Non-Traditional Trademarks

by Lisa Dunner on April 11, 2011

The next time you need to come up with a new brand for one of your products or services, you might want to think outside of the box.

Not all brands have to be words or designs – they can be so much more than that.

Did you know that sounds can be protected as a trademark? How about color? You probably never imagined that a scent can be a protectable trademark.

Yes, this is all true, and these unique trademarks are called, not surprisingly, “non-traditional trademarks.”

Some examples of non-traditional trademarks, all of which have been registered with the U.S. Patent and Trademark Office, are reflected in the following chart. Many of these marks should be familiar to you:

All trademarks, both traditional and non-traditional, share some common characteristics.

Specifically, all trademarks are used as source identifiers and represent the quality of the trademark owner’s goods or services as well as the goodwill of the owner’s business.

However, owners of non-traditional marks, if they want them registered with the U.S. Patent and Trademark Office, must meet two conditions before they are approved for registration.

First, the nontraditional mark must be distinctive, and second, it must not be functional.

So, if you are interested in protecting a non-traditional mark, you will need to understand the principals of distinctiveness and functionality.


All trademarks must be distinctive in order to warrant protection.

Some marks are inherently distinctive—meaning that they are arbitrary as used in relation to the goods or services they represent. These marks warrant strong protection.

An example of an inherently distinctive mark is the Google® search engine. The Google® mark is a made up, arbitrary word; it has nothing to do with search engines, so the law recognizes it as a strong mark.

Some marks are not arbitrary, but instead, they are merely descriptive of some characteristic or ingredient of the product or service. These marks are not considered strong marks, and the Trademark Office requires proof of “secondary meaning” for such marks.

An example of this is All-Bran® which, before it became well known, merely described some aspect or characteristic of the cereal it represents.

Now, everyone knows the term as a brand because of extensive marketing by its owner. As a result, secondary meaning (or consumer recognition) has set in.

Over time, these marks can be strong, but it takes a lot of money and effort to make them that way.

Distinctiveness takes on a new meaning with respect to nontraditional marks, because there are different rules for different types of nontraditional trademarks.

For example, courts have determined that sound marks and product packaging marks are capable of being inherently distinctive, but color, scent, product design, and taste are all incapable of being inherently distinctive.

Therefore, these marks require evidence of secondary meaning in order to be fully protectable and registrable with the Trademark Office.


Functional features (e.g., features that are either essential to the use or purpose of the product or that affect the cost or quality of the product) are difficult to protect as trademarks regardless of secondary meaning, since that would potentially hinder competition.

For example, if there were only one way to shape a bottle so that the liquid could flow properly, then nobody could claim trademark protection for that shape, because it would hinder competition.

In order to determine whether a feature of a trademark is functional, courts look to four factors:

  1. The existence of a utility patent for the design/feature
  2. Evidence of advertising on behalf of the trademark owner that touts the design/feature’s utilitarian or functional advantages;
  3. The existence of alternative designs that perform the same function; and
  4. Whether the design/feature was simple or inexpensive to manufacture.

Non-traditional marks, by their very nature, have a stronger tendency towards functionality, which is why the law includes this test.

The goal of trademark law is to promote competition, not hinder it, while at the same time providing a mechanism for people to make their brands stand out in a crowd.

The Future of Nontraditional Trademarks

In the last decade, nontraditional trademarks appear to be gaining popularity as businesses look for new ways to create unique brands and expand the scope of their intellectual property assets.

Trademarks act as the “face” of a company in many instances, and the goal with any business is to set it apart from others and look unique in a very crowded business world.

Having a scent for a trademark is definitely unique, and it might be just what you need to top your competitors. So, you might want to give it some thought …

More from Women Grow Business:

Lisa Dunner is managing partner of Dunner Law PLLC in Washington, D.C. She has extensive experience in counseling, protection and enforcement of intellectual property and unfair competition rights. Lisa’s expertise includes, among other things, Internet-related issues, trademark and copyright infringement, source code, keyword ads, domain disputes, framing, linking and social media issues. She regularly conducts intellectual property audits for her clients; manages and enforces international trademark and copyright portfolios; and represents numerous clients in cases before the Trademark Trial and Appeal Board and in U.S. state and federal courts. Lisa also negotiates IP and technology-related agreements. You can find Dunner Law on Facebook or Twitter.

DISCLAIMER: The information posted in this blog is provided for informational purposes. Legal information is not the same as legal advice — the application of law to an individual’s specific circumstances. The information presented here is not to be construed as legal advice. Women Grow Business recommends that you consult an attorney if you want professional assurance that the information posted, and your interpretation of it, is appropriate to your particular business.

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