Non-conventional Marks - Color outside the lines if you smell an opportunity!

Trademark law extends protection to non-conventional marks such as smells or colors provided that these are “non-functional” features of the product itself.  (Section 1202.12 TMEP).  However, the primary purpose of any trademark, including a “non-conventional” mark, is to create the necessary goods/service connection.  Needless to say, attempting to register a “non-conventional” mark is certainly an uphill battle, one that requires careful planning and forethought.  But this struggle does not stop even if you are granted a trademark registration.  Every successful litigation concerning a non-conventional mark is a layer of affirmation that the mark has achieved the requisite consumer recognition.  But, what if you are just starting out, what if this is your first application or litigation concerning your non-conventional mark?  The key is planning and forethought. Well, time helps too.

 

A recent example of the bumps at the application stage is Hasbro's trademark application for its line of scented Play-doh. (See Application) Hasbro to 

demonstrate the “non-functionality” of the scent feature listed the description as a “unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.” So far per the office action issued in May, there are more questions that Hasboro has to answer given that there are many other players in the market providing scented dough (don’t blame them, this stuff is down right stinky!).  The notable evidence requested of Hasbro are:

• promotional/advertising evidence "specifically promoting or referencing the applied-for scent in the applied-for mark" to establish such consumer association
• evidence negating its utilitarian aspects and functional advantages (e.g., availability of alternative ingredients, are the ingredients necessary for hydration, pliability etc)

Jumping from the application stage to litigation, in the recent trademark litigation concerning color, Deere sued FIMCO for trademark infringement for using the color combination of yellow and green on FIMCO's farm vehicles. Interestingly, though Deere has a federal trademark registration for:

“the use of green and yellow in combination for three categories i.e., “agricultural tractors, lawn and garden tractors, trailers, wagons, and carts,” specifically those with green bodies/frames and yellow wheels; (2) “wheeled agricultural, lawn and garden, and material handling machines”; and (3) the “tractor-towed agricultural implements,” including, among others, “fertilizer spreaders” and “nutrient applicators” with green bodies and yellow wheels.”

the determining question here was not so much about having a valid federal registration and its infringement, but whether the color mark had attained secondary meaning/inherent distinctiveness.  Deere was able to establish both factors, i.e., non-functionality and the inherent distinctiveness.  Deere demonstrated that it had used these marks since 1960 and has had forty plus years to establish consumer association, so much so, that there are even country songs referencing the use of this color combination on the farm utility vehicles.  U.S. District Judge Thomas B. Russell enjoined FIMCO from using the green and yellow combination on its pesticide sprayers finding that such use diluted and infringed upon Deere's trademark rights.  

These two examples are helpful as it is important to understand that even if you are able to achieve registration, the battle continues. And anticipating that means allocating resources to collecting substantial amounts of evidence that shows that your mark is non-functional, non-utilitarian and the consumers know exactly which product the smell or color goes with...sometimes even be willing to sing about it!  Well, maybe the country music industry is raising the bar a bit here!  So when investing in a non-conventional mark, from the very beginning, create promotional/advertising material, conduct surveys and harness the power of social media to generate consumer association with your product.