As the marketplace becomes more crowded, capturing and keeping the consumer’s attention can be difficult, especially in the online world where advertisements, chatbots, and other forms of digital technology distract the viewer and obscure screen content. Most companies understand that animation or motion in their branding can captivate the consumer because it is visually interesting and easily consumed, but they often forget that this same motion can be protected as a trademark if it is used to identify source, and also used as an effective anti-counterfeiting or authentication measure.
But what exactly is a motion mark? One of several non-traditional trademarks (along with color, sound, scent, smell, etc.), which includes a moving image or visual. Think, for example, of the black and white static opening 
to Home Box Office, Inc.’s entertainment programming and streaming services (U.S. Reg. No. 4950508); the drawn checkmark 
to Verizon for telecommunications services (U.S. Reg. No. 7390293); or the 
moving carrot animation to Maple Bear, Inc. for online retail and delivery services (U.S. Reg. No. 7503632).
U.S. trademark law has long acknowledged the registrability of motion marks; however, a recent search of the U.S. Patent and Trademark Office (USPTO) database for “motion mark” or “moving image” located fewer than 300 registrations. Like any other trademark, to be federally registered, a motion mark must be distinctive, non-functional, and serve as an identifier of source for goods or services in commerce (15 U.S.C. § 1052). Because a motion mark includes one or more graphic images, meeting the first two requirements is usually easier than showing that it serves as an identifier of source. A vital element for demonstrating that the mark actually functions as a source identifier is the “specimen of use,” which is governed by Section 904.03(l) of the Trademark Manual of Examining Procedure. This section provides that an acceptable specimen must depict the motion sufficiently to show how the mark is used on or in connection with the goods or services, and that it matches the required description of the mark. In addition, the mark shown in the specimen must match the mark shown in the freeze frames comprising the drawing. Although the drawing for a motion mark may depict a single point in the movement, or up to five freeze frames showing various points in the movement, an acceptable specimen should show the entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g., a video clip, a series of still photos, or a series of screen shots).
In 2020, the Trademark Trial and Appeal Board (the Board) issued a rare, precedential opinion on motion marks in In re The Ride, LLC, in which the Applicant attempted to register a motion mark described as “the live visual and motion elements of the trade dress of a guided bus tour in which as the bus approaches at least one predetermined location on the tour an entertainer who is dressed as a banker walks normally along the street and then performs a tap dance routine dancing act when the bus stops at the predetermined location as viewed from the inside of the bus.” Although the Board ultimately affirmed refusals to register this live-action motion mark for “conducting sightseeing travel tours by bus” for failure to function as a mark and issues involving the sufficiency of the specimen and mark description, this decision offers good guidance on how to ensure that a motion mark meets the requirements for registration at the USPTO.
Given the requirements for demonstrating use as an identifier of source, it is not surprising that many motion marks are registered for services where the mark is likely to appear in video-based advertising, or other promotional materials. However, motion marks also lend themselves to electronic consumer goods or software where the mark can be conveyed to the consumer via a display screen. For this reason, a carefully crafted motion mark may be particularly useful in fighting counterfeit electronic products or to authenticate aspects of other online activities. For example, a motion mark can convey to the consumer that they have purchased a genuine article, rather than an inferior counterfeit that lacks the technology necessary to execute the motion mark, or to signal a legitimate, versus fraudulently-motivated, online payment. A registration for a motion mark for goods may also be recorded with the U.S. Customs Office to block the importation of products bearing the mark depicted in the drawing(s) of the registration.
Several other jurisdictions recognize the registrability of motion marks, including, at least the European Community, the United Kingdom, Korea, Japan, Canada, and Mexico, though some of these registration systems require an evidentiary showing of acquired distinctiveness based on extensive use or fame. Nevertheless, this is a good indicator that the trademark laws of several developed markets are keeping up with branding and online messaging trends, as well as with innovations in technology that enable both the creation and implementation of such marks.
