Intellectual Property Attorney

Tactile Trademarks and Other Non-Traditional Brand Extension

Companies are always looking for the next “edge” to attract and retain customers. Traditionally, marketers have looked towards visual source-identifiers as the lynchpin of branding efforts—an obvious fact reaffirmed by legions of billboards, neon signs, and even the occasional LED covered blimp. Yet such branding efforts only appeal to one of mankind’s five senses. In a world of increasing visual oversaturation (think Times Square at night) some companies are turning to man’s four other senses in an effort to expand their brand identity through nontraditional trademarks.

Take, for example, Louis Vuitton, which filed for (and ultimately received) trademark protection for its “distinctive man-made textured pattern utilized as a surface feature” i.e. the “feel” of a Louis Vuitton bag or suitcase. Or Steve Wonder who obtained, among others, U.S. Reg. 3,495,229 for STEVIE WONDER in Braille “and the corresponding raised dots“. The increasing use and acceptance of these “tactile trademarks” opens new doors for companies looking for greater intellectual property brand extension.

Smell has also become a new area for brand protection. In October of last year, Verizon Wireless obtained trademark registration (Reg. No. 4,618,936) for a “flowery musk scent” used in Verizon’s stores to help differentiate them from competitors. In a widely publicized move, Flotek Industries—a Texas hydraulic fracturing fluid producer—recently applied to register the orange scent of their fracturing fluids.

Companies have had more difficulty registering what might be called taste trademarks. For example, in the 2006 case of In re N.V. Organon, the USPTO’s Trademark Trial and Appeal Board (TTAB) upheld the government’s refusal to register an orange flavor for antidepressants. Among other reasons, the TTAB refused to allow the registration because it was “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”. In other words, since consumers could not experience the product’s orange flavor until after purchasing the product, the flavor did nothing to help consumers differentiate between one brand of antidepressants versus another.

In a recent case, New York Pizzeria, Inc. sued a competitor for, among other reasons, infringing the “distinctive trademark flavor of its products” including baked ziti and chicken and eggplant parmesan. Citing to
In re N.V. Organon, the District Court Judge dismissed the taste trademark claims; finding that it “is unlikely that flavors can ever be inherently distinctive” and further noting (what one can only hope was “pun-intended”) that the “flavor infringement claim is plainly half-baked”.

Could the unique taste of a product be protectable? Could obtaining a trademark for a scent or the feel of a product help strengthen a company’s market position? Undoubtedly, the answers to these questions will continue to evolve over the coming years, and Grimes LLC will continue navigating its clients through tactile trademarks, taste trademarks, and other non-traditional brand protection.

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