To Create and Own a Nontraditional Trademark, Just Follow Tradition

AuthorRobert D. Litowitz - Linda K. McLeod
PositionRobert D. Litowitz is a partner at Kelly IP, LLP in Washington, DC. He specializes in trademark, copyright, and false advertising law, and can be reached at rob.litowitz@kelly-ip.com. Linda K. McLeod is a partner with Kelly IP, LLP. She specializes in trademark prosecution, litigation, and counseling. She may be reached at linda.mcleod@kelly-ip...
Pages20-66
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
To Create and Own a
Nontraditional Trademark,
Just Follow Tradition
By Robert D. Litowitz and Linda K. McLeod
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
or as long as we have practiced trademark law,
and that is now going on 35 years, we have been talking about
“nontraditional” marks. This decades-long conversation begs
two questions. What makes a trademark “traditional”? And
what do we mean by “nontraditional” marks in 2017?
Traditionally, that is, under common law, the universe
of things that trademark law would protect was narrow—
words, names, and symbols. But even early on, courts
recognized that the real test of what is or is not a trademark
should depend more on whether something functioned as a
trademark, rather than whether that “thing” t within some
preconceived categorical denition.
In its ideal form, a trademark identies the source of a
product or service and distinguishes it from ones put out by
others. As anyone knows who has seen a child light up when
the car she is riding in whizzes past the Golden Arches, we
implicitly understand the source-identifying power of big
names and bright signs. But what else might also serve that
trademark function? The look and dimensions of the restau-
rant itself? The golden yellow of the arches? The taste of a
Big Mac? Its aroma? Or even the sound of the musical notes
that cue McDonald’s tagline at the end of commercials?
Today, the answer is clear: anything that serves the
trademark function of source identication and differen-
tiation is eligible for federal or common law trademark
protection. So, restaurant congurations and decor have
been protected (think Howard Johnson’s orange roof or
Fuddruckers’ interior). So have colors (pink for Owens
Corning berglass insulation) and sounds (the MGM
lion’s roar or NBC’s three-note chime). Even scents have
been found to merit trademark protection.
While we label all of these nonverbal “marks” as non-
traditional, the basis for their protection stems from
traditional sources: the common law and the Lanham Act.
As the Supreme Court noted in its seminal “color”
case, Qualitex Co. v. Jacobson Products Co., the com-
mon law denition of a trademark traditionally included
not just words and symbols, but also “any device” that
is “adopted and used by a manufacturer or merchant in
order to designate the goods [it] manufactures or sells to
distinguish [them] from those manufactured or sold by
another.”1 The Lanham Act, enacted in 1946, codied the
notion that the denition of a trademark includes “any ...
device[s],” as well as “any word, name, [or] symbol.2
Image: iStockPhoto
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Another River to Cross—Functionality
Functional Functionality
Besides secondary meaning, another hurdle for protecting
colors and many other nontraditional trademark formats is the
requirement that such marks be nonfunctional.
A mark is functional if it is “essential to the use or pur-
pose of the [product] or if it affects the cost or quality of the
[product].”10 Color marks may be functional, for example,
when the color results as a natural consequence of the manu-
facturing process. In one case, the Federal Circuit held that
the color black for marine outboard motors is functional
because it makes the motor look smaller and coordinates
well with other colors.11 In another decision involving a now-
archaic product, the United States Patent and Trademark
Ofce (USPTO) held the combination of yellow and orange
functional for public telephones because those colors made
the pay phones easier to see in the dark.12 Other cases where
color was found functional include the color purple for sand-
paper,13 the color pink for surgical wound dressings,14 and the
color coral for earplugs.15
On the other hand, color was found nonfunctional, and trade-
mark-worthy, in cases involving the color yellow for caulking
guns16 and the color orange for a snow removal hand tool.17
Aesthetic Functionality
When color is used to make a fashion statement, a corollary to
the functionality doctrine, called “aesthetic functionality,” may
come into play. Aesthetic functionality focuses on whether a
product feature, such as color, makes the entire product more
desirable because of how it looks, not how it works or per-
forms. The Supreme Court in the Qualitex case recognized that
color can sometimes drive consumer appeal, although in that
case, it found that the murky green color of dry cleaning press
pads did not have such commercial allure. But by recognizing
the possibility of aesthetic functionality, the Court in Qualitex
gave the somewhat moribund doctrine new vitality.
Recently, aesthetic functionality had its moment in the
spotlight when two high-fashion footwear icons battled over
the color red. Christian Louboutin had a US registration for
the color red for its signature red-lacquered soled women’s
shoes. Louboutin saw red—and sued—when the legend-
ary Yves Saint Laurent (YSL) fashion house launched a
line of totally red shoes that marched in Louboutin’s foot-
steps by also featuring red soles. The trial court, siding with
Louboutin, found the red sole “instantly” recognizable and
synonymous with Louboutin.18 But the trial court’s ultimate
ruling favored YSL on aesthetic functionality grounds.19 More
specically, the trial court ruled that the Lanham Act did not
“extend[] protection to a trademark composed of a single
color used as an expressive and dening quality of an article
of wear produced in the fashion industry.20
Louboutin appealed to the Second Circuit Court of
Appeals, which reversed.21 The appellate court concluded that
the trial court’s ruling conicted with the Supreme Court’s
endorsement of single-color marks in Qualitex, concluding
“no special legal rule prevents color alone from serving as
a trademark,”22 whether the color is applied to dry cleaning
press pads or an elegant article of high fashion.
The courts and commentators have relied on the term
“device” to boldly take trademarks places they traditionally have
not gone before. This article will focus on areas of these non-
traditional marks that have pushed the trademark frontier past
the traditional boundary of words, names, and symbols. These
are colors, scents, avors, textures, motions, holograms, and
interiors. (Sound marks, another nontraditional category, were
addressed in a previous issue of Landslide; product shapes and
trade dress, while often included in the nontraditional category,
have been well-accepted trademark formats for decades.)
Color My World Trademarks
Color marks consist of one or more colors used on a particu-
lar product or in connection with a service. For marks used in
connection with goods, color may be used on the entire sur-
face of the goods, on a portion of the goods, or on all or part
of the packaging for the goods. For example, in Qualitex, the
Supreme Court held that green-gold used on dry cleaning
press pads was a protectable trademark where the color had
been used and advertised so extensively that it had transcended
its primary role (just a color) and had acquired a “secondary
meaning,” namely, it became a source indicator—a trademark.3
Previously, in In re Owens-Corning Fiberglas Corp., the Fed-
eral Circuit found the color pink as applied to brous glass
residential insulation registrable where the evidence showed
the color had acquired secondary meaning.4 Similarly, “service
marks may consist of color used on all or part of materials used
in the advertising and rendering of the services.”5
Color marks cannot be registered on the Principal Reg-
ister or enforced against an infringer without a showing of
acquired distinctiveness under §2(f) of the Trademark Act,
15 U.S.C. §1052(f).6
Not all uses of color qualify for trademark protection. For
example, the Federal Circuit afrmed, per curiam, the Trade-
mark Trial and Appeal Board’s (TTAB’s) refusal of registration
for the “blue motif” of Hudson News retail stores.7 The TTAB
had concluded that customers likely would perceive the store’s
blue color as “nothing more than interior decoration” that
“could be found in any number of retail establishments.”8 In
other words, no secondary meaning, no trademark.
However, a color can achieve trademark status when com-
panies promote it—and customers perceive it—as a source
indicator. One example is AstraZeneca’s use of purple for its
Prilosec and Nexium acid reux medications. AstraZeneca
spent many millions of dollars over many years promoting its
purple colored prescription and over-the-counter medications
as “The Purple Pills.” As a result, AstraZeneca not only was
able to obtain registrations for the color purple, but also was
able to enjoin competitors for using purple on their generic
versions of AstraZeneca’s blockbuster medications.9
RobertD. Litowitz is a partner at Kelly IP, LLP in Washington,
DC. He specializes in trademark, copyright, and false advertising
law, and can be reached at rob.litowitz@kelly-ip.com. LindaK.
McLeod is a partner with Kelly IP, LLP. She specializes in trademark
prosecution, litigation, and counseling. She may be reached at
linda.mcleod@kelly-ip.com. The authors thank Danielle Johnson,
associate at Kelly IP, LLP, for her contributions to this article.

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT