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Your source for news, updates and guidance on all things trademarks and intellectual property.

Alt Legal Connect Session Summary: Everything You Always Wanted to Know About Nontraditional Trademarks (But Were Afraid to Ask)

Alt Legal Team | October 30, 2020
3 min read

Thank you to Jordan Hameen for participating as a Law Student Reporter at Alt Legal Connect! Jordan is a 3L at University of San Francisco School of Law. Law Student Reporters had the opportunity to attend Alt Legal Connect in exchange for contributing to the social media presence of the conference. Reporters assisted by preparing blog posts and live-posting about sessions and in turn were permitted to attend all Connect sessions including valuable networking and social events to make meaningful connections with trademark professionals.

On Tuesday, October 27, Ed Timberlake of Timberlake Law presented the session, “Everything You Always Wanted to Know About Nontraditional Trademarks (But Were Afraid to Ask.)” Ed led a wonderful discussion and helped us understand that nontraditional trademarks should not really be considered non-traditional because they do exactly what trademarks are supposed to do.

Former USPTO trademark examiner Ed Timberlake has encountered more than a few nontraditional trademarks. From glittery pink flip flops that smell like bubblegum to bathtubs in the shape of wine glasses, there is quite the variety. Also, in regards to packaging, there are infinite possibilities. And after years of working as an examiner, he had learned that “Trademarks are the coolest things in the world, and nontraditional trademarks are the coolest of the cool.” During his session, Ed provided useful guidance and practical suggestions for successfully prosecuting applications to register nontraditional marks with the USPTO.

Ed started by suggesting that we should change our perspective on nontraditional trademarks because they are not really nontraditional. For example, think about it, you’re eating a pretzel, and it’s shaped like a mustache, and that’s pretty cool! This type of mark is going to make an impression on the consumer.

Also, Ed noted, these marks do not always have to be aesthetically pleasing. When you see a limo in the shape of a rooster coming down the road you’re not going to forget it! In general, when looking at nontraditional trademarks you are looking for a “wow” factor because you want to make a lasting impression.

When considering the Lanham Act, it says that the mark has to identify the source, and that is what these marks are doing. Also, it seems that nontraditional trademarks have been around for longer than we recognize! Ed surmised that we are not making these connections because we have been looking at trademarks the wrong way. We are so focused on the categories that are established that we cannot see the broader picture, which is, does this trademark allow consumers to identify the source? Rather than focusing on what the trademarks are, look at what the trademark does. This advice is also bolstered by the fact that unlike the Copyright Act, which includes a detailed list of what can be copyrighted, the Lanham Act provides us with a non-exhaustive list of what can be registered.

The key is to consider the mark’s ability to distinguish itself. Generally, distinctive marks will be registered with some exceptions if functionality comes into play. This is because if a mark is considered functional, it cannot be registered. Overall, we should be looking at whether it functions as a trademark and not focus too much on the utilitarian purpose. However, what we’re after is making a big cognitive impression. Ed argued that making a mark so distinctive could take it out of the realm of functionality because you’ve gone so far in the direction of distinctiveness.

Examiners look to determine if a mark can function as a symbol to identify a source. Whether it functions as a trademark comes down to the meaning for people. Human brains are always making connections. According to Ed, people are always going around connecting meanings to symbols all day. Lastly, our brains can handle a lot of different meanings at different times. These nontraditional marks are very distinctive, and function as symbols. Therefore, when these exotic marks are creating impressions that we can pound it into people’s brains and they are actually not so untraditional after all. They are functioning as symbols.

Next, Ed suggested some useful advice on prosecution practices. When completing your application, examiners want as much information as you can provide them. Also, 9 times out of 10 you should be able to predict what arguments that examiner will make. Ed recommended using previous registrations and seeing common arguments that appear in similar genres. Look into office actions and determine what has been refused or determined there. Look at the last 20 years and examine the patterns because you need a large data set. We often overlook this useful data. Look at the XSearch of the examiner. It allows you to see the examiner’s process. Not paying attention to the wealth in this database would be an error.

Remember, “Trademarks are the coolest things in the world, and nontraditional trademarks are the coolest of the cool.”

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