In this age of competitive advertising, companies continually experiment with new media to impress product recognition on the human mind. In the past, marketers have appealed to our eyes with swoops, golden arches, and fonts. Today, the new frontier of advertising and product recognition will appeal to other senses—sound, taste, and even smell—to trigger consumer recognition, consider the Southwest Airlines "Ding," a grass-scented tennis ball, or an artificial strawberry flavor prevalently used by one pharmaceutical company. As these innovations grow, will formal protection for these source indicators, these non-traditional trademarks, follow suit? Currently, formal protection for non-traditional trademarks is sporadic and random, though the overall attention factor for this area is not. On March 16th, 2009, the World Intellectual Property Organization (WIPO) announced the implementation of the Singapore Treaty, the first International Treaty to specifically address the identity and registrability of non-traditional marks, including, but not limited to sound-, hologram-, motion-, color-, and taste marks.
The Singapore Treaty was adopted in March 2006 by a diplomatic conference of 147 WIPO member states to replace the 1994 Trademark Law Treaty (TLT). In its own implementation in 1994, the TLT sought to harmonize and simplify trademark registration procedures in countries party to the TLT, however, not only did the pre-internet TLT fail to cover all forms of electronic communication (as faxing was still considered "advanced" by 1994 standards), but also failed to consider non-visible marks as potential source indicators.
The Singapore Treaty recognizes that not all trademarks are two-dimensional visible product labels, and attempts to remedy the TLT's silence on the issue by specifically identifying new types of registrable marks such as hologram-, motion-, color-, sound-, and taste marks. Though the Singapore Treaty essentially legitimizes registration for these marks, the Treaty neither provides standardized procedures on how, exactly, one would represent these marks in applications, nor does the Treaty oblige contracting parties to register non-traditional marks. But because the Singapore Treaty has now publicly identified non-traditional marks as registrable, the assembly of the contracting parties will soon be able to define the relevant standards for treatment of non-traditional marks, in an effort to bring these marks into the trademark mainstream.
Though the possibility for non-traditional mark registration is generating buzz throughout the world, the presence of non-traditional registrations in various trademark offices is quite sparse. For example, though the Madrid system boasts more than 450,000 marks on the international registry, only 29 are audio marks. Currently, the Office of Harmonization has only 73 sound marks and one olfactory mark registered. In addition, the United States Trademark Trial and Appeals Board rejected registration for an artificial orange flavor additive in medications in 2006, noting the difficulty in defining how taste can function as a trademark when, generally, consumers only taste goods after purchase (In re N.V. Oregon, TTAB 2006).
Despite the apparent wariness of trademark registries to embrace non-traditional mark registration, the public outcry for acceptance has been recognized and addressed by international trademark publications and authorities. The International Trademark Association (INTA), for example, has filed amicus briefs with the European Court of Justice as well as the United States Supreme Court on three occasions in support of non-traditional mark registration. In addition, the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) has defined a number of areas of convergence where non-traditional marks have already been addressed by WIPO member states to advance the groundwork for non-traditional mark registration as quickly as possible.
Thus, while non-traditional marks continue to grace the public stage, the translation from commerce to trademark registry has yet to be formally established. While the possibilities continue to grow, it may be several years before various flavors of a pet chew toy or an athlete's signature fist pump are as prevalent in registration as fanciful logos and creative taglines.
Vol. 53, June 2010