Nontraditional & Special Tardemark Types

Sound, Scent, and Motion Trademarks

April 2009

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It should be noted that not all countries
offer protection for non-standard marks;
some countries limit trademarks to marks
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Non-traditional Marks
Did you know you can trademark a smell? The common misconception
is that trademarks are limited to images, logos or phrases. In fact, most
things which can be uniquely linked to the identity of a brand can be
protected by a US trademark.
Historically, the United States provided trademark protection for marks
which were simply seen as source identifiers. For example: words, names,
acronyms, logos, and graphic symbols. US trademarks experienced a
gradual growth to extend protection to other categories of marks includ-
ing sounds, jingles, odors, animations, and scenic devices.
It should be noted that not all countries offer protection for non-standard
marks; some countries limit trademarks to marks which can be visualized.
Types of non-traditional marks:
Sound:
Examples: The Standard Nokia ringtone, the Tetris “electronic Russian folkstyle tune”
• In the US, sounds are submitted via a ‘.wav’ audio file.
Scent:
Example: The smell of beer associated with Dart’s brand.
• In the US, scents can be submitted via a description of the scent as it
applies to a product. It usually applies when a scent is added to a
product which in most circumstances would not have scent added.
Interestingly, perfumes are usually not considered for trademarks
because scents are the primary function of the product.
Motion:
Example: Moving Netscape Logo
• In the US, motion trademarks require drawings as well as a description
for filing. The drawings can either be of a single key point in the move-
ment or alternately no more than five images “story boarding” the move-
ment. Drawings must comply with the normal trademark requirements.
The Trademark Application
Applying for these special trademarks requires special attention by the
applicant. Applicants must adhere to all specifications provided by the
USPTO to get their trademark registered.
3 Conditions
To obtain federal protection for his product, an applicant needs to prove
the conditions of: Validity; Functionality; Infringement arising out of a
likelihood of confusion
Satisfying the three conditions involve technicalities and require an
in-depth knowledge of the product as well as trademark requirements.
Thus, it is recommended that the applicant seek the services of a patent
and trademark attorney.
 Additional Requirements

Drawings
The drawing pre-requisite for trademarks, comprising of product
configurations, presents uniquechallenges. Frequently, the product
being registered, uses two or more dimensions, a distinctive arrange-
ment, or style and size. Under these circumstances, the drawing must
be submitted on a specific form.

For three dimensional product configurations, drawings must

illustrate solitary interpretations of the mark, and the applicant must
specify the mark is three-dimensional.

Additionally, the size of the drawing should be no more than 8 cm

high by 8 cm wide. This can lead to complexity in effectively depicting
an intricate product configuration and identifying unique features,
especially where the configuration is in three dimensions.

Drawing requirements for sound and scent marks differ from the
above mentioned specification. For these, you need to submit a
comprehensive description of the mark. The best way to satisfy this
criterion is to submit a sample or specimen such as an audio CD.

The Challenge
The biggest challenge with nontraditional trademarks is to prove that
the particular scent, motion, or sound is distinctive and is closely con-
nected with the brand.

Additional Requirements
The USPTO requires you to prove acquired distinctiveness or
“secondary meaning” of the mark you want registered. Unfortunately,
the amount of evidence required, to prove the acquired distinctive-
ness of nontraditional trademarks, is sizeable.

Some of the evidence that is accepted by the USPTO includes:

• Proof of considerably exclusive and continuous use of a

name as a mark by the applicant for at least five years
• Owning one or more prior registrations of the same mark on
the Principal Register
• Advertising expenditures
• Survey evidence
• Market research
• Consumer reaction studies

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