Category Archives: Intellectual Property

Trademarks – Principal Register vs. Supplemental Register

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Some marks are not as strong as other marks, and certain marks that are not eligible for registration on the Principal Register, but are “capable” of one day distinguishing an applicant’s goods or services (such as descriptive terms) upon the acquisition of secondary meaning (proof that the mark has become distinctive as applied to the applicant’s goods or services in commerce), may be registered on the Supplemental Register.

Descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or service.  Examples of descriptive marks include BANK OF AMERICA for a bank headquartered in the United States and WHOLE FOODS for a grocery store that sells health foods (both of which have since acquired distinctiveness and are now registered on the Principal Register).

Only marks actually used in commerce may be registered on the Supplemental Register, so an intent-to-use application is not eligible for registration on the Supplemental Register until the applicant has filed an acceptable allegation of use.

Benefits of Registration on the Supplemental Register

While not the preferred trademark register, registration on the Supplemental Register does provide the following benefits over purely common law rights (i.e., no registration at all):

  • Notice of the mark to anyone who searches the USPTO records.
  • Protection against third-parties registering confusingly similar trademarks at the USPTO.
  • Right to use the official registered trademark symbol “®” as notice of federal registration.
  • Right to sue infringers in federal court and have federal law control key issues of validity, ownership, infringement, injunctions and damages.
  • Ability to obtain foreign trademark protection in countries with international treaties.
  • After five years of usage and/or registration on the Supplemental Register, the registrant can apply for registration of the mark on the Principal Register.

Benefits of Registration on the Principal Register Not Applicable to the Supplemental Register

The following benefits of registration on the Principal Register are not enjoyed by registration on the Supplemental Register:

  • Constitutes prima facie evidence of the registrant’s exclusive right to use the mark nationwide.
  • Constitutes constructive notice of the registrant’s claim of ownership to eliminate the good faith defense.
  • Has a presumption of validity.
  • Carries a presumption that the registrant is the owner of the registered trademark.
  • May be filed with the United States Customs Service to prevent importation of infringing foreign goods.
  • Can become incontestable after five years of registration.

Acquired Distinctiveness/Secondary Meaning

A mark that is descriptive in nature and/or registered on the Supplemental Register cannot likely be registered on the Principal Register without a showing that the mark has become distinctive of the applicant’s goods or services in commerce, namely, that the mark has “acquired distinctiveness” or “secondary meaning.”

After five years of use or registration on the Supplemental Register, a statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made is usually sufficient to show acquired distinctiveness/secondary meaning.

However, depending on the nature of the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness. The mark owner may then submit actual evidence of acquired distinctiveness.

The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.

To support the claim of acquired distinctiveness, a mark owner may respond by submitting additional evidence. Such evidence may include specific dollar sales under the mark, advertising figures (or indicating the types of media through which the goods and services have been advertised (e.g., national television) and how frequently the advertisements have appeared), samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  So, if you are using a descriptive mark, it is wise to keep these requirements in mind and keep track of this information so it is available if needed.

If additional evidence is submitted, the following factors are generally considered when determining acquired distinctiveness: (1) length and exclusivity of use of the mark in the United States by the applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) the applicant’s efforts in the United States to associate the mark with the source of the goods or services, such as unsolicited media coverage and consumer studies.  A showing of acquired distinctiveness need not consider all these factors, and no single factor is determinative.

 

Music Copyrights

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When you talk about copyrights in the music industry, at least two different copyrights exist.  There is a copyright in the lyrics and/or music of the song [the musical composition], and a separate copyright in the recorded version(s) of the song [the sound recording(s)].  If you record or re-record a song (your own or a cover of someone else’s), the copyright in the lyrics and music would remain the same, but there would be a new copyright in each new sound recording. 

musician shows classical guitar and flower music

Copyright in Music and Lyrics

Under the U.S. Copyright Act, everyone that contributes to the songwriting has a claim to the copyright.  Regardless of how much or how little you contribute, the Copyright Act considers all contributors to the same song to be joint authors (a.k.a. co-authors).  Each joint author owns an indivisible share to the entire copyright, unless there is a written agreement stating otherwise between all of the contributors (or any non-contributors).  Therefore, each co-author can do what he wants with the copyright as long as he pays the other co-author(s) an equal share of the proceeds.  Copyright ownership of a song can be very profitable, as songwriters receive money from publishing.  (Sometimes, songwriters assign their copyrights to music publishers to exploit the songs and administer the rights.)

Copyright in Sound Recordings

Technically everyone that contributes to the recording has a claim to the sound recording.  However, usually whomever pays for the recording (usually a record label) owns this copyright through a contract.  The songwriter will own the copyright in the lyrics and music, but the record label will own the copyright in the sound recording.  If the artist pays for the studio time, then the musicians who play on the recording will jointly own the copyright to the sound recording unless this is a written contract to the contrary.  

If the same person or group of people own the copyright in one or more musical compositions as well as the resulting sound recordings, then both copyrights can be protected on one copyright application.  If the owners are different, then separate copyright applications will need to be filed for the musical compositions and sound recordings.

 

Copyright Protection Doesn’t Monkey Around

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The U.S. Copyright Office released an updated 1,222-page “Compendium of U.S. Copyright Office Practices, Third Edition” in 2014 clarifying its position that it “will register an original work of authorship, provided that the work was created by a human being.”  The report goes on to state that “[t]he Office will not register works produced by nature, animals, or plants.  Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy(ies) state that the work was inspired by a divine spirit.”  The report provides examples of works that will not be protected by copyright, and the first example is “A photograph taken by a monkey.”

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The report was originally released weeks after wildlife and nature photographer David Slater claimed that Wikimedia was infringing his copyrights in the “selfies” taken by macaque monkeys in Indonesia by allowing the pictures to be posted in Wikimedia Commons, a library of public domain photos.  Wikimedia refused to remove the images because it believed the monkey was the photographer, and, therefore, the “author” of the photo…and, as non-humans can’t own copyrights, the photo was in the public domain.  Slater argued that he staged the shot and set up the selfie intentionally, so it’s irrelevant that the monkey pressed the shutter (likening the monkey to an assistant).

Although Slater is still claiming copyright ownership in the photos and could file a lawsuit against Wikimedia (as UK or European law may allow Slater to claim ownership if he employed “labour, skill and judgment” in connection with the photographs or they were part of his “intellectual creation”), he is currently offering free canvas prints of the monkey selfie and donating money to the Sulawesi Crested Black Macaques Conservation Programme for each print redeemed.

 

Protecting Your Marks Outside of the United States: Foreign Trademark Priority Filings

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Trademark protection is geographic in scope…meaning that a trademark is only protected in the geographic area(s) (state/region/country) in which the mark is used or registered.

earth globeA United States trademark application or registration with the United States Patent and Trademark Office (“USPTO”) does not protect a trademark in any foreign country.  However, U.S. trademark applications and registrations can be used to obtain trademark protection in other countries and vice versa.

Six-Month Priority Foreign Filings

If the foreign trademark application is filed within six months of the U.S. application, the foreign application can claim “convention priority.”  This means that the foreign application will be treated as if it was filed on the same day as the U.S. application.  Nearly all countries are members of the Paris Convention, which put this rule in place.

“Claiming priority” in this six month window can prove to be a major advantage by providing you with the earliest possible filing date for your mark.  If other applicants file similar marks after that priority date, they will be rejected or suspended. In other words, your application will receive priority over applications filed after not only your actual filing date, but also over applications filed between your actual filing date and your priority date.

Taking advantage of priority foreign filings also allows you the opportunity to spread out the costs associated with trademark filings over a six-month period and gives you time to assess your international brand protection strategy without sacrificing any protection…which can be significant, especially for a new venture or brand.

Foreign trademark applications filed after this six-month “priority” date take the actual dates on which they are filed.

Other Cost-Saving Measures and Strategies

In many cases, there are mechanisms available that provide efficient and cost-effective ways of obtaining protection for your brand simultaneously in multiple countries.  For example, the Madrid Protocol allows a trademark owner to seek protection in any of the almost 100 member countries by filing one application and designating as many member countries as it chooses.  It is also possible to file a single Community Trade Mark (“CTM”) application for a trademark covering all of the countries in the European Union.  You can designate the EU/CTM in your Madrid Protocol application.

 

What’s in a (Brand) Name?

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Choosing a name for your company, creative project, product or service is just as important as (and often more difficult than) naming a child or pet. Brands are so important that many big companies spend hundreds of thousands of dollars and months or even years on research, focus group testing and the like in attempts to find just the right name or logo for a new product or service.

Your brand distinguishes your products and services from your competitors’ products and services. But a brand is much more than just a name or logo.  Your brand also serves as a symbol of the quality, value, and reputation which customers and fans expect in products you sell and services you provide…not to mention the emotional connection customers and fans can develop with your brand.  For example, if we’re talking about driving a Beetle or listening to The Beatles, you probably don’t just think “car” or “band.”  Instead, you likely have thoughts and emotions related to your experiences with and perceptions of those brands — whether positive or negative.

With so much at stake, choosing a name that will resonate with your customers and fans and convey information about your product or service is important.  When brainstorming a name for your company, creative project, product or service, remember that not all brands are created equal … particularly when it comes to trademark protection.

Brands — also known as Trademarks (used on products) and Service Marks (used in connection with services) — include any word, name, symbol, or device, or any combination of these, used, or intended to be used, in commerce to identify and distinguish the goods or services of one entity from those sold or provided by others, and to indicate the source of the goods or services. Trademarks can include entity names, product names, logos, domain names, 800 numbers, slogans, phrases and tag lines, character names, band names, jingles, and trade dress, such as product configurations, color, packaging and store designs.  

The best marks are memorable, appealing and elicit desired responses.  The ultimate goal should be to find a mark that is uniquely yours — a mark that is not confusingly similar to an existing mark used for similar products or services (i.e., someone else beat you to the punch), one that suggests some connection with another organization or famous person, or one that consists of a person’s last name.  And it can take a village of marketing, artistic, business and legal types to find that perfect mark.

While searching for that perfect mark, you should keep in mind that some marks are stronger than others…

  • Generic terms are common names for products or services, such as SALT when used in connection with sodium chloride or THE CHOCOLATIER for a store providing chocolate candy.  These terms can never be protected as trademarks.
  • Descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or service, such as SALTY used in connection with crackers or DALLAS.COM for a website providing tourism information about Dallas.  These marks are not initially protectable unless the owner can show that the mark has gained “secondary meaning” or “acquired distinctiveness” (proof that the mark has become distinctive of the mark owner’s goods or services) in the marketplace over time through extensive and substantially exclusive use.
  • Suggestive marks suggest some characteristic or nature of the product or service and require imagination, thought or perception to reach a conclusion as to the nature of those products or services, such as COPPERTONE for suntan lotion or BLOCKBUSTER for a video rental store. Although there can be a fine line between descriptive and suggestive marks, suggestive marks are automatically protected as trademarks because they are “inherently distinctive.”
  • Arbitrary marks are very strong marks because they have no relation to the product or service, such as APPLE for computers.   However, because these are real words, other companies may have also adopted the words as marks, such as APPLE VACATIONS.
  • Fanciful/coined marks are the strongest marks because they are made up words, such as XEROX for copiers or EXXON for gasoline, and consumers only associate the mark owner with selling that service or product.  

From a trademark protection perspective, fanciful/coined, arbitrary or suggestive marks are preferable to descriptive (protectable with acquired distinctiveness) or generic (never protectable) marks.  Many company, product and service names tend to be descriptive or suggestive because business owners attempt to quickly choose names that help consumers easily identify their products or services.  However, the more creativity you use in the naming process, the stronger the mark and the more likely you are to prevent third parties from being able to use the same or similar mark on similar (or even unrelated) products and services.

Before using or registering a name for your services or products, you should, at the very least, perform a quick “knockout” availability search to see if a third party may already be using the same or similar mark in connection with the same or similar products or services.  You should:

  • Check for entity names and state trademark registrations with Secretary of State Offices where business will be done.
  • Search the U.S. trademark database.
  • Perform a Google search to determine whether third parties have common law rights to the name.
  • Perform a WHOIS search to determine whether domain names are available (as brands typically want a corresponding web presence).

A mark is one of the most important words, phrases or designs you will use to represent your products or services to the world.  Although selecting a name may seem simple, trademark law is very nuanced and is often much more complex than it appears. Therefore, I believe it is a wise investment of resources to engage a trademark attorney to perform more sophisticated searches to determine whether your mark is available and inform you as to the potential risks associated with use and/or registration of your proposed mark.  (Note:  You can save yourself some time and money by performing knockout searches for your potential marks before asking an attorney to search a particular mark more thoroughly.)

Choosing a mark that’s already being used by a third party can result in cease and desist letters and trademark infringement lawsuits…potentially requiring you to abandon use of the mark, destroy all products and materials that depict the mark, and potentially even paying the third party mark owner profits gained from infringing uses of a mark as well as damages the mark owner may have incurred from such infringing use.  The last thing you want to do after spending a bunch of money to print business cards, stationery, packaging, advertising and goodness knows what else emblazoned with your mark is having to scrap everything and start from scratch with another mark.

Hiring a lawyer to guide you during the mark selection process can save you (potentially hundreds of) thousands of dollars and several headaches down the road.

 

Intent to Use Trademark Applications: Reserve Your Brand Today!

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Although actual use of a mark in commerce is usually required to protect a trademark, Intent-to-Use (“ITU”) Trademark Applications extend potential protection to a mark before it is used in interstate commerce.  One of the main benefits is that, once the application matures into a registration, you can claim the filing date as your constructive date of first use of the mark, even though you didn’t actually use the mark until after you filed. (In other words, filing an ITU application provides nationwide priority over others, with the exception of parties who had used the mark before your filing date, parties who had filed before you, or parties who are entitled to an earlier priority filing date based upon the filing of a foreign application). You will also be able to establish some priority in a mark and determine whether your mark is registrable before you invest large sums of money for advertising, printing, etc.

Bona Fide Intent.  Before you file an application with the U.S. Patent and Trademark Office (“USPTO”), you must have a good faith or bona fide intention to use the mark in commerce. I recommend that your intent be bolstered by verifiable documents (corporate minutes, reports, plans, contracts, evidence of R&D, market research, manufacturing activities, steps to acquire distributors or obtain required governmental approval, or other similar activities).

Goods and Services.  A trademark application must list the specific goods/services that will be provided in connection with the mark. (Goods are products; services are activities performed for the benefit of someone else.) The description of goods/services should use clear, concise terms that are easily understood by the general public. Once an application is filed, you can clarify or delete certain goods/services, but you must file a new application to add additional goods/services. As ITU applications are often filed before final decisions have been made, it is usually best to be broad and over-inclusive with respect to the goods/services you reasonably intend to offer.

Allowed Applications. Once your mark clears the initial evaluation and publication process, the USPTO will issue a Notice of Allowance. Your Allowed application will not mature into a Registration unless and until you file an Allegation of Use indicating that you have begun use of the mark in commerce.  You have six (6) months from the date the application is Allowed to file an Allegation of Use. However, you may file up to five (5) six-month Extensions, which allows you to “reserve” the mark for up to three (3) years before actual use of the mark in commerce is required. If an Allegation of Use is not filed within 36 months of the date the application was Allowed, the application will abandon. The USPTO filing fees are currently $150 per Class of goods/services for each Extension, and $100 per Class of goods/services to file an Allegation of Use.

Establishing Use. In order to prepare an Allegation of Use, you will need the following for each Class of goods/services: (1) Date of First Use Anywhere (MM/DD/YY); (2) Date of First Use in Commerce (MM/DD/YY); and (3) a Specimen of Use.

  • Date of First Use Anywhere. The date the mark was first used in commerce anywhere (which may be earlier than, or the same as, the date of the first use of the mark in commerce).
  • Date of First Use in Interstate Commerce. For goods (Classes 1-34), “interstate commerce” involves sending the goods across state (or country) lines with the mark displayed on the goods or packaging for the goods. With services (Classes 35-45), “interstate commerce” involves using or displaying the mark in connection with selling, advertising or offering a service to those in another state (or country) or rendering a service which affects interstate commerce (e.g., restaurants, gas stations, hotels). “Use in commerce” must be bona fide use in the ordinary course of trade, not “token” use simply made to reserve rights in the mark.
  • Specimen of Use. A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Specimens for goods (Classes 1-34) may take the form of labels, tags, packaging, or containers for the goods, a display associated with the goods, or a photograph of the goods that shows use of the mark on the goods. Specimens for services (Classes 35-45) should include some reference to the type of services rendered and may take the form of website screenshots, magazine advertisements, brochures, a sign, a business card or stationery, or a photograph showing the mark as used in rendering or advertising the services.

Controlling Your Domain (Name) to Avoid a Domain Name Fumble

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Next week’s NFL Draft brings to mind a cautionary tale…

It could happen to any of us, and it almost happened to the Dallas Cowboys at a crucial time.  In the middle of the 2010 NFL season, buzz surrounding whether Cowboys’ head coach Wade Phillips was going to be fired (which was ultimately the case) was at an all-time high.  No doubt, fans, rivals and press were all scouring the internet for updates on the situation, and the Cowboys’ website was probably the prime online destination of the day. Unfortunately, the team forgot to renew the dallascowboys.com domain, and many would-be site visitors got error screens instead of highlights and instant replays. Talk about a game-changing fumble! See related article here.Blue Url Words Shows Org Biz Com Edu

It’s worth noting that the dallascowboys.com domain name was originally purchased in 1995 and probably was reserved for the longest possible time allowed.  Although most domain name registrars timely send email renewal reminders to domain name owners, it’s likely that whomever was initially responsible for the domain name was long gone and the renewal information didn’t get forwarded to the proper person (and, although auto-renew is available, the credit card info on file with the domain name registrar was probably no longer valid as well). It’s lucky that the ‘Boys became aware of the problem (which you might call an incomplete pass) and quickly renewed the domain before someone else (perhaps a disgruntled, recently fired coach) grabbed it and tried to hold it hostage.

At least Dallas Cowboys Football Club, Ltd. was listed as the domain name owner.  Many times, the person who originally registers the domain name (whether an employee of the organization or someone with the company hired to design the website) is listed as the owner of the domain name and the domain name is never officially transferred to the organization and/or the information doesn’t get updated…which can cause a host of problems for the organization utilizing the domain name (especially if the employee is terminated or if the development company relationship dissolves).

Although the Cowboys had a close call and almost wound up on the disabled list, this is a great example of how easy it can be for an organization to neglect (and almost lose) one of its most important intellectual property assets. We all know how valuable your website is to your business, so here’s what you should do to prepare your domain name offensive strategy…

If you have a website: 

(1)   Determine who is listed as the owner of your domain name.

To find out who owns your domain name and when the registration expires, type in the domain name (e.g., dallascowboys.com) in a WHOIS search database, such as InterNIC, Network Solutions, or GoDaddy.

(2)   Check to ensure that this information is correct. 

If the Administrative and/or Technical Contact information is not in your company’s name, you’ll want to update this information as quickly as possible.

You may need a Domain Name Transfer Agreement to perfect the chain of title for the domain name ownership.  (While you’re at it, you may also want to make sure you have a Website Development Agreement in place with any third-party web developer for the website associated with the domain name so you own/have rights to your web content and design.)

If the domain name is registered to one of your company’s employees or officers, add this to your employee exit checklist to ensure that this information is updated should the employee/officer leave the company.

A disgruntled/terminated employee or website developer with sole control of a company domain name can easily redirect internet, e-mail and intranet traffic within a matter of moments and bring business to a standstill.

(3)   Calendar a reminder for the domain name renewal date.  

The expiration date for the domain name registration is listed in the WHOIS information (see #1 above).

 

Intellectual Property Audits: Taking Stock of Your Intangibles

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Most companies routinely perform inventory audits of their physical assets…but — even though it’s not always on the radar — performing audits of intangible assets is equally (and perhaps even more) important.

The objective of an IP audit is to identify and protect intellectual property assets that provide you with Audit Rubber Stamp Shows Financial Accounting Examinationa competitive advantage and promote the goodwill of your business.  By creating a process to identify and take steps to protect intellectual property at least once a year (and perhaps more frequently if IP is a major component of your business), you can ensure that valuable assets are not made public, or otherwise lost or compromised, prior to taking the appropriate actions to protect them.  An intellectual property audit and due diligence review should also be performed in connection with mergers and acquisitions and other buy/sell transactions, as well as financing transactions that affect IP assets.

Typical intellectual property assets include product, service and company names and logos (trademarks), website content, written materials, and creative works (copyrights), formulas, processes, product designs and inventions (patents), and proprietary customer lists and other confidential information, such as pricing data and vendor information (trade secrets). Depending on your industry and the types of products and services you offer, there may be other intellectual property assets to consider.  These items should be identified and reviewed on a regular basis.

An audit should include a variety of information, such as:

  • Name/Description of IP – Identification of mark or domain name, title of copyright or patent
  • Subject of IP – List of goods/services, copyrighted material, description of patent
  • Status of IP – Application and registration number(s), intent-to-use or actual use-based mark, upcoming filing deadlines, IP not protected, related litigation or other disputes or issues
  • When/How/Where the IP Has Been Used – Dates of first use/publication, where/how IP used/published, U.S./International use, and any licenses or agreements regarding the IP
  • Chain of Title – IP owner(s), list of all IP transfers, note any transfers that have not been recorded, note any gaps in the record of ownership

Once your intellectual property has been itemized, you should determine whether any additional protections or updates to existing protections are necessary.  You should also review company policies and agreements with employees, independent contractors and licensees regarding the creation, use and protection of your (or third party) IP assets, as well as confidentiality and non-compete protections.  Additionally, your social media, website and insurance policies should be reviewed, as well as your advertising and marketing materials.  You may also consider whether you need to implement systems to monitor unauthorized use of your IP assets by others and address how to approach infringement scenarios.

Internal IP audits are a great start, but you should consider consulting with an IP attorney to ensure all of your IP has been identified and is protected.

 

Unusual Trademarks Hiding in Plain Sight

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Most people usually think of a trademark as a word, slogan or logo associated with a specific company, creative project, product or service (and often the quality of the products or services).  For example, some people strongly prefer consuming soft drinks labeled 220px-Pepsi_logo_svg  as opposed to coke-logo-1, while others would only buy tennis shoes marked with Nikeinstead of Adidas_Logoor logo_REEBOK_ICON_1 , and some may prefer this band  Rolling-Stones-Wallpaper-classic-rock-17732124-1024-768 to this one grateful_dead_bear-265x300.  However, a trademark can consist of almost anything that is used to identify and distinguish the goods or services of one entity from those manufactured, sold or provided by others. You might have a mark worthy of protection and don’t even realize it.  Perhaps your mark:

Sounds like a trademark…

There are registered marks for chimes, sayings associated with animated characters, and even theme songs.  Universal TV LLV has a registration that consists of “two musical notes, a strike and a rapid rearticulation of a perfect fifth pitch interval, which in the key of C sounds the notes C and G, struck concurrently” used in connection with the “entertainment services, namely, a series of on-going dramatic television programs”…although you probably know it better as the NBC Chimes.

Whether or not you eat carbs, you are likely familiar with the Pillsbury Doughboy.  If you’re reading this blog, you would likely recognize Yahoo!  And you might get excited when you hear this from your computer.  If you use a sound in connection with your products or services that (1) does not serve any functional purpose in connection with the products or services, (2) is not a natural by-product of the products or services, and (3) is not used by competitors or applicant’s industry in connection with the goods or services, you likely have something distinctive that consumers will associate with your products or services.  For more examples of sound marks, click here.

Smells like a trademark…

If Smead Manufacturing made apple cider, peppermint, vanilla, peach, lavender, and grapefruit scented lotion, they probably couldn’t protect the fragrance because it would be considered to serve a utilitarian purpose and be functional in connection with the product…but it’s a different story when those scents are used in connection with “office supplies, namely, file folders, hanging folders, paper expanding files.”  And, if you don’t like the smell of regular “medicated transdermal patches for the temporary relief of aches and pains of muscles and joints associated with arthritis, simple backaches, strains, bruises and sprains,” then you may want to try some that have “a minty scent by mixture of highly concentrated methyl salicylate (10wt%) and menthol (3wt%)”.

Looks like a trademark…

I don’t know of many women who wouldn’t immediately recognized a box or bag in a specific “shade of blue often referred to as robin’s-egg blue” as coming from the famous jeweler Tiffany & Co. The color pink for “foam insulation for use in building and construction” is registered to Owens-Corning Fiberglas Technology Inc. Of course, Coca-Cola has protected its iconic bottle designCoke_Bottle for decades…and the Oscar award statuetteAcademy_Award_trophyis also protected.

Feels like a trademark…

American Wholesale Wine & Spirits, Inc. has a mark which consists of “a velvet textured covering on the surface of a bottle of wine” for use in connection with wines.

Tastes like a trademark…????

Not yet…and potentially never.  The Trademark Trial and Appeal Board has observed that it is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function, and consumers generally have no access to a product’s flavor or taste prior to purchase.  In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (affirming refusal to register “an orange flavor” for “pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills,” on the grounds that the proposed mark was functional under §2(e)(5) and failed to function as a mark within the meaning of §§1, 2, and 45 of the Trademark Act.).

Obtaining registration for some of these more unusual marks (usually categorized as trade dress) are more likely to require a showing of evidence of “acquired distinctiveness” (proof that the mark has become adequately associated in consumers’ minds with the mark owner’s goods or services) than more traditional marks.  However, don’t let that discourage you.  By opening your mind and looking for marks outside of the traditional name, logo or slogan categories, you just may find a sound, color, scent or other sensory trigger that strongly appeals to your customers or fans and turns out to be something that helps you stand out from the crowd and gets you a step ahead of the competition.