David Orozco, © 2008 The Shape of Things to Come: Non–Traditional Trademarks, from the iPod to...

David Orozco, © 2008

The Shape of Things to Come: Non–Traditional Trademarks, from the

iPod to the Chippendales Dancers

David OrozcoAssistant Professor of Business LawSchool of Business and EconomicsMichigan Technological University


Motion

Colors

Shapes

Sounds

Architecture


“The mark is comprised of a three dimensional spray of water issuing from the rear of a jet propelled watercraft and is generated during the operation of the watercraft. “

Yamaha Motor Co.

Registered for “jet propelled water vehicles”

Motion Trademark


“The drawing is lined for the color blue, and color

is a feature of the mark.”

Tiffany and Co.

Registered for “jewelry, watches and clocks, precious and semi-precious stones; decorative art objects…”

Color Package Trademark


Hershey Chocolate Co.

Chocolates and Candy

Shape Trademark


The mark consists of a five tone audio progression of the notes D FLAT, D FLAT, G, D FLAT and A FLAT.”

Intel Corporation

“Computer hardware and computer operating software, microprocessors, integrated circuits and semiconductor devices.”

Sound Trademark


“The color(s) yellow is/are claimed as a feature of the mark. The mark consists of a three-dimensionalconfiguration arc design.”

McDonald’s Corporation

Restaurant services

Architecture Trademark


Innovation & Design

In a saturated marketplace, innovation and design are increasingly valuable ($).

Consumers are Sophisticated (design demand)

Firms need to stand out in a crowded marketplace (design supply)


Regular old shopping cart IDEO’s shopping cart


ax•i•om : an established rule or principle or

a self-evident truth


Burberry Limited v. Geconf SpA

Photograph of Mayor Bloomberg proclaiming a counterfeit goods store closed in a raid - Bebeto Matthews/AP


Red Bull vs. Red Bat


“Imitation is the sincerest form of flattery”

Charles Caleb Colton

“It is better to fail in originality

than to succeed in imitation”Herman Melville


The Role of Trademarks


Hershey’s Kisses®


or


HSY


Three Trademark Quirks

Trademarks are supposed to prevent consumer confusion about the source. A trademark applicant has to prove its

trademark is distinctive.

Trademark rights may last as long as the product is being sold (in theory forever).

Trademarks cannot be functional.


Distinctive?


http://www.youtube.com/watch?v=9RajNvJ3bCU


Distinctive?


“The mark consists of a three-dimensional human torso with cuffs around the wrists and neck collar comprising of a bow tie”

“Adult entertainment services, namely exotic dancing for women in the nature of live performances”

Trademark


The Argument

“By taking the cuffs and collar of the tuxedo and leaving a void where the shirt should be, Applicant invited its all female audience to ‘fill in the space’ with their own fantasy. [T]he Chippendales dancer is larger than life and can represent whatever each individual in the audience desires him to represent.”


The Trademark Office

“There is nothing unique or distinctive about a male dancer wearing cuffs and a bow tie and collar. This is considered to be one of various ways for strippers and male entertainers to dress. A theatrical act, by definition, requires uniform or costume for the purpose of entertainment and drama.”


Distinctive Engine Roar?

SOURCE: Michael B. Sapherstein, “The Trademark Registrability of the Harley-Davidson Roar: A Multimedia Analysis”, 1998 B.C. Intell. Prop. & Tech. F.101101


Harley Davidson

“The mark consists of the exhaust sound of applicant's motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use.”


Using a shape trademark to extend the life of a functional product configuration.


Honda

“engines for use in construction, maintenance and

power equipment.”

“The mark consists of the configuration of an Engine”


The iPod Shape & Clickwheel

“the design of a portable and handheld digital electronic media device comprised of a rectangular casing displaying circular and rectangular shapes therein arranged in an aesthetically pleasing manner.”


Summary

Non-Traditional Trademarks are pushing the intellectual property envelope

They can be advantageous To secure sensory brand elements

They are hard to execute The iPod Case Study offers an inside look at successful execution Type “iPod shape trademark” in Google for The Wall Street Journal

article


Thank You!

Acknowledgments:

C.E. Hanifin, freelance writer


Sources:

The United States Patent and Trademark Office, www.uspto.gov

Michael B. Sapherstein, “The Trademark Registrability of the Harley-Davidson Roar: A Multimedia Analysis”, B.C. Intell. Prop. & Tech. F.101101 (1998), http://www.bc.edu/bc_org/avp/law/st_org/iptf/articles/content/1998101101.html#fnBa

David Orozco and James G. Conley, “The Shape of Things to Come”, The Wall Street Journal, http://online.wsj.com/article/SB121018802603674487.html


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