Non-traditional Trademarks Taking a Fashionable Lead

"Who are you wearing?"

It's the question repeated on countless red carpets to celebrities in designer gowns. Closer to real life is the common exchange between friends: "I love your jeans, where are they from?"

Well, what if consumers could recognize a brand by simply the look, texture, pattern or smell of a product without having to ask such questions, and instead run directly to the store and pick up a pair of the coveted jeans for themselves?

Trademarks — traditionally logos and/or words — accomplish this by identifying goods with their source, but the latest trend in apparel related intellectual property is the non-traditional trademark. These more covert trademarks may require a discerning eye (or nose), but once the connection is made in the mind of the consumer they are practically impossible to miss.

These subtle yet memorable marks almost subliminally connect goods with the source in the minds of consumers. The hint of eye-catching red on the bottom of a Louboutin heel (US Reg. No. 3361597), the specific placement of buckles and zippers on a Balenciaga handbag, and the classic stitching on the back pockets of a pair of Levi jeans all serve as examples of successfully registered non-traditional trademarks.
While the above examples of non-traditional trademarks are visual like many traditional trademarks, non-traditional trademarks are not limited in this way. Non-traditional trademarks have the potential to exploit all of the human senses and create new and exciting ways to capture consumer attention. Fragrances, textures, flavors, sounds, colors, motions and the way the product is configured or packaged (trade dress) open brands and their source identifiers up to a world of possibilities.

Like all trademarks, non-traditional trademarks must be distinctive. That is, they must distinguish the owner's goods from those of competitors. In trademark law there are varying levels of distinctiveness that receive different treatment. Coined marks are typically words invented specifically for the products with which they are associated and are considered very strong, inherently distinctive marks. ZARA is an example of a coined mark.

Arbitrary marks are words with commonly understood meanings unrelated to the products with which they are associated. GAP, NIKE, FOSSIL, and GUESS for clothing and accessories are examples of arbitrary marks in the apparel industry. These marks are also considered strong and inherently distinctive.

Suggestive marks hint at their associated products in a clever way and require an imagination leap to understand the nature of the goods. Suggestive marks are also considered inherently distinctive. PAC SUN, NORTHFACE, and WRANGLER for apparel are examples of suggestive marks. Descriptive marks describe the products with which they are associated and are not inherently distinctive.

A descriptive mark is only distinctive and therefore protectable when it has gained secondary meaning among consumers, meaning that consumers recognize and associate the mark with its goods. An example of a descriptive mark is retailer AMERICAN APPAREL, known  for apparel made in the United States.

Even if a mark is merely descriptive, it may acquire distinctiveness through consumer recognition (so-called "secondary meaning"), and may be evidenced by the length, manner and exclusivity of the trademark's use, advertising expenditures, sales numbers, market share and customer surveys. Generic marks are common words associated with a class of goods and are never distinctive or protectable. JEAN for jeans is an example of a generic mark.

It has been established that certain types of non-traditional trademarks, namely product configuration, color, scent, flavor and some sound marks can never be inherently distinctive. This is especially true when the non-traditional mark is merely an appealing aspect or an inherent feature of a product. For example, the scent of a perfume is an inherent feature of the product and therefore could not be an inherently distinctive trademark. The same is true for the configuration of the product itself; the way the product looks and features of the product can never be inherently distinctive.

These non-inherently distinctive non-traditional trademarks cannot be registered on the Principal Register without secondary meaning. Marks that do not yet actually distinguish the source of goods may be registered on the Supplemental Register while secondary meaning is acquired. 

As mentioned above, the configuration of a product cannot be inherently distinctive. However, the way a product is packaged may be an inherently distinctive non-traditional trademark; meaning packaging that identifies the source of the goods may be registered on the Principal Register right away. Tiffany & Co. has registered the iconic robin's-egg blue used on all Tiffany boxes and bags.

A New York apparel company has registered its cigarette box with a flip top opening (U.S. Reg. No. 3326573) packaging for T-shirts. These are just two examples of successfully registered non-traditional packaging trademarks, so remember to think about the box, not just outside of it, for trademark protection.

In addition to distinctiveness, another limitation on any non-traditional trademark is known as the Functionality Doctrine, which prevents registration of trademarks having aspects that are essential to the use or purpose of the article, or affect the cost or quality of the article. For example, if a shape of a product enables it to operate, or improves on another design in some way (i.e. cheaper, faster, lighter, stronger), then it cannot be trademarked.

As non-traditional trademarks prove to be more of a timeless classic than a seasonal fad, it is helpful to look at examples of successfully registered non-traditional trademarks as well as some noble attempts. Vans has applied to have its checkerboard pattern on the upper portion of a shoe registered on the Principal Register, and another company seeks registration of a raised bubble design on the outsole of a shoe.
Lululemon has filed multiple non-traditional trademark applications for lines applied to the arm or leg of a garment. Maybe Lululemon should consider trademarking a lemon fresh scent for its clothing. The lemon scent would not be an inherent feature of the clothing, so the Functionality Doctrine would not apply, and the scent could be a distinctive mark as long as recognition among consumers could be shown.

Max Mara applied for, and later abandoned, a trademark consisting of the silhouette design of a three-dimensional configuration of a hooded coat.

Retailers might also keep in mind the fact that Apple has recently registered its store layout as a trademark. These are simply a few examples of the creative opportunities offered by non-traditional trademarks as applied to the apparel industry.

Michael Spink is a shareholder with Chicago-based IP law firm Brinks Gilson & Lione and specializes in patents, trademarks and copyrights. Briana Emerson was a summer associate at the firm and will return as an associate attorney in 2014.

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