Trademark Registration & Non-Traditional Marks

Trademarks are a cornerstone of brand identity, offering legal protection to distinguish products and services in a competitive marketplace. While traditional trademarks—such as logos, words, and slogans—are widely recognized, modern branding strategies have ushered in a new wave of identifiers: non-traditional trademarks. These marks go beyond the visual, often appealing to other senses like sound, smell, and touch.

As global commerce and digital media evolve, businesses increasingly rely on non-conventional brand expressions. However, securing trademark protection for these novel signs introduces unique legal and practical challenges. This article explores the landscape of non-traditional trademark registration, including the types of marks, registration hurdles, and international considerations.

What Are Non-Traditional Trademarks?

Non-traditional trademarks refer to marks that fall outside the scope of standard words, phrases, symbols, or logos. These include:

• Sound

• Color

• Smell (olfactory)

• Taste

• Motion

• Holograms

• Texture or tactile marks

• Positioning marks

To be registrable, these elements must fulfill the basic trademark criteria: they must be capable of distinguishing a company’s goods or services from those of others, and they must be non-functional and distinctive.

Categories of Non-Traditional Trademarks

1. Sound Marks

Sound marks use distinctive audio cues that consumers associate with a brand. Think of the roar of the MGM lion or the Nokia ringtone—these auditory logos create powerful brand recall.

Registration Requirements:
Most trademark offices require an audio file and a detailed description or musical notation of the sound. The mark must be unique and non-functional.

2. Color Marks

Color, whether as a single shade or combination, can be protected if it acquires distinctiveness through use. Brands like UPS (brown) or Barbie (pink) have successfully claimed exclusive rights to specific colors in their industries.

Challenges:
The applicant must show that the color alone identifies the product's origin and that it doesn't serve a functional purpose (e.g., red for warning signs).

3. Smell Marks

Smell marks, also known as olfactory marks, are scents used to signify a brand. Rarely granted, these trademarks face practical and legal challenges due to the subjectivity of smell and the lack of a standardized way to represent scents.

Example:
A scent described as “a flowery fragrance reminiscent of plumeria blossoms” was granted for sewing thread in the U.S., but such approvals are uncommon.

4. Motion Marks

These trademarks consist of moving images, such as animation or sequence-based branding elements. The Lamborghini bull animation or Pixar's hopping lamp are conceptual examples.

Filing Requirements:
Applicants must submit a series of still images or a video showing the motion, along with a description outlining the sequence.

5. Hologram Marks

Holograms are multi-dimensional visual images that can be seen from various angles. As technology advances, holograms are increasingly used in marketing, packaging, and authentication tools.

Key Considerations:
Holograms must be distinct and consistently used. Applicants must provide visual and narrative explanations of the holographic element.

6. Tactile or Texture Marks

These marks involve a specific feel or texture associated with a product or packaging. Examples might include a soft velvet coating or a specific embossed pattern used consistently.

Registration Hurdles:
Texture must not serve a functional purpose. Also, demonstrating distinctiveness in tactile elements is particularly difficult.

7. Taste Marks

Taste marks are the rarest of all, as they involve flavor. Trademark offices are generally skeptical due to the functionality doctrine—taste is considered an inherent characteristic of food products, not a branding tool.

Legal Requirements for Registration

To be successfully registered, non-traditional trademarks must meet certain legal benchmarks:

1. Graphical Representation or Equivalent

Many jurisdictions historically required a graphical representation of the mark. With the digital shift, some countries now accept multimedia formats such as audio and video files to represent sound and motion marks.

In the EU, the EUIPO updated its regulations in 2017 to accept new formats under the revised EU Trade Mark Regulation, eliminating the requirement for graphical representation.

2. Distinctiveness

The most critical requirement is distinctiveness. Non-traditional marks must not be generic or functional. The applicant must prove that consumers associate the mark exclusively with their brand.

This is often demonstrated through:

• Length and extent of use

• Advertising and marketing campaigns

• Sales figures

• Consumer surveys

3. Functionality Doctrine

Functional aspects of a product cannot be trademarked. For example:

• A floral scent in a perfume = functional → not registrable

• A non-functional floral scent in tennis balls = potentially registrable

The line between function and distinction is often blurred in non-traditional marks, making careful legal analysis essential.

International Perspective

Trademark law is territorial, meaning rules vary significantly by country. Here’s how some key jurisdictions treat non-traditional trademarks:

United States (USPTO)

• Accepts sound and color marks (with proof of acquired distinctiveness)

• Very strict on smell and taste marks

• Requires a clear representation and detailed description

European Union (EUIPO)

• One of the more progressive systems

• Accepts multiple types of non-traditional marks

• Allows for electronic representation

India

• Recognizes sound and color marks

• Less developed framework for smells, tastes, and motions

Japan

• Since 2015, accepts sound, color, position, and motion marks

• Still cautious on smell and taste marks

Australia & Canada

• Gradually adapting to include non-traditional marks

• Strong focus on proving distinctiveness

Benefits and Challenges of Registering Non-Traditional Marks

Benefits

• Unique Brand Identity: Sensory trademarks can create deeper emotional connections with consumers.

• Market Differentiation: Non-traditional elements are harder to replicate, giving brands a competitive edge.

• Long-Term Protection: Once registered, they offer the same duration and renewal benefits as traditional marks.

Challenges

• Higher Costs: More complex filing procedures and evidence requirements.

• Limited Precedents: Fewer successful registrations mean less guidance for applicants.

• Complex Enforcement: Monitoring and proving infringement of sensory elements is often difficult.

Best Practices for Trademark Applicants

• Start Early: Building distinctiveness takes time, so begin using the mark in a consistent and public-facing way.

• Maintain Documentation: Keep evidence of use, advertising, and public recognition.

• Work with IP Experts: Consult professionals experienced in non-traditional marks to navigate jurisdictional requirements.

• File Strategically: Use the Madrid Protocol for international applications, but adapt to each country’s standards.

Non-traditional trademarks offer exciting opportunities for businesses to deepen their brand identity using sensory elements that engage customers on multiple levels. While registering such marks can be legally and technically challenging, the rewards—stronger brand association, exclusive rights, and creative freedom—can be significant.

As global trademark offices continue to modernize their systems and adapt to new forms of brand expression, the path to protecting non-traditional marks is becoming more accessible. Companies that embrace these unconventional tools today may enjoy lasting advantages in the marketplace of tomorrow.