How to Find and Develop Your Company's Non-Traditional Trademarks

By Janet A. Marvel
February 2013

It will come as no surprise to anyone that brand names can have staggering value. Forbes reported in 2011 that the GOOGLE mark was worth over 44 billion and APPLE was worth almost 30 billion. While the brand names reported in Forbes are the companies' marquee names, most companies own many trademarks, and they contribute significantly to a company's bottom line. But some companies don't know where this trademark gold resides. Finding it is worth the effort.

What is a Non-Traditional Trademark?

Companies can derive significant value not only from words and logos, but also from product packaging, shapes, colors and even scents or sounds. Think, for a moment, of the shape of a Coca-Cola bottle. You know instantly what product it signifies. Similarly, orange and purple on a truck means "FedEx."

Anything can be a trademark as long as it symbolizes a particular source. A restaurant in Wisconsin owns a trademark registration for goats eating grass on its roof. A company recently applied to register the scent of pina coladas to designate a ukulele. Lucasfilms owns federally registered trademarks for the sound Darth Vader makes while breathing and the sound of a light saber. Edgar Rice Burroughs, Inc. owns the Tarzan call. TTX Company owns a trademark registration for the color yellow used on toy railroad cars. Innovation First, Inc. owns a registration for the shape of a test tube used as packaging for toy figures. All of these marks protect against use by others in connection with toys and other products.

Companies can and should audit their products and packaging to determine if they have trademarks whose value they have not considered. Car companies do this regularly. For example, Ford has registered the shapes of the Model T and the Mustang as trademarks for toys. The registrations help Ford derive licensing revenues. Wilson Sporting Goods filed an application in 2005 for its trademark red color for tennis equipment, which it had used since 1974. Your company may have similar, possibly ignored until now, trademark rights.

Registering your Non-Traditional Trademark

Once you identify a non-traditional mark, you should register it with the U.S. Patent and Trademark Office. It is more difficult to register a non-traditional mark than a word or logo, but often worth the effort since federal trademark registration constitutes evidence that the registered symbol actually is a trademark, and that the registrant owns it. A shape, color, sound or scent cannot be registered unless the trademark applicant can show that the public recognizes it as a trademark. This public recognition is known in trademark law as "secondary meaning" or "acquired distinctiveness."

Evidence of secondary meaning can include sales and advertising numbers, length of use, media mentions, and copies of advertisements. LucasFilms recently registered the shape of "Tie Fighter" space ships from the Star Wars movies. LucasFilms had gargantuan evidence of secondary meaning, including movie sales, a Smithsonian exhibition and 33 years of use. Fortunately, that quantity of evidence typically is not necessary. There are no bright line rules on the amount or types of evidence necessary, but an expert can help you determine what will work.

Non-Functionality

In addition to the requirement to show secondary meaning, applicants for non-traditional marks must show that they are not functional. A mark is functional if it is essential to the product, or makes the product cheaper or better. For example, a company owning a trademark registration for a round beach towel (truly you can trademark anything) sued a competitor for infringing it. The court canceled the registration, finding that the round beach towel mark was functional. As evidence, the court noted that prior patent applications pointed out that the round shape "benefit[s] lazy sunbathers" because they don't have to stand up to follow the sun.

You can avoid a functionality finding by planning ahead. When developing a product, adding a feature – like a color or shape – solely to distinguish your product and not for a utilitarian purpose can turn that feature into a trademark. You can also create secondary meaning, and avoid functionality, by advertising correctly. Advertising asking consumers to "look for" a feature can help create secondary meaning. Conversely, advertising pointing out the utilitarian benefits of a feature can kill its chances to be a trademark. For example, a drink company's advertising telling consumers to "get a grip" on the ridges of its bottles tells customers that the ridges in the bottles are there to help them hold the bottle, not to help them recognize it on a store shelf.

Your company probably already owns a host of trademarks ready to be protected. You can also make minor tweaks in your design and marketing processes to create more value in new designs. Trademark registrations are extremely valuable tools to help you establish, protect and preserve your newly discovered or created assets.