This article is the first in a series on non-traditional trademarks. Check back often for new installments. 

If you have registered a trademark for your brand name, your logo, or an image associated with your product, you have taken the first step toward protecting the most important aspect of your brand. But what about protecting less obvious aspects, such as your product’s color, shape, or packaging? These elements are not “traditional” trademarks, but they can nonetheless be distinctive and are capable of providing source-identifying information. Protecting all aspects of your brand and products/services is an essential component of any comprehensive trademark strategy. To obtain federal trademark protection for non-traditional trademark aspects of your brand, you must show that (1) the non-traditional mark is a trademark and perceived as such by purchasers, and (2) protecting the mark would not violate US law and policy. In this article, we will discuss the first element.

Protectable Brand Elements

Think about your brand or product in its entirety. Do you use a specific kind of packaging that is uncommon in the market? Does your product use an original color combination? Are your stores or restaurants designed or decorated in a way that gives visitors a unique visual experience? If so, these elements may qualify for protection as trade dress, a form of trademark protection that encompasses the total image of a product or brand when viewed as a whole. Some common forms of trade dress include:

• Product Design Trade Dress: Product design trade dress covers the shape, layout, features, or overall appearance of the product (e.g., the famous Weber kettle-shaped grill). Applicants for these types of trademarks are always required to prove acquired distinctiveness to achieve trademark protection.
• Product or Services Packaging Trade Dress: Product packaging trade dress refers to the packaging of your product, (e.g., the curves of a Coca-Cola bottle), color (e.g., Tiffany & Co.’s robin’s egg blue boxes), and the visual appearance of the place where it is sold (e.g. the décor, menu, and layout of a Fuddruckers restaurant; the layout of an Apple store; or the décor of a Taco Cabana). Occasionally these types of trademarks are inherently distinctive and can achieve trademark protection as soon as they are used in commerce.
• Other Trade Dress: Other forms of trade dress that by way of policy are typically classified as features of products or services include sounds (e.g., Metro-Goldwyn-Mayer’s lion’s roar), scents (e.g., the unique scent of synthetic lubricant for vehicles), and even motions (e.g., the handshake displayed on the startup screen of Nokia phones). As a general rule, applicants for these types of trademarks are required to prove acquired distinctiveness to achieve trademark protection.

Because the courts have repeatedly held that the scope of trademark protection is very broad and can encompass almost any element that is capable of providing source-identifying information about a product or service, the examples above are by no means exhaustive.

Obtaining Registration for Non-Traditional Brand Elements

When evaluating whether a non-traditional trademark qualifies for federal registration, the normal rules apply—the applicant must demonstrate that the mark is non-functional and that it is distinctive (either it is inherently distinctive or it has acquired distinctiveness through substantially exclusive and continuous use in commerce), meaning the mark provides source-identifying information. For non-traditional trademark applicants, proving distinctiveness is particularly challenging, since very few non-traditional marks are inherently distinctive. Rather, the applicant normally must demonstrate that the non-traditional mark in question has “acquired distinctiveness” or “secondary meaning” such that, over time, the public has come to associate the mark as more than mere ornamentation—it is recognized by the public as a trademark associated exclusively with the applicant’s brand.

A few ways to demonstrate that an element of your product has acquired the distinctiveness necessary to qualify for trademark protection include:

• Verified declarations that the mark has been in substantially exclusive and continuous use for at least five years in interstate commerce within the US or between the US and another country;
• Affidavits or declarations attesting to sales figures of the products or services associated with the mark, marketing efforts, and advertisements promoting the element as a mark;
• Affidavits, declarations, or surveys from consumers confirming they perceive the element as source-identifying;
• Examples of the element itself in advertisements, including pictures, literature, brochures, and website excerpts promoting the element as a mark.

Assuming you can show the element of your product has acquired distinctiveness, then as we will discuss further in our next installment, you also must be able to show your mark isn’t barred from protection under the functionality doctrine. You can achieve this by showing that the trade dress in question is not essential to the product’s use or purpose, nor does it affect the product’s cost or quality. It also helps if you can show that alternative product or packaging designs are available to the competition.

Obtaining federal trademark registration for non-traditional elements of your brand is usually more difficult than for ordinary trademarks, but you should consider it if you want to protect special elements of your brand that others simply do not have. The reason is clear: If any aspect of your product or brand—its design, its packaging, or the establishment where your services are provided—is truly unique and distinctive, you want to prohibit your competitors from copying such aspects. In our next post on this topic, we will break down an important legislative and policy hurdle all trade dress owners face: proof that protecting the non-traditional mark will not give the mark holder an unfair competitive advantage.

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