Friday, February 25, 2011

Recommended Reading: Ann Gilson Lelonde and Jerome Gilson, "Getting Real with Nontraditional Trademarks"

In the 100th Anniversary issue of The Trademark Reporter, Ann Gilson Lelonde and Jerome Gilson bring us up to date on the law of nontraditional trademarks, in their article entitled: "Getting Real with Nontraditional Trademarks: What's Next after Red Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof, " 101 TMR 186 (January-February 2011). [pdf here].

The authors "recap and update" their 2005 article on the subject and "take a fresh look at the issues inherent in enforcing nontraditional marks." They emphasize that" enforcement is and will continue to be an enormous challenge."

The great American marketing engine has generated a torrent of nontraditional trademarks since our 2005 article on the subject. In the pantheon of sound, flavor, texture, color, scent, and product shape, these marks continue to enliven trademark law and captivate trademark lawyers. They are rarely mundane, occasionally brash, curious, or puzzling, but often creative and witty.

TTABlog comment: the authors point out that, as to flavor, they could find no evidence of any registration for a flavor mark. They note the TTAB 2006 decision affirming a refusal to register the flavor orange for "antidepressants in quick-dissolving tablets." The Board found that the proposed mark was de jure functional. In re N.V. Organon, 79 USPQ2d 1639 (T.T.A.B. 2006) [TTABlogged here].

Recently, there was a discussion of flavor marks on the e-trademarks list serv, where I proposed the following as a possibly registrable flavor mark: suppose a bank includes a particular flavor in the adhesive of its deposit envelopes or mailing envelopes, and advertises that flavor as its trademark. E.g., suppose that the bank’s "corporate color" is blue, and it uses the flavor blueberry on its envelopes. Would that "flavor service mark" avoid a functionality refusal?

Text Copyright John L. Welch 2011.


At 6:49 PM, Anonymous Anonymous said...

I still think it would be functional because the blueberry taste serves to mask the actual or assumed nasty adhesive taste. Of course, in a way, a taste will always serve to attract or repel (or be intended to attract or repel), so I think it's always going to be felled by functionality....

At 7:05 PM, Blogger John L. Welch said...

Oh, I don't know that the usual adhesive is that nasty-tasting? Not like medicine, that usually tastes awful.


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