Non-Traditional Trademarks – Color Trademarks, Sound Trademarks, Scent Trademarks, and Flavor Trademarks

In some circumstances, non-traditional trademarks can serve as identifiers of the source of goods or services. These non-traditional trademarks include color marks, sound marks, scent marks, and flavor marks. The registration of colors, sounds, and scents is recognized by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of the World Trade Organization, Module III.B.(a)(i). The US Patent and Trademark Office provides procedures to apply for registration of non-traditional trademarks.

In order to be protectable as a trademark, the proposed trademark must not be functional or serve a utilitarian purpose. Functionality issues can arise in the context of pure functionality, aesthetic functionality, or when the proposed trademark is essential to the purpose of the goods.  My trade dress page provides additional discussion of functionality.

Color as a Trademark

Color trademarks may consist of a color or combination of colors applied to the goods, a portion of the goods, or the packaging of the goods. A color trademark may also be one or more colors used on the advertising materials for services.

Color was traditionally not protectable as a trademark. Color is usually viewed as ornamentation on the goods or the packaging of the goods. Courts have also been concerned about litigation over confusion around different shades of color, as well as the potential for a barrier to entry into the market to exist once all the colors were used up for a particular type of product. However, trademark registrations have been issued for colors when the applicant could show that the color applied to their product identified the applicant as the source of the product. Expressed differently, color can be registered as a trademark when that color has acquired distinctiveness or secondary meaning. The amount of evidence required to show that a color has acquired distinctiveness is substantial, and use for a long period of time will be insufficient without other evidence.

Although single colors are never inherently distinctive, in some circumstances combinations of multiple colors applied to packaging may be inherently distinctive and entitled to registration without showing acquired distinctiveness.

Color cannot be registered as a trademark when that color serves a functional purpose. Colors can serve a wide variety of purposes which raise the issues of utilitarian functionality and aesthetic functionality. For example, permitting registration of a color mark would put competitors at a disadvantage in an industry wherein color coding of the product is important. Registration of a color would also not be allowed if a particular color is regarded as advantageous for the goods listed in the application. For example, colors which are highly visible in the event of an emergency will not be registrable for goods which must be easily found during an emergency. If a color is a natural result of the manufacturing process of the goods, that color will not be registrable.

Registering a color as a trademark requires special considerations. Please contact me to discuss your specific situation.

Sound as a Trademark

Sound marks are unique among nontraditional trademarks since they can be registered based on inherent distinctiveness as well as acquired distinctiveness.

Sound will be found to be functional and cannot be registered as a trademark when the sound is essential to the purpose of the goods, for example, the sound of a security alarm.

Most sound trademarks are musical compositions which were composed for the specific purpose of identifying a source of goods or services, for example, jingles, brand music, and brand themes. These sound logos are often included near the beginning or end of advertisements, and are often played in connection with displaying a visual logo.

One of the most famous attempts to register a sound as a trademark was made by Harley-Davidson, Inc., which filed application serial number 74485223 to register the exhaust sound of its motorcycles in 1994. The application was approved for publication in the Official Gazette. Nine oppositions were filed by various manufacturers of motorcycles and motorcycle parts. The application was ultimately abandoned, and the oppositions were sustained.

Obtaining registration of a sound trademark is difficult, and most applications are rejected. If you have a sound mark you wish to protect, please contact me to discuss your mark.

Scent as a Trademark

Scents or smells can be registered as trademarks when they have become known as an indicator of the source of the goods on which they are used. Scents are likely to be viewed as attributes of the product rather than an indicator of the source of the product, and can therefore never be inherently distinctive. The amount of evidence required to show that a scent has gained acquired distinctiveness is substantial. Use for a long period of time, without other evidence, will be insufficient.

Scent will be found to be functional and cannot be registered as a trademark when the scent is essential to the purpose of the goods. For example, the scent of a perfume or air freshener can never be registered since the purpose of those goods is to provide a scent. Scent is more likely to be registrable if a scent typically has nothing to do with the product with which it is used.

Flavor as a Trademark

Flavors are particularly difficult to protect as trademarks. Not only is a flavor typically viewed as an attribute of the goods rather than an indicator of the source of the goods, but a consumer does not have access to the flavor prior to purchasing the goods. Although it is theoretically possible to register a flavor as a trademark if the flavor can be shown to have acquired distinctiveness, the evidentiary burden of showing acquired distinctiveness is substantial. The Trademark Manual of Examining Procedure does not list a single example of a successful application to register a flavor as a trademark.