Funky Trademark Trend Continues as Procter & Gamble Files Trademark Request for
Old Spice Whistle
Pig Calls and Reality Show Catch Phrases Also Aim for Trademark
ANN ARBOR, MI -- (Marketwired) -- 03/18/14 -- The familiar Old
Spice whistle is a decades-old jingle, but owner Procter & Gamble has
just now applied to federally register the sound as a trademark. The
consumer products giant is joining companies and universities of all
sizes in the trend toward registering non-traditional trademarks,
according to Michael Spink, an intellectual property attorney who
blogs (http://funkymarks.wordpress.com/) and tweets (@funkymarksblog)
about unusual trademarks for motion, sound, color, scent, texture,
While unusual, Spink says the whistle trademark seems less so when
considering both historical and recent non-traditional mark
registrations for sound. For example, the NBC chime (the three notes
G, E and C) has been used for more than 50 years, and was registered
with the United States Patent and Trademark Office in 1971.
More recently, the University of Arkansas' famous 'hog call', a
distinctive crowd cheering "Woooooooo. Pig. Sooie! Woooooooo. Pig.
Sooie! Woooooooo. Pig. Sooie! Razorbacks!" was recently registered
with the trademark office, according to Spink, who is a shareholder
in the Ann Arbor office of Brinks Gilson & Lione, one of the nation's
largest intellectual property law firms. "In overcoming an initial
rejection, the University submitted a substitute specimen, along with
evidence of continuous and exclusive use for at least 5 years
preceding the application, in order to obtain the trademark
Spink notes that while most types of non-traditional marks are
registerable in the U.S., they can be more difficult to register than
traditional marks, mainly due to the requirement that non-traditional
distinctive and non-functional.
"The first hurdle is that all trademarks must be distinctive, that
is, capable of distinguishing the owner's goods from those of others;
however, certain non-traditional marks such as product configuration,
color, scent, flavor and some sound marks can never be inherently
distinctive," said Spink. "In these cases, secondary meaning, which
is distinctiveness acquired through consumer recognition, must be
shown for registration on the Principal Register, which is the
primary register of trademarks maintained by the United States Patent
and Trademark Office (USPTO)."
As an example, Spink notes that a recent trademark application for
the catch phrase, "Right Here" from the reality television show,
Storage Wars, was recently rejected by the USPTO as not being
source-identifying, rather considered by consumers simply as
dialogue. Still, Spink notes that rejection doesn't mean the TV show
couldn't seek a different mark in the category of 'Entertainment in
the nature of live radio personality performances,' perhaps in the
auction calling segment of the show.
When non-traditional marks are merely appealing aspects of a product,
or simply inherent features, they can only be registered on the
principal register with proof of secondary meaning. For example, the
sound emitted by a device in its normal course of operation requires
secondary meaning to be accepted for trademark consideration.
Even when a non-traditional mark is sufficiently distinctive, the
functionality doctrine may present a barrier to trademark
registration. The functionality doctrine prevents the owner from
limiting competition by trademarking a useful product feature to
extend patent-like protection. Generally, the question asked by the
Trademark Office is whether aspects of the design are essential to
the use or purpose of the article, or affect the cost or quality of
"If a shape of a product enables it to operate, or improves on
another design in some way (i.e. cheaper, faster, lighter, stronger),
then it cannot be trademarked," said Spink. "Similarly, if a
particular color makes a device more visible in an industry where
visibility is desired, it cannot be trademarked."
Whistles, pig calls and catch phrases notwithstanding, product
packaging is still the most common type of non-traditional trademark
registered in the U.S., followed by product configuration, sound and
color. What's next on the trademark horizon?
"Scent, texture and flavor trademarks, while increasing, are still
fairly rare in the U.S., but I expect that to change over the next
five to ten years," said Spink.
Brinks Gilson & Lione
Brinks Gilson & Lione has 160 attorneys, scientific advisors and
patent agents who specialize in intellectual property, making it one
of the largest intellectual property law firms in the U.S. Clients
around the world use Brinks to help them identify, protect, manage
and enforce their intellectual property. Brinks lawyers provide
expertise in all aspects of patent, trademark, unfair competition,
trade secret and copyright law. The Brinks team includes lawyers with
advanced degrees in all fields of technology and science. Based in
Chicago, Brinks has offices in Washington, D.C., Research Triangle
Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More
information is at www.brinksgilson.com.
The following files are available for download:
-- Spink Michael
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