David Orozco, © 2008 The Shape of Things to Come: Non–Traditional Trademarks, from the iPod to the Chippendales Dancers David Orozco Assistant Professor of Business Law School of Business and Economics Michigan Technological University

David Orozco, © 2008

Motion Colors Shapes Sounds Architecture

David Orozco, © 2008 “The mark is comprised of a three dimensional spray of water issuing from the rear of a jet propelled watercraft and is generated during the operation of the watercraft. “ Yamaha Motor Co. Registered for “jet propelled water vehicles” Motion Trademark

David Orozco, © 2008 “The drawing is lined for the color blue, and color is a feature of the mark.” Tiffany and Co. Registered for “jewelry, watches and clocks, precious and semi-precious stones; decorative art objects…” Color Package Trademark

David Orozco, © 2008 Hershey Chocolate Co. Chocolates and Candy Shape Trademark

David Orozco, © 2008 The mark consists of a five tone audio progression of the notes D FLAT, D FLAT, G, D FLAT and A FLAT.” Intel Corporation “Computer hardware and computer operating software, microprocessors, integrated circuits and semiconductor devices.” Sound Trademark

David Orozco, © 2008 “The color(s) yellow is/are claimed as a feature of the mark. The mark consists of a three-dimensional configuration arc design.” McDonald’s Corporation Restaurant services Architecture Trademark

David Orozco, © 2008 Innovation & Design In a saturated marketplace, innovation and design are increasingly valuable ($). Consumers are Sophisticated (design demand) Firms need to stand out in a crowded marketplace (design supply)

David Orozco, © 2008

Regular old shopping cartIDEO’s shopping cart

David Orozco, © 2008 axiom : an established rule or principle or a self-evident truth

David Orozco, © 2008 Burberry Limited v. Geconf SpA Photograph of Mayor Bloomberg proclaiming a counterfeit goods store closed in a raid - Bebeto Matthews/AP

David Orozco, © 2008 Red Bull vs. Red Bat

David Orozco, © 2008

“Imitation is the sincerest form of flattery”  Charles Caleb Colton “It is better to fail in originality than to succeed in imitation”  Herman Melville

David Orozco, © 2008

The Role of Trademarks

David Orozco, © 2008 Hershey’s Kisses®

David Orozco, © 2008

or

David Orozco, © 2008 or

David Orozco, © 2008 HSY

David Orozco, © 2008

Three Trademark Quirks Trademarks are supposed to prevent consumer confusion about the source.  A trademark applicant has to prove its trademark is distinctive. Trademark rights may last as long as the product is being sold (in theory forever). Trademarks cannot be functional.

David Orozco, © 2008 Distinctive?

David Orozco, ©

David Orozco, © 2008 Distinctive?

David Orozco, © 2008 “The mark consists of a three-dimensional human torso with cuffs around the wrists and neck collar comprising of a bow tie” “Adult entertainment services, namely exotic dancing for women in the nature of live performances” Trademark

David Orozco, © 2008 The Argument “By taking the cuffs and collar of the tuxedo and leaving a void where the shirt should be, Applicant invited its all female audience to ‘fill in the space’ with their own fantasy. [T]he Chippendales dancer is larger than life and can represent whatever each individual in the audience desires him to represent.”

David Orozco, © 2008 The Trademark Office “There is nothing unique or distinctive about a male dancer wearing cuffs and a bow tie and collar. This is considered to be one of various ways for strippers and male entertainers to dress. A theatrical act, by definition, requires uniform or costume for the purpose of entertainment and drama.”

David Orozco, © 2008 Distinctive Engine Roar? SOURCE: Michael B. Sapherstein, “The Trademark Registrability of the Harley-Davidson Roar: A Multimedia Analysis”, 1998 B.C. Intell. Prop. & Tech. F

David Orozco, © 2008 Harley Davidson “The mark consists of the exhaust sound of applicant's motorcycles, produced by V- Twin, common crankpin motorcycle engines when the goods are in use.”

David Orozco, © 2008 Using a shape trademark to extend the life of a functional product configuration.

David Orozco, © 2008 Honda “engines for use in construction, maintenance and power equipment.” “The mark consists of the configuration of an Engine”

David Orozco, © 2008 The iPod Shape & Clickwheel “the design of a portable and handheld digital electronic media device comprised of a rectangular casing displaying circular and rectangular shapes therein arranged in an aesthetically pleasing manner.”

David Orozco, © 2008 Summary Non-Traditional Trademarks are pushing the intellectual property envelope They can be advantageous  To secure sensory brand elements They are hard to execute  The iPod Case Study offers an inside look at successful execution  Type “iPod shape trademark” in Google for The Wall Street Journal article

David Orozco, © 2008 Thank You! Acknowledgments: C.E. Hanifin, freelance writer

David Orozco, © 2008 Sources: The United States Patent and Trademark Office, Michael B. Sapherstein, “The Trademark Registrability of the Harley- Davidson Roar: A Multimedia Analysis”, B.C. Intell. Prop. & Tech. F (1998), html#fnBa html#fnBa David Orozco and James G. Conley, “The Shape of Things to Come”, The Wall Street Journal,

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