike.

Some marks are so distinctive that the U.S. Trademark Office requires no proof of consumer recognition to obtain Federal registration. Arbitrary marks, for example, which consist of some real word, image, etc., used in connection with something entirely unrelated to that thing, are assumed to identify a source. Look at Apple® for computers: what do apples and computers have in common? Nothing. Another type of mark that requires no proof of consumer recognition is a fanciful mark. This is a made up term created for the purpose of becoming a brand name, such as the Google® search engine.

Whereas arbitrary and fanciful marks can fly through the Trademark Office with no need to prove "goods + TM = source" consumer recognition, owners of non-traditional marks generally must prove that this recognition exists. This is known in the field as establishing acquired distinctiveness or secondary meaning.

So how do you know a non-traditional mark when you see/hear/smell one? Here are some examples:

Sound: The familiar "D'oh!" of Homer Simpson was issued Reg. No. 3411881 in 2008.
Color: The canary yellow color of 3M’s Post-It® notes was issued Reg. No. 2390667 in 2000.
Scent: Plumeria scented sewing thread (formerly Reg. No. 1639128, now cancelled for failure to renew).
Touch: The velvet material covering the surface of a wine bottle was issued to registrant American Wholesale Wine & Spirits, Inc. in 2006 (Reg. No. 3155702).

It is important to note that no part of these marks is a function of the product or service. Being canary yellow in color is neither necessary, nor particularly useful, to how well a Post-It® note works. Sewing thread will secure errant buttons as well with a plumeria scent as without it. And "The Simpsons" would (arguably) still be funny if Homer weren’t able to say "D'oh!" This isn’t a coincidence: when a feature is "functional" — producing a more useful, efficient or appealing product or service (yellow for a lemon substitute or plumeria scent for a room freshener) — it generally cannot be protected as a trademark.

Non-traditional Trademark Requirements

So if you plan to incorporate a non-traditional trademark into your branding strategy, remember these requirements for achieving trademark status and federal registration. You must show that:

consumers identify your sound, scent, color, etc. with your product or service (“goods + TM = source” consumer recognition); and
that sound, scent etc. mustn’t be functional (i.e., it isn’t necessary to make your offerings useful, efficient, or satisfactory to consumers).

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