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Articles

Offbeat Page in Branding Playbook

The National Law Journal
October 22, 2012

Rettew, Douglas A.

Article

Authored by Douglas A. Rettew

What do the smell of freshly cut grass, the color purple, the ESPN SportsCenter theme song, and the motion of a Lamborghini car door opening have in common? They all have been registered as trademarks.

Trademark-savvy companies may protect and leverage colors, sounds, scents, and other unique source identifiers—known as nontraditional marks—to differentiate their products, exploit new marketing opportunities, and compete effectively in an increasingly cutthroat marketplace.

Nontraditional marks recently strutted down the runway and into the limelight in the Louboutin case, where the U.S. Court of Appeals for the Second Circuit held valid Louboutin's trademark rights in the color red for the outsole of a shoe with an "upper" of a different color. Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc., No. 11-3303-cv (2d Cir. September 5, 2012). But it's not all glitz and glamour for nontraditional marks—they are also found among the blood, sweat and tears of the sports industry.

Two key criteria must be met before trademark protection is bestowed upon a nontraditional mark. The matter must be nonfunctional and distinctive (either inherently or through an acquired "secondary meaning"). Matter is considered functional if it is essential to the use or purpose of a device or affects the cost or quality of the device. See TrafFix Devices Inc. v. The Mktg. Displays Inc., 532 U.S. 23, 32 (2001) (citing Inwood Labs. Inc. v. Ives Labs. Inc., 456 U.S. 844, 850, n.10 (1982)). Matter may be distinctive in one of two ways: It may be "inherently distinctive" or it may acquire distinctiveness through what is known as "secondary meaning"—consumer recognition that the matter identifies a product's source, rather than the product itself or a feature of the product.

The inherent distinctiveness of "traditional" word marks is examined by placing the term along a spectrum with the following categories (from most protectable to unprotectable): fanciful, arbitrary, suggestive, descriptive, or generic. Nontraditional trademarks, however, do not fit neatly into these categories, if at all. Consequently, for some matter, such as color, taste, and scent, a bright-line rule has been established that inherent distinctiveness cannot exist and thus "secondary meaning" must be proven—a high hurdle. But other matter, such as sound, can be considered inherently distinctive and immediately protectable.

As discussed below, several types of nontraditional marks have been protected and enforced in the sports industry with varying degrees of success.

Single colors or color combinations may be protected as trademarks, such as Tiffany's "robin's egg blue" for jewelry boxes. Colors hold a special place in sports. After all, without established uniform colors, for example, athletes might be forced to rely solely on the less-than-ideal "shirts and skins" system of team differentiation. See University of Alabama Board of Trustees v. New Life Art Inc., 677 F. Supp. 2d 1238, 1247 n.15 (N.D. Ala. 2009). And college football's Famous Idaho Potato Bowl would not be the same without Boise State University's trademark bright-blue Bronco Stadium turf (U.S. Reg. No. 3,707,623).

A Win for Light Blue Grip Tape

In one recent case, Unique Sports Products Inc. v. Ferrari Importing Co., 2011 WL 284442 (N.D. Ga. January 24, 2011), the Northern District of Georgia held that a light-blue color mark for tennis-racket grip tape was nonfunctional and thus protectable. The court concluded that the light-blue color of the plaintiff's racket-grip tape was nonfunctional under both the traditional test noted above and the "competitive necessity" test (which deems matter functional if its exclusive use would put competitors at a significant nonreputation-based disadvantage). Under the traditional test, the court held that there was no evidence that the light-blue color improved the performance of racket-grip tape. Under the competitive-necessity test, the court held that the mere popularity of the color for racket-grip tape does not indicate that the color itself is functional, especially because other racket-grip tape colors were among the defendant's best-selling products.

In the "second set" of Unique Sports Products Inc., 2011 WL 5156798 (N.D. Ga. October 27, 2011), the court held following a nonjury trial that the plaintiff's light-blue tape acquired distinctiveness, but that it was not likely to be confused with the defendant's different shade of blue racket-grip tape. Specifically, the court found that the defendant's tape was a "very distinguishable" shade of blue. Further, the two tapes had a very different "feel" (i.e., smooth v. "woven") and served different purposes (i.e., plaintiff's "overgrip" tape provided thick cushioning and absorbed moisture while defendant's "gauze" tape was intended solely to improve grip).

Team uniform colors have garnered court attention in two recent cases. In Board of Supervisors of La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), the Fifth Circuit held that unauthorized use of school colors, together with other indicia (e.g. the universities' sports accomplishments or geographic location), constitutes trademark infringement, even if the school is not named and no other school-related marks or logos are included. Notably, however, the court did not rule on the use of team/uniform colors per se.

In University of Alabama Board of Trustees, the Northern District of Alabama held that the University of Alabama owned "weak" trademark rights in its football team uniform colors and that the defendant's unlicensed paintings using those colors to depict historic scenes of the plaintiff's football team were not infringing as protected artistic expression under the First Amendment. On appeal, the Eleventh Circuit affirmed the district court's First Amendment holding, in part avoiding any affirmative ruling on the strength of the plaintiff's uniform-color mark. University of Alabama Board of Trustees v. New Life Art Inc., 683 F.3d 1266 (11th Cir. 2012).

The PTO permits the registration of color marks (so long as acquired distinctiveness is proven), including single- color marks that cover the entire surface of goods, a portion of the goods, all or part of the packaging for the goods, or advertising and rendering of services. Registered color marks include yellow for plastic baseball bats (U.S. Reg. No. 3,579,003) and purple for auto racing vehicle parts (U.S. Reg. 2,984,371).

Sound Marks

The standards for the protection of sound marks were articulated in the oft-cited case In re General Electric Broadcasting Co. Inc., 199 U.S.P.Q. 560 (TTAB 1978), which involved a mark consisting of the sound made by a ship's bell clock used to toll time in radio broadcasts. The Trademark Trial and Appeal Board (TTAB) held that sound marks are registerable if they "identify the services of one person and distinguish them from the services of others." The TTAB explained that "unique, different or distinctive" sounds require no proof of secondary meaning, but sounds that resemble or imitate "commonplace" sounds require such proof. The TTAB ultimately held that questions of fact remained as to whether the bell-clock sound acquired secondary meaning.

In one of the other few cases involving sound marks, a court refused to preliminarily enjoin a politician's alleged infringement and dilution of the plaintiff's registered sound trademark of a duck quacking "Aflac," in a commercial that portrayed the incumbent governor Taft as a timid duck that quacked "TaftQuack." American Family Life Ins. Co. v. Hagan, 266 F. Supp. 2d 682 (N.D. Ohio 2002). Despite the acknowledged fame of the "Aflac" sound mark, and the similarity of the defendant's sound, the court held that confusion and dilution were unlikely because the political commercial used a cartoon balloon containing the word "TaftQuack" (which made it clear to a reasonable viewer that Taft was not saying "Aflac") and given the lack of "competitive proximity" between the respective uses.

The PTO permits the registration of two types of sound marks: a series of tones or musical notes, with or without words, and wording accompanied by music. Examples of registered sound marks in the sports industry are the ESPN SportsCenter melody (U.S. Reg. No. 2,450,525), and the Harlem Globetrotters theme music (U.S. Reg. No. 1,700,895).

Examples of Registered Sound Marks

Sound Mark

Goods/Services

Reg. No.

Reg. Date

Owner

The SportsCenter melody

Production and distribution of television and radio entertainment and sports programs

2,450,525

5/15/2001

ESPN, Inc.

The melody "Sweet Georgia Brown"

Entertainment services in the nature of basketball exhibitions

1,700,895

1/14/1992

Harlem Globetrotters International, Inc.

Fox Sports melody

Entertainment services in the nature of on-going television and radio programs featuring sports

3,141,398

9/12/2006

Twentieth Century Fox Film Corp.

Scent and Flavor Marks

In In re Clarke, 17 U.S.P.Q.2d 1238 (TTAB 1990), the TTAB opened the door for the protection and registration of scent marks. The TTAB found that the applicant's "high impact, fresh, floral fragrance reminiscent of Plumeria blossoms" for "sewing thread and embroidery yarn" functioned as a trademark because she was the only person who marketed yarns and threads with the fragrance (and thus fragrance was not an inherent attribute or natural characteristic of her goods, but rather a feature that she supplied); she emphasized and promoted the scented feature of her goods in advertising; and dealers and distributors recognized scented yarns as coming from her.

The PTO permits the registration of a product's scent, so long as it is nonfunctional and has acquired distinctiveness. For example, a coconut fragrance is registerable for retail store services featuring beach balls, flying disc toys and other beach accessories (U.S. Supp. Reg. No. 4,113,191). And while it seems unlikely that the pungent aroma of a locker room could be a desirable trademark, you might be surprised—the "strong smell of bitter beer" has been registered as a scent mark in the United Kingdom for darts (U.K. Reg. No. 2,000,234).

Flavor marks have not fared as well as other nontraditional marks.

In In re N.V. Organon, 79 U.S.P.Q.2d 1639, 1643 (TTAB 2006), the TTAB rejected an attempt to register the flavor orange for quick-dissolving antidepressant medication on the grounds that it is both functional and that it fails to serve as a source identifier. Regarding functionality, the TTAB found that the applicant's orange-flavored antidepressants possessed utility because the product's "pleasant orange taste" provided an "important advantage over conventional antidepressants" by increasing patient compliance. Further, noting that the record was "completely devoid of any evidence of consumer recognition of applicant's 'orange flavor' as a trademark," the TTAB held that the applicant did not prove the substantial showing of acquired distinctiveness necessary to overcome consumers' predisposition to not perceive flavors as marks.

Examples of Registered Scent Marks

Scent Mark

Goods/Services

Reg. No.

Reg. Date

Owner

Coconut

Retail store services featuring sandals and flip flop sandals, and related accessories, namely, beach balls, insulated bottle and can covers, key chains, decals, tossing disc toys, lip balm, pens, and water bottles

4,113,191

3/13/2012

FFS Holdings, LLC

Grape; strawberry

Lubricants and motor fuels for land vehicles, aircraft, and watercraft

2,568,512
2,596,156

5/7/2002
7/16/2002

Mantel, Mike dba
Manhattan Oil

Cherry

Synthetic lubricants for high performance racing and recreational vehicles

2,463,044

6/26/2001

Mantel, Mike dba

Manhattan Oil

"The smell of fresh cut grass"

Tennis balls

CTM No. 000428870 (European Union)

11/10/2000

Senta Aromatic Marketing

"Strong smell of bitter beer"

Flights for darts

UK Reg. No. 2000234 (United Kingdom)

5/3/1996

Unicorn Products, Ltd.

Motion and Hologram Marks

Sports are, at their best, poetry in motion. The PTO's guidelines specifically discusses motion marks and provide rules for their registration. In fact, the PTO has approved registration of a number of motion marks, including the motion of a Lamborghini car door opening (U.S. Reg. No. 2,793,439).

Finally, in In re The Upper Deck Co., 59 U.S.P.Q.2d 1688 (TTAB February 14, 2001), the TTAB refused an application for a hologram shown on baseball trading cards on two independent grounds.

First, because the applicant sought to register a hologram generally, irrespective of "any content which may be represented within the hologram device," the TTAB held that the applied-for device violated the prohibition against the registration of phantom marks that could "have a myriad of shapes, sizes, contents and the like."

Second, the TTAB refused registration on the ground that the applicant's hologram failed to function as a mark, pointing to evidence that applicant and "other companies use hologram devices on trading cards, as well as on other products such as credit cards, CDs, apparel and various types of tickets" frequently for anti-counterfeiting purposes.

Brand owners in the sports industry, like other industries, can realize significant value from nontraditional marks so long as they are nonfunctional and distinctive. After leaping these hurdles, a brand owner can swing for the fences.

Examples of Registered Motion Marks

Motion Mark

Goods/Services

Reg. No.

Reg. Date

Owner

Unique motion in which the door of a vehicle is opened. The doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position.

Automobiles

2,793,439

12/16/2003

Automobile Lamborghini Holding S.p.A

Reprinted with permission from the October 22, 2012 issue of The National Law Journal. © 2012 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited. For information, contact 877-257-3382, reprints@alm.com or visit www.almreprints.com. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.