To Create and Own a Nontraditional Trademark, Just Follow Tradition

Robert D. Litowitz and Linda K. McLeod

©2018. Published in Landslide, Vol. 10, No. 3, Janusry/February 2018, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

For as long as we have practiced trademark law, and that is now going on 35 years, we have been talking about “nontraditional” marks. This decades-long conversation begs two questions. What makes a trademark “traditional”? And what do we mean by “nontraditional” marks in 2017?

Traditionally, that is, under common law, the universe of things that trademark law would protect was narrow—words, names, and symbols. But even early on, courts recognized that the real test of what is or is not a trademark should depend more on whether something functioned as a trademark, rather than whether that “thing” fit within some preconceived categorical definition.

In its ideal form, a trademark identifies the source of a product or service and distinguishes it from ones put out by others. As anyone knows who has seen a child light up when the car she is riding in whizzes past the Golden Arches, we implicitly understand the source-identifying power of big names and bright signs. But what else might also serve that trademark function? The look and dimensions of the restaurant itself? The golden yellow of the arches? The taste of a Big Mac? Its aroma? Or even the sound of the musical notes that cue McDonald’s tagline at the end of commercials?

Today, the answer is clear: anything that serves the trademark function of source identification and differentiation is eligible for federal or common law trademark protection. So, restaurant configurations and decor have been protected (think Howard Johnson’s orange roof or Fuddruckers’ interior). So have colors (pink for Owens Corning fiberglass insulation) and sounds (the MGM lion’s roar or NBC’s three-note chime). Even scents have been found to merit trademark protection.

While we label all of these nonverbal “marks” as nontraditional, the basis for their protection stems from traditional sources: the common law and the Lanham Act.

As the Supreme Court noted in its seminal “color” case, Qualitex Co. v. Jacobson Products Co., the common law definition of a trademark traditionally included not just words and symbols, but also “any device” that is “adopted and used by a manufacturer or merchant in order to designate the goods [it] manufactures or sells to distinguish [them] from those manufactured or sold by another.”1 The Lanham Act, enacted in 1946, codified the notion that the definition of a trademark includes “any . . . device[s],” as well as “any word, name, [or] symbol.”2

The courts and commentators have relied on the term “device” to boldly take trademarks places they traditionally have not gone before. This article will focus on areas of these nontraditional marks that have pushed the trademark frontier past the traditional boundary of words, names, and symbols. These are colors, scents, flavors, textures, motions, holograms, and interiors. (Sound marks, another nontraditional category, were addressed in a previous issue of Landslide; product shapes and trade dress, while often included in the nontraditional category, have been well-accepted trademark formats for decades.)

Color My World Trademarks

Color marks consist of one or more colors used on a particular product or in connection with a service. For marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. For example, in Qualitex, the Supreme Court held that green-gold used on dry cleaning press pads was a protectable trademark where the color had been used and advertised so extensively that it had transcended its primary role (just a color) and had acquired a “secondary meaning,” namely, it became a source indicator—a trademark.3 Previously, in In re Owens-Corning Fiberglas Corp., the Federal Circuit found the color pink as applied to fibrous glass residential insulation registrable where the evidence showed the color had acquired secondary meaning.4 Similarly, “service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.”5

Color marks cannot be registered on the Principal Register or enforced against an infringer without a showing of acquired distinctiveness under § 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).6

Not all uses of color qualify for trademark protection. For example, the Federal Circuit affirmed, per curiam, the Trademark Trial and Appeal Board’s (TTAB’s) refusal of registration for the “blue motif” of Hudson News retail stores.7 The TTAB had concluded that customers likely would perceive the store’s blue color as “nothing more than interior decoration” that “could be found in any number of retail establishments.”8 In other words, no secondary meaning, no trademark.

However, a color can achieve trademark status when companies promote it—and customers perceive it—as a source indicator. One example is AstraZeneca’s use of purple for its Prilosec and Nexium acid reflux medications. AstraZeneca spent many millions of dollars over many years promoting its purple colored prescription and over-the-counter medications as “The Purple Pills.” As a result, AstraZeneca not only was able to obtain registrations for the color purple, but also was able to enjoin competitors for using purple on their generic versions of AstraZeneca’s blockbuster medications.9

Another River to Cross—Functionality

Functional Functionality

Besides secondary meaning, another hurdle for protecting colors and many other nontraditional trademark formats is the requirement that such marks be nonfunctional.

A mark is functional if it is “essential to the use or purpose of the [product] or if it affects the cost or quality of the [product].”10 Color marks may be functional, for example, when the color results as a natural consequence of the manufacturing process. In one case, the Federal Circuit held that the color black for marine outboard motors is functional because it makes the motor look smaller and coordinates well with other colors.11 In another decision involving a now-archaic product, the United States Patent and Trademark Office (USPTO) held the combination of yellow and orange functional for public telephones because those colors made the pay phones easier to see in the dark.12 Other cases where color was found functional include the color purple for sandpaper,13 the color pink for surgical wound dressings,14 and the color coral for earplugs.15

On the other hand, color was found nonfunctional, and trademark-worthy, in cases involving the color yellow for caulking guns16 and the color orange for a snow removal hand tool.17

Aesthetic Functionality

When color is used to make a fashion statement, a corollary to the functionality doctrine, called “aesthetic functionality,” may come into play. Aesthetic functionality focuses on whether a product feature, such as color, makes the entire product more desirable because of how it looks, not how it works or performs. The Supreme Court in the Qualitex case recognized that color can sometimes drive consumer appeal, although in that case, it found that the murky green color of dry cleaning press pads did not have such commercial allure. But by recognizing the possibility of aesthetic functionality, the Court in Qualitex gave the somewhat moribund doctrine new vitality.

Recently, aesthetic functionality had its moment in the spotlight when two high-fashion footwear icons battled over the color red. Christian Louboutin had a US registration for the color red for its signature red-lacquered soled women’s shoes. Louboutin saw red—and sued—when the legendary Yves Saint Laurent (YSL) fashion house launched a line of totally red shoes that marched in Louboutin’s footsteps by also featuring red soles. The trial court, siding with Louboutin, found the red sole “instantly” recognizable and synonymous with Louboutin.18 But the trial court’s ultimate ruling favored YSL on aesthetic functionality grounds.19 More specifically, the trial court ruled that the Lanham Act did not “extend[] protection to a trademark composed of a single color used as an expressive and defining quality of an article of wear produced in the fashion industry.”20

Louboutin appealed to the Second Circuit Court of Appeals, which reversed.21 The appellate court concluded that the trial court’s ruling conflicted with the Supreme Court’s endorsement of single-color marks in Qualitex, concluding “no special legal rule prevents color alone from serving as a trademark,”22 whether the color is applied to dry cleaning press pads or an elegant article of high fashion.

The Second Circuit explained that a mark is “aesthetically functional,” and therefore cannot enjoy trademark protection, if (1) the design feature is essential to the use or purpose of the article, (2) the design feature affects the cost or quality of the article, and (3) protecting the design feature would significantly undermine a competitor’s ability to compete.23 The court also signaled that where aesthetic functionality is concerned, courts should not jump to conclusions “merely because [a decorative color or other fashion element] denotes the product’s desirable source.”24 In short, that which glitters may still be a trademark. Louboutin kept its trademark, but YSL still got its reprieve. The Second Circuit found that YSL’s use of red from top to bottom did not infringe Louboutin’s red sole trademark.

Scents and TM Sensibility: Fragrance Delecti?

Once upon a time, scents and aromas likely would not be high on the list of “devices” one thought about when pondering trademark-eligible subject matter. But in 1990, the USPTO registered the following mark: “high impact, fresh floral fragrance reminiscent of Plumeria blossoms” for “sewing thread and embroidery yarn.”25 The examining attorney conceded that “there is no inherent bar to registrability of an arbitrary, nonfunctional scent or fragrance.”26 But the examining attorney concluded that the mark was “functional,” framing the issue in terms of whether consumers could ever view—or more aptly, smell—a fragrance as a trademark, and noting that many products, such as cosmetics and cleansers, include fragrances to make them pleasant or attractive to use.27 In rejecting the application, the examining attorney reasoned that consumers were unlikely to regard the applicant’s plumeria scent as indicating the source of the applicant’s threads and yarns, even though they were the only such scented products on the sewing and embroidery market.28

Clarke, the applicant, countered with substantial evidence, via a declaration, which overcame the examining attorney’s concerns and established that the plumeria scent had achieved secondary meaning. Clarke’s declaration stated that hers was the first and only scented thread and yarn, that she had heavily promoted her company as the sole source of sweet-scented embroidery products, and that customers associated the popular fragrance with Clarke’s products.29 To sidestep any argument that granting a fragrance trademark might hinder competition, Clarke preemptively declared that “[o]thers are free to adopt any other scent for their yarns and threads, including [other] floral scents.”30 With that narrowing statement, and in view of Clarke’s uncontested statement of acquired distinctiveness, the TTAB allowed Clarke’s fragrance mark to register.31

Since Clarke’s plumeria-scented thread registration, the USPTO has granted registrations for the following goods and services:

  • Registration No. 2,463,044 (June 26, 2001) for “a cherry scent” for synthetic lubricants; and
  • Registration No. 4,754,435 (June 16, 2015) for “the scent of bubble gum” for shoes, sandals, flip-flops, and flip-flop bags.

Still, relatively few “fragrance” marks make it to the Principal and Supplemental Registers. That is because, despite what the Clarke case may suggest, the amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.32 In In re Pohl-Boskamp GmbH & Co., the TTAB found that a peppermint scent mark for “pharmaceutical formulations of nitroglycerin” failed to function as a mark.33 Unlike Clarke, where using any fragrance was unique within the embroidery industry, pharmaceuticals often feature scents, with peppermint being particularly common. The TTAB accordingly found that such scents are more likely to be perceived as attributes of ingestible products than as indicators of source.34

Flavor—Hard to Swallow as Trademarks

Flavor marks have not fared well compared to their cousins, fragrance marks. In In re N.V. Organon, the TTAB in 2006 refused registration of a mark described as consisting of the flavor orange used for a fast-dissolving pharmaceutical tablet.35 In affirming the examining attorney’s refusal to treat this taste as a trademark, the TTAB found it “difficult to fathom exactly how a flavor could function as a source indicator in the classic sense, unlike the situation with other nontraditional trademarks such as color, sound and smell, to which consumers may be exposed prior to purchase.”36 And flavor, as well as scent, was in play in the Pohl-Boskamp case discussed above. As with the scent aspect of that putative mark, the peppermint flavor was found too ubiquitous to register.37 Even if it had been unique, however, its inherent functionality—making the medicine go down—would likely have been an insurmountable obstacle to registration.

Reach Out and Touch Something

Touch or tactile marks appear to be something like the unicorn of nontraditional marks. For reasons not entirely clear, the USPTO accepted for registration as inherently distinctive (meaning no secondary meaning evidence was required) a mark consisting of a velvet textured covering on the surface of a bottle of wine.38 The Supreme Court’s decision in Wal-Mart Stores, Inc. v. Samara Brothers, holding that product design marks can never be inherently distinctive,39 might logically apply to tactile marks. But the USPTO thought otherwise, at least in this case. Other tactile marks include bottles with parallel lines of raised bumps for soft drinks,40 personal fragrance dispensers with a “pebble-grain” texture and “rubberized ‘soft-touch’ feel” for fragrances,41 and a leather texture wrapping for wine.42

I’d Like to Know Where You Got the Notion: Motion Marks

Trademarks can be iconic, they can be famous, and they can even inspire intense loyalty. But seldom are they moving experiences, except that is when a trademark is a symbol or images in motion. These so-called “motion marks” encompass a range of movements, animated, mechanical, and even human. Here are some examples:

  • Registration No. 1,928,423 (Oct. 17, 1995) for a computer-generated sequence showing the 20th Century Fox logo from several angles as though a camera is moving around the structure;
  • Registration No. 2,092,415 (Sept. 2, 1997) for a moving image design mark, comprised of an approximately five-second visual sequence depicting a city skyline, sky, and water enclosed in two concentric circles containing the words “BROADWAY VIDEO,” with the words rotating clockwise as the city skyline comes into view, and concluding with a red lightning bolt entering the circle and forming a “V”;43
  • Registration No. 2,793,439 (Dec. 16, 2003) for a mark consisting of the unique motion in which the doors of a Lamborghini move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position; and
  • Registration No. 3,182,163 (Dec. 12, 2006) for a telecommunications services mark consisting of a person whose hands are in motion coming together to form the letter “T”: one hand forms the vertical part of the letter “T,” while the other hand forms the horizontal part of the letter “T.”44

There’s More to the Picture Than Meets the Eye: Hologram Marks

According to the Trademark Manual of Examining Procedure (TMEP), “[a] hologram used in varying forms does not function as a mark in the absence of evidence that consumers would perceive it as a trademark.”45 In In re Upper Deck Co., the TTAB held that a hologram used on trading cards in varying forms did not function as a mark, because the record showed that other companies used holograms on trading cards and other products for nontrademark purposes (e.g., as anticounterfeiting devices), and there was no evidence that consumers would recognize the applicant’s hologram as an indicator of source.46 The TTAB stated that “the common use of holograms for non-trademark purposes means that consumers would be less likely to perceive applicant’s uses of holograms as trademarks.”47

Therefore, the TMEP instructs that “in the absence of evidence of consumer recognition as a mark, the examining attorney should refuse registration on the ground that the hologram does not function as a mark.”48 Generally, if a hologram has more than one view, the examining attorney will also refuse registration of the mark on the ground that the application seeks registration of more than one mark.49

Nevertheless, the USPTO allows registration of hologram marks where the application covers holograms of a particular design or shape. Examples include:

  • Registration No. 3,045,251 (Jan. 17, 2006) for a hologram image at the center of a credit card for charge card and credit card services;
  • Registration No. 2,934,710 (Mar. 22, 2005) for a hologram containing the words “FAIR & WHITE HEALTH SECURITY LABO DERMA PARIS” for various personal care products;
  • Registration No. 3,407,662 (Apr. 8, 2008) for a shield in the form of a hologram for pharmaceutical prescription pads; and
  • Registration No. 2,143,827 (Mar. 17, 1998) for a metallic foil hologram for plastic pages for cards and photographs.

Walk Right in, Sit Right Down: Trademark Protection for Restaurant and Retail Interiors

In 1992, the Supreme Court affirmed a judgment of infringement of trade dress in the appearance and decor of a chain of Taco Cabana Mexican-style restaurants in Texas.50 Since then, the USPTO has issued numerous registrations on the Principal Register for restaurant and retail interior designs where applicants have established secondary meaning in their decors. These include:

  • Registration No. 3,306,514 (Oct. 9, 2007) for a three-dimensional floor display unit issued to Home Depot;
  • Registration No. 3,105,875 (June 20, 2006) for the appearance and design of a restaurant “evoking a neo-industrial feel” issued to Chipotle Mexican Grill; and
  • Registration No. 4,839,216 (Oct. 27, 2015) for the interior design of the In-N-Out Burgers restaurants.

The USPTO has also registered many other marks consisting of restaurant or retail interior decor on the Supplemental Register, meaning the USPTO has deemed the marks potentially eligible for registration pending proof of secondary meaning.

And In the End, the Mark We Take Is Equal to the Mark We Make

Trademark law embraces far more than names, words, and logos. But, to paraphrase Ringo Starr, obtaining rights in a nontraditional mark “don’t come easy”—it typically requires extensive sales over time and considerable advertising targeted toward elevating the nontraditional mark to trademark status. Once secondary meaning has been achieved, companies in all sectors, from Big Pharma to Small Embroidery, can rely on nontraditional marks—sounds, colors, shapes, features, interiors, motions, and even smells—to build and embody their reputations.


1. 514 U.S. 159, 170–71 (1995) (quoting McLean v. Fleming, 96 U.S. 245, 254 (1877)).

2. 15 U.S.C. § 1127.

3. 514 U.S. at 174.

4. 774 F.2d 1116, 1127–28 (Fed. Cir. 1985).

5. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 1202.05 (Oct. 2017).

6. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211–12 (2000).

7. In re Hudson News Co., 114 F.3d 1207 (Fed. Cir. 1997) (per curiam).

8. In re Hudson News Co., 39 U.S.P.Q.2d 1915, 1923 (T.T.A.B. 1996), aff’d, 114 F.3d 1207.

9. E.g., AstraZeneca AB v. Dr. Reddy’s Labs., Inc., 145 F. Supp. 3d 311 (D. Del. 2015). The authors represented AstraZeneca in this case.

10. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001).

11. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1534 (Fed. Cir. 1994).

12. In re Orange Commc’ns, Inc., 41 U.S.P.Q.2d 1036, 1042 (T.T.A.B. 1996).

13. Saint-Gobain Corp. v. 3M Co., 90 U.S.P.Q.2d 1425 (T.T.A.B. 2007).

14. In re Ferris Corp., 59 U.S.P.Q.2d 1587 (T.T.A.B. 2000).

15. In re Howard S. Leight & Assocs., 39 U.S.P.Q.2d 1058 (T.T.A.B. 1996).

16. Newborn Bros. & Co. v. Dripless, Inc., No. 113471, 2002 T.T.A.B. LEXIS 537 (Aug. 16, 2002).

17. In re Shuttsco, Inc., 54 U.S.P.Q.2d 1055 (T.T.A.B. 2000).

18. Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 448 (S.D.N.Y. 2011), rev’d in part, 696 F.3d 206 (2d Cir. 2012).

19. Id. at 449–50.

20. Id. at 451.

21. Louboutin, 696 F.3d at 228–29.

22. Id. at 223 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 161 (1995)).

23. Id. at 220.

24. Id. at 222.

25. In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990).

26. Id. at 1239.

27. Id.

28. Id.

29. Id. at 1239–40.

30. Id. at 1239.

31. Id. at 1239–40.

32. See In re Pohl-Boskamp GmbH & Co., 106 U.S.P.Q.2d 1042, 1052 (T.T.A.B. 2013).

33. Id.

34. Id.

35. 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).

36. Id. at 1651.

37. Pohl-Boskamp, 106 U.S.P.Q.2d at 1052.

38. Registration No. 3,155,702 (Oct. 17, 2006). This registration has since been canceled because the registrant did not renew the registration.

39. 529 U.S. 205, 216 (2000).

40. Registration No. 3,250,178 (June 12, 2007).

41. Registration No. 3,348,363 (Dec. 4, 2007).

42. Registration No. 3,896,100 (Dec. 28, 2010).

43. This registration has since been canceled because the registrant did not renew the registration.

44. This registration has since been canceled because the registrant did not renew the registration.

45. TMEP, supra note 5, § 1202.14.

46. 59 U.S.P.Q.2d 1688, 1692–93 (T.T.A.B. 2001).

47. Id. at 1693.

48. TMEP, supra note 5, § 1202.14.

49. Id.; see Upper Deck, 59 U.S.P.Q.2d at 1690–91.

50. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 776 (1992).

Robert D. Litowitz

Robert D. Litowitz is a partner at Kelly IP, LLP in Washington, DC. He specializes in trademark, copyright, and false advertising law.

The authors thank Danielle Johnson, associate at Kelly IP, LLP, for her contributions to this article.

Linda K. McLeod

Linda K. McLeod is a partner with Kelly IP, LLP. She specializes in trademark prosecution, litigation, and counseling. 

The authors thank Danielle Johnson, associate at Kelly IP, LLP, for her contributions to this article.