Trademark Rights in Sounds, Smells and Other Nontraditional Marks Ventura County Bar Association Intellectual Property

1. Nordman Cormany Hair & ComptonA T T O R N E Y S Trademark Rights in Sounds, Smells and Other Nontraditional MarksVentura County Bar AssociationIntellectual Property SectionApril 6, 2006 Presentation By Glenn Dickinson ..

2. Nordman Cormany Hair & ComptonA T T O R N E Y S Traditional source indicators Trademark Traditionally, a name or image Serves to distinguish the holder’s product or service from those of competitors Trade dress Nonfunctional shape or design features of the product itself or the packaging in which the product is contained, that serves to identify source and to differentiate products from competitors Serves to distinguish the holder’s product or service from those of competitors

3. Nordman Cormany Hair & ComptonA T T O R N E Y S Qualitex case Qualitex Co. v. Jacobson Products Co., Inc. 514 U.S. 159 (1995) Manufacturer of press pads used in dry cleaning and laundry establishments filed trademark infringement action against competitor, alleging trademark infringement and unfair competition. The Court of Appeals for the Ninth Circuit ruled that green-gold color of manufacturer's press pad was not subject to trademark protection. The Supreme Court held that: (1) no special legal rule prevents color alone from serving as trademark, and (2) green-gold color of manufacturer's dry cleaning press pads could be registered as trademark

4. Nordman Cormany Hair & ComptonA T T O R N E Y S Qualitex case “It is the source-distinguishing ability of a mark--not its ontological status as color, shape, fragrance, word, or sign--that permits it to serve these basic purposes.” 514 U.S. at 164.

5. Nordman Cormany Hair & ComptonA T T O R N E Y S Color marks Color as source indicator Distinguished from color used as a graphic feature of a word or image Cannot be inherently distinctive, so trademark protection depends on secondary meaning

6. Nordman Cormany Hair & ComptonA T T O R N E Y S Color marks Pink Owens Corning For roof shingles (Reg. No. 2695673) Brown United Parcel Service For transportation and delivery services (Reg. No. 2688340)

7. Nordman Cormany Hair & ComptonA T T O R N E Y S Color marks Description of mark in trademark application: Formerly, Trademark Office color lining system applied 12 color variations available Applications filed after nov. 2, 2003 require color image Description of mark also may refer to PANTONE Color system www.pantone.com

8. Nordman Cormany Hair & ComptonA T T O R N E Y S Scent marks Scent cannot be functional Excludes most scented items (perfumes, cleaners, air fresheners) “The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.” TMEP § 1202.13

9. Nordman Cormany Hair & ComptonA T T O R N E Y S Scent marks Cherry scent Mike Mantel, DBA Manhattan Oil For lubricants and motor fuels (Reg. No. 2463044) Marketed to racing teams, to make car exhaust more appealing to spectators

10. Nordman Cormany Hair & ComptonA T T O R N E Y S Flavor marks No registrations issued – yet Primary obstacle is requirement of nonfunctionality Attempts include the flavor orange N.V. Organon Corp, Netherlands For antidepressants (Ser. No. 76467774) On appeal from final refusal

11. Nordman Cormany Hair & ComptonA T T O R N E Y S Tactile marks No registrations issued – yet

12. Nordman Cormany Hair & ComptonA T T O R N E Y S Sound marks Most commonly used nontraditional mark Established through radio and television Numerous examples

13. Nordman Cormany Hair & ComptonA T T O R N E Y S Sound marks A SEQUENCE OF CHIME-LIKE MUSICAL NOTES WHICH ARE IN THE KEY OF C AND SOUND THE NOTES G, E, C National Broadcasting Co. For television broadcasting (Reg. No. 0916522) II

14. Nordman Cormany Hair & ComptonA T T O R N E Y S Sound marks A five tone audio progression of the notes D Flat, D Flat, G, D Flat and A Flat Intel Corp. For computer hardware and computer operating software (Reg. No. 2315261) A five tone audio progression of the notes D Flat, D Flat, G Flat, D Flat, and A Flat Ser. No. 78721830

15. Nordman Cormany Hair & ComptonA T T O R N E Y S Sound marks The sound of a deep, male, human-like voice saying "Ho-Ho-Ho" in even intervals with each "Ho" dropping in pitch." General Mills For canned vegetables (Reg. No. 2519203) Registration Date December 18, 2001

16. Nordman Cormany Hair & ComptonA T T O R N E Y S Glenn J. DickinsonNordman Cormany Hair & Compton LLP1000 Town Center Drive, Sixth FloorP.O. Box 9100Oxnard, California 93031-9100805-485-1000