Company trademarks test new boundaries

Remember ?Have it your way?? How about ?Coke Is It??

Trademarks used to be simple. At one time the term just described words or symbols used by companies for sales, advertising and other uses, but increasingly, trademarks are being asserted that do not fit the traditional mold. While the Nike ?Swoosh? and the Mercedes-Benz hood ornament once were considered the leading edge of branding, product marketing has moved far beyond symbols. Are there limits on which aspects of a company can be trademarked?

The Coca-Coca bottle, used since 1915, is one of the earliest examples of a company using its packaging to identify its product, but it was not trademarked until 1960.

Smelling trademarks
Today, trademarks have been granted for sounds, colors, shapes and even smells and motions.
Shape marks include the distinctive Hershey?s Kiss candy, the Weber barbecue grill and the Oscar Mayer Weinermobile.

Owens-Corning Corp. pioneered the protection of color by trademarking the color pink in its fiberglass insulation, and many others have followed suit. Duracell has been given a trademark for its copper-top batteries, and the green and yellow combination on John Deere?s farm tractors is protected, too.

More than 500 sound marks exist in the database of the U.S. Patent and Trademark Office including the roar of the MGM Lion, the NBC chimes, the Pillsbury Doughboy?s giggle and the famous Tarzan yell.

One California company even trademarked a floral scent for a knitting yarn.
Intellectual property work is as popular as ever. Pending applications for trademarks totaled more than 431,000 in the United States last year with nearly 5,000 of those applications originating from Colorado.

?The limiting factor is whether the courts will hold as a legal matter that the perception of the senses can be a trademark. Almost any of the senses can qualify, barring possibly taste. I don?t think we?re there yet,? said David Schachter, who heads the intellectual property department at the law firm of Sherman & Howard in Denver. He explained that the public?s identification of a particular brand is the key issue in trademark protection.

?The ultimate question is whether a mark identifies or could identify the source of a good or service. If it does, it meets the legal test of a trademark, and that is why courts have now gone beyond the traditional areas of slogans and words and jingles. It is anything that the public would perceive as having some unique characteristic that identifies a particular source,? Schacter explained.

Motion marks
Most trademarks in the Boulder Valley area have stayed within traditional boundaries, but there are examples here from time to time, such as the distinctive spider graphic applied to ski gear from Boulder?s Spyder Active Sports.

In the past few years, trademarks have wandered into some unusually nebulous areas. One example is Denver-based Frontier Airlines, which is using realistic depictions of animals on the tail of each aircraft. The scheme reaches the outer edge of trademark law where the company is using an overall look and feel rather than a logo or slogan.

Motion marks, which use a series of images to create the trademark impression, have been in use for some time. Examples include Tristar Pictures? animated sequence at the beginning of its films or the Netscape asteroid shower.

An even newer variant is the transitory mark, which is visible only when a product is in use. Yamaha recently trademarked its ?Visibility Spout,? a nine-foot spray of water behind its Waverunner watercraft to make the product more visible.

These types of extremely unusual marks, however, are not yet common, and their use is being challenged in court.

?I think there is a limit,? said Scott Havlick, a partner in the intellectual property group at the Boulder office of Holland & Hart. Havlick has spoken on nontraditional trademarks at the International Trademark Association.

?There are lots of trademark suits where the courts say a trademark is not protectable,? Havlick said. ?Every one of those defines the outer limits of what is protectable. It comes down to how consumers distinguish between sources of goods. If there are unique aspects to a product or its shape or the way it is marketed that defines for consumers where it is coming from, then there is a potential argument that such a product can be trademarked.?

There are certain prerequisites a mark must satisfy in order to serve as a trademark. Each identifying mark or aspect must not only be distinctive or capable of identifying the source of a particular good, but function is also at issue. A trademark aspect cannot serve the product?s function. For example, a company could not trademark the flesh color of a hearing aid because that aspect serves a purpose.

However, the Supreme Court unambiguously ruled in favor of trademark protection for color in Qualitex v. Jacobson Products Co. Inc., which involved a specific color used in pads used for dry cleaning. But the court also ruled that companies must show secondary meaning, signifying that consumers understand the connection. A current court case involves the use of the colors red and black in hand tools.

?The big turf fight right now is over color in different products,? Havlick said. ?It is not a novelty. People spend a lot of money on these nontraditional marks, and I think as businesses become more competitive they are finding ways to get a leg up on the competition.?

Another area where companies are competng fiercely is in trade dress protection applied to the elusive identification of a restaurant?s look. Individually ordinary features such as uniforms, artwork, color and architecture can be combined to serve as an identifying feature.

In its 1992 court decision Two Pesos Inc. v. Taco Cabana Inc., the Supreme Court ruled that such features cannot only function as a mark but also can be inherently distinctive without accumulating the acquired fame required for more traditional trademarks. Since that time, several other chains have struggled with the issue including Denver-based Chipotle Mexican Grill Inc. and Boulder?s Noodles & Company.

?Trade dress is becoming more common although there has been a push back,? said Sherman & Howard?s Schachter. ?I think there has been a little bit of a movement to pull the reigns in and slow it down, but the court definitely will grant you that protection if you have the evidence to back it up.”

Havlick explained that the real test for companies is not whether they can protect their trademarks against infringement but whether trademarks add value to the company.

?I think companies lose sight of the fact that trademarks are only valuable if they improve or preserve the customer experience,? Havlick said. ?It is the same in the realm of word-based trademarks. There are really crummy word marks, and there are really great ones, and what I mean by crummy is that you cannot enforce the mark broadly. A strong mark, and this applies to nontraditional marks too, is one that can be more broadly enforced where you can even keep competitors from selling dissimilar services. Be creative and come up with something a little different. Weird is good in the trademark world.?

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