Touch it, Smell it, Register it?

Natasha Jean-Pierre

Coca-Cola, “Just Do It”, and The McDonald’s Golden Arches immediately come to mind when we think of trademarks. Traditionally,  trademarks consist of words ,  graphic elements, or a combination of the words and the graphics  However, a trademark can be almost anything, as long as it is capable of identifying and distinguishing a particular individual or company as the source of goods or services. Over the last 20 years, the USPTO has seen an increase in applications for non-traditional marks such as scents, touch, sounds, fluid marks, color, and movement.
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In 2006, the iconic two-strike "chung chung" sound at the beginning of Law & Order received a sound mark. In 2008 and 2010, Music Legend Stevie Wonder successfully registered touch marks for  apparel and entertainment performances with the wording “a wonder summer’s night” or “Stevie Wonder” written in Braille. In 2014, the University of Arizona successfully registered a Sensory Mark for the chant “Woooooooo. Pig. Sooie!”.  On May 18, 2018, Play-Doh joined a small group of 13 active registrations when it received a trademark registration for its scent. 
 
Successfully registering non-traditional marks can be an arduous process. The key to successfully registering these types of marks are to be precise, demonstrate that the mark has acquired distinctiveness, collect evidence, and show that the mark is not functional.

Be Precise
            When registering a non-traditional mark, it is important that the applicant describe and the mark very clearly and precisely. For example, the two-strike "chung chung" sound for Law & Order is described as: “two musical notes, a strike and a rapid rearticulation of a perfect fifth pitch interval, which in the key of C sounds the notes C and G, struck concurrently”.

Acquired Distinctiveness
The primary impediment that many non-traditional marks face is demonstrating that the proposed mark is in fact distinctive. The USPTO may look to see if your mark has acquired secondary meaning in commerce. This means that the applicant must show that consumers connect the individual or company’s non-traditional mark as a source identifier for the goods and services it offers in commerce.

Evidence
Play-Doh demonstrated that consumers identify their product with the “sweet, slightly musky, vanilla fragrance” because they were in the market for decades. The company submitted articles from various sources that described the distinctiveness of the toy’s aroma. For most companies, who do not have this type of information, they may have to generate evidence of consumer perception through conducting surveys. Additionally, it is in the individual or company’s best interest to focus on the “non-traditional” aspect of their product in their promotional materials and advertisements.

Non-Functional
Similar to traditional trademarks, non-traditional marks cannot be functional. The mark cannot be  essential to the use or purpose of the product, enhance the feature of the product, or affect the cost or quality of the product.