1 1 AIPLA Firm Logo American Intellectual Property Law Association Non-traditional Trademarks in the...
25
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
1 1 AIPLA Firm Logo American Intellectual Property Law Association Non-traditional Trademarks in the United States Neil Henderson Partner Borden Ladner
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
Slide 3
2 2 AIPLA Firm Logo 2 Outline Overview Non-Traditional Marks -
Types Prosecution Procedure Added Bonus - Canada Update
Slide 4
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
Slide 5
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
Slide 6
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
Slide 7
6 6 AIPLA Firm Logo 6 Shape Marks (Trade Dress) For Example:
Product Design/ShapeProduct Packaging
Slide 8
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: Intels Chimes (75332744): Description: The mark
consists of a five tone audio progression of the notes D FLAT, D
FLAT, G, D FLAT and A FLAT.
Slide 9
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:
Slide 10
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
Slide 11
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
Slide 12
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
Slide 13
12 AIPLA Firm Logo For Example: 12 Motion (Moving Images)
Marks
Slide 14
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
Slide 15
14 AIPLA Firm Logo 14 Appearance (Shapes) Marks Apple Store
Design Motel 6 Hotel Design
Slide 16
15 AIPLA Firm Logo Al Johnsons Swedish Restaurant Goats on the
roof trademark registration 15 Appearance (Shapes) Marks
Slide 17
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
Slide 18
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
Slide 19
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
Slide 20
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)
Slide 21
20 AIPLA Firm Logo Registering Sound Marks Homer Simpsons DOH!
(76280750): 20
Slide 22
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
Slide 23
22 AIPLA Firm Logo Motion Marks - Netscape 22
Slide 24
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
Slide 25
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 Lions roar registered as first modern
sound mark. Currently 23 registered sound marks in Canada
Slide 26
25 AIPLA Firm Logo Questions? Thank you! 25 Neil Henderson
[email protected]