1 1 AIPLA Firm Logo American Intellectual Property Law Association Non-traditional Trademarks in the United States Neil Henderson Partner Borden Ladner Gervais LLP April, 2013

2 2 AIPLA Firm Logo 2 Outline Overview Non-Traditional Marks - Types Prosecution Procedure Added Bonus - Canada Update

3 3 AIPLA Firm Logo 3 Overview The Singapore Treaty on Trademarks in 2006 was the first international treaty to explicitly recognize non-traditional trademarks As of 2009, only 0.015% of all trademark applications were for non-traditional trademarks Some types may be difficult to enforce –37% success vs 50% generally

4 4 AIPLA Firm Logo 4 Types of Non-Traditional Trade-marks Shape marks (Trade Dress, Get-up) Sensory marks Sound Color Scent Taste Motion marks Appearance marks Holographic marks

5 5 AIPLA Firm Logo 5 Shape Marks (Trade Dress) Color or designs applied to the products themselves or to the packaging in which they are sold The three-dimensional representation of the product itself or the container for the product “Almost anything at all that is capable of carrying meaning” may constitute trade dress if it identifies the source or origin of a product May include features such as size, shape, color or color combinations, texture, or graphics

6 6 AIPLA Firm Logo 6 Shape Marks (Trade Dress) For Example: Product Design/ShapeProduct Packaging

7 7 AIPLA Firm Logo 7 Sound Marks Jingle, piece of music or other sound Short extract from a composition or an entire musical piece Example: Intel’s Chimes ( ): Description: The mark consists of a five tone audio progression of the notes D FLAT, D FLAT, G, D FLAT and A FLAT.

8 8 AIPLA Firm Logo 8 Color Marks Color alone not registrable, only color as applied to a product Not registrable if the color is functional Color marks are not inherently distinctive and must have acquired distinctiveness Examples:

9 9 AIPLA Firm Logo 9 Scent Marks The scent of a product may be registrable if it is used in a non-functional manner Perfume or air freshener scents are not registrable In re Clarke: the scent of plumeria blossoms functioned as a mark for “sewing thread and embroidery yarn“ Substantial evidence required

10 AIPLA Firm Logo 10 Taste (Flavour) Marks Flavour is not inherently distinctive because it is generally seen as a characteristic of the goods Requires a substantial showing of acquired distinctiveness Unclear how a flavor could function as a source indicator Several attempts to register, but most attempts have been found to be functional

11 AIPLA Firm Logo 11 Motion (Moving Images) Marks Typically composed of graphic images Meeting requirements of distinctiveness and functionality typically less problematic Consistent display of the motion is required

12 AIPLA Firm Logo  For Example: 12 Motion (Moving Images) Marks

13 AIPLA Firm Logo 13 Appearance Marks Visual appearance, externally or internally – intended to protect the “look and feel” For Example: Design and layout of a retail store Design of a restaurant menu Website Design –may be registrable based on acquired distintiveness

14 AIPLA Firm Logo 14 Appearance (Shapes) Marks Apple Store Design Motel 6 Hotel Design

15 AIPLA Firm Logo Al Johnson’s Swedish Restaurant –Goats on the roof trademark registration 15 Appearance (Shapes) Marks

16 AIPLA Firm Logo 16 Holographic Marks Holograms are marks that appear to change when viewed from different angles Hologram often has two or more views (not exactly a motion mark) – risk of refusal as being separate marks – use written description

17 AIPLA Firm Logo 17 Registering Non-traditional Trademarks Shape Marks (Trade Dress): –Trade dress applications must include an accurate description and a drawing of the mark –A product design trade dress is not inherently distinctive and evidence of secondary meaning must be submitted –If the mark has three-dimensional features, the drawing must depict a single rendition of the mark in three dimensions –Drawings of trade dress marks, including three-dimensional product design and product packaging, may not contain elements that are not part of the mark –Coca-Cola bottle registered in 1960

18 AIPLA Firm Logo 18 Registering Non-traditional Trademarks Color Marks: –Substantial proof of acquired distinctiveness – evidence required Declaration of long substantially exclusive use Surveys/Customer testimonials Show extensive advertising dollars –A drawing of the mark –A detailed description of the connection between color and product –A specimen showing the color and connection to the product

19 AIPLA Firm Logo 19 Registering Non-traditional Trademarks Sound Marks: –A detailed description, including any words or lyrics, of the sound. –An audio or video reproduction of the sound only, in a sound file format. –A specimen of the sound used in connection with the product or service –Commonplace sounds made in the “normal course of operation” may be registered only upon proof of acquired distinctiveness (e.g. Harley Davidson motorcycles)

20 AIPLA Firm Logo Registering Sound Marks Homer Simpson’s D’OH! ( ): 20

21 AIPLA Firm Logo 21 Registering Non-traditional Trademarks Motion Marks: –A drawing depicting either a single freeze frame or multiple freeze frames, whichever type creates the better impression of the mark. –A written, detailed description of the motion. –A specimen of how the motion is used in connection with the services. –Does not require proof of acquired distinctiveness –Producing appropriate drawing may be difficult to get an accurate representation

22 AIPLA Firm Logo Motion Marks - Netscape 22

23 AIPLA Firm Logo 23 Registering Non-traditional Trademarks Scent Marks: –First scent mark registered in 1991 –Substantial proof which establishes that the scent has acquired distinctiveness –A detailed written description –A specimen of the fragrance –Because fuel cannot be shipped across state lines, Amyris soaked cotton balls in the citrus-scented biofuel and submitted the cotton balls with its application

24 AIPLA Firm Logo 24 Non-traditional Trademarks in Canada Canadian Trade-marks office more accepting of certain types of non-traditional trademarks –Trade dress has been registered under “distinguishing guise” provisions –Several motion marks have been registered March 2012 – MGM Lion’s roar registered as first modern sound mark. Currently 23 registered sound marks in Canada

25 AIPLA Firm Logo Questions? Thank you! ありがとうございます！ 25 Neil Henderson