27 Cardozo l Rev 457

Citation: 27 Cardozo L. Rev. 457 2005-2006

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SOMETHING OLD, SOMETHING NEW,SOMETHING BORROWED, SOMETHING BLUE:

A NEW TRADITION IN NONTRADITIONALTRADEMARK REGISTRATIONS

Melissa E. Roth*

INTRODUCTION

What comes to mind when you hear the sound of chimes,' a child'sgiggle, 2 or a lion's roar? 3 Smell fresh cut grass4 or plumeria blossoms? 5

Or see the colors pink6 or brown?7 Traditionally, trademarks conveysource and quality information to consumers through the use of brandnames, logos, or symbols adorning goods and services.8 Today,

* Associate Editor, Cardozo Law Review. J.D. Candidate (June 2006), Benjamin N.

Cardozo School of Law. I would like to thank Professor Barton Beebe for introducing me tonontraditional trademark subject matter and the editors of Cardozo Law Review for their time,patience, and edits. Most of all, I wish to thank my parents for believing in me and Seth forlearning to love trademarks.

I Nat'l Broad. Co., Reg. No. 0916522 ("The mark [i.e. NBC's chimes] comprises a sequence

of chime-like musical notes which are in the key of C and sound the notes G, E, C, the 'G' beingthe one just below middle C, the 'E' the one just above middle C, and the 'C' being middleC .... ").

2 Pillsbury Co., Reg. No. 2692077 ("The mark consists of the sound of a childlike human

giggle which represents the Pillsbury Doughboy giggle.").3 MGM/UA Entm't Co., Reg. No. 1395550 ("The mark comprises a lion roaring.").4 Case R 156/1998-2, Vennootschap Onder Firma Senta Aromatic Mktg., 1999 E.T.M.R.

429 (CTM No. 000428870) (scent of fresh cut grass applied to tennis balls).5 Celia Clarke d/b/a Clarke's Osewez, Reg. No. 1639128 ("The mark is a high impact, fresh,

floral fragrance reminiscent ofplumeria blossoms."); In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B.1990) (granting registration).

6 Owens-Coming Fiberglas Tech., Reg. No. 2512851 ("The mark consists of the color pink

as applied to the goods in their entirety. The goods comprise a foam insulation which hardenswhen expelled from its container."); see In re Owens-Coming Fiberglas Corp., 774 F.2d 1116(Fed. Cir. 1985) (upholding registration).

7 United Parcel Serv. of Am., Reg. No. 2901090. UPS has registered the color chocolatebrown for its transportation and delivery services, specifically its vehicles and uniforms.

8 1 J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 2:3 (4th ed. 2004);see also William M. Landes & Richard A. Posner, The Economics of Trademark Law, 78TRADEMARK REP. 267, 270 (1988) (explaining "SANKA designates a decaffeinated coffee madeby General Foods Corp.; XEROX the dry copiers made by Xerox Corporation .... A stylizedpenguin is the symbol of a line of paperback books published by Penguin Books ... ").

458 CARDOZO LA W REVIEW [Vol. 27:1

however, trademarks appear in new and innovative contexts. 9

Companies employ new branding techniques that utilize "nontraditionalmarks"' 0 such as color, sound, and even scent to distinguish theirproducts from competitors' products and entice consumers."Businesses utilize these symbols not only as source signifiers, but aspromises of reliability and quality.' 2 As companies expend resources

9 A. Michael Froomkin, When We Say US, We Mean IW!, 41 HOUS. L. REV. 839, 840 (2004)(discussing the growth of trademark law to encompass nations as brands).

10 Nontraditional trademarks have traditionally been defined as color, sound, scent, shape,motion, and taste marks. See generally THOMAS P. ARDEN, PROTECTION OF NONTRADITIONALMARKS: TRADEMARK RIGHTS IN SOUNDS, SCENTS, COLORS, MOTIONS AND PRODUCT DESIGN INTHE U.S. (2000). However, in April 2004, Ecuador granted registration of the world's firsttexture trademark. The mark consisted of a crackle glass texture on a bottle. World's FirstTexture Trademark Registered in Ecuador, 59 INTA BULLETIN (Int'l Trademark Assoc., NewYork, N.Y.), Dec. 15, 2004. The actual texture of the bottle was reproduced in the Ecuadorian IPGazette by using a two-step printing process in which the inked portion was printed first,followed by an embossed overlay of the texture on the same page. Id.; see also Jeremy Phillips,Exploding the Myth: Non-traditional Trademarks: Of D-I-Y and Dadaists, 170 TRADEMARKWORLD 66 (Sept. 2004). Mr. Phillips also advocates another nontraditional mark-the do-it-yourself mark. Id. The do-it-yourself mark is assembled by consumers post-purchase; forexample, the "wedging of green-skinned lemons into bottles of CORONA beer" is the creation ofa trademark. Id. Nontraditional trademarks have also been labeled non-conventional, exotic,new, or extraordinary. Stefano Sandri & Sergio Rizzo, Introduction: Non-conventional TradeMarks?, MANAGING INTELL. PROP. (Brand Management Focus 2004), Apr. 2004, available athttp://legalmediagroup.com/mip/default.asp?Page=1&SID=2363&mgName=brandman04.gif&=F=F; see also Posting of Jeremy Phillips, There's Got to Be a Better Name?, IPKat,http://ipkitten.blogspot.com/2005 03 01_ipkitten-archive.html (Mar. 18, 2005, 13:48 EST)(suggesting that nontraditional is not a sufficient name for sound, color, and scent marks becauseit "do[es] not convey sufficiently the rich vein of folly with which such marks should moreappropriately be associated").

II For example, Tiffany & Company has registered the color blue for its gift boxes. Reg. No.2184128. Smucker's has registered the alternating wavy columns of peanut butter and jelly of itscombined peanut butter and jelly food spread. Reg. No. 2478798. The WNBA has registered thecolors orange and off-white as applied to alternating panels on a basketball. Reg. No. 2281990.Anheuser-Busch uses the sound of a howling wolf as its trademark. Reg. No. 2207874.Supermarkets in Northern Europe utilize the aroma of fresh baked bread to attract customersinside the shop, and a major British bank serves fresh brewed coffee at its branches because thefamiliar smell comforts and relaxes customers. See, e.g., Martin Lindstrom, Sensory BrandManagement: It Makes (Five) Senses, http://www.martinlindstrom.com/index.php?id=writing&archive id=69 (last visited Sept. 5, 2005) ("The opportunity of brand building byleveraging the five senses is wide open. Brands are hovering in the wings, as an audience of ourhighly receptive senses sits in a darkened theatre, anticipating a marketing show that hasn't yetbegun."). Mr. Lindstrom is a Fortune 100 brand adviser and bestselling author of several books.

12 Historically, the purpose of trademark protection was to indicate ownership.RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9 cmt. B (1995). However, with the adventof commercial trade, trademarks were used to identify the manufacturer of goods in themarketplace. Id. This guaranteed that the manufacturer of the goods would be held responsiblefor defective merchandise. Id. As markets expanded nationally, marks served as identifiers ofsource, allowing consumers to base their purchasing decisions on the reputation of the mark. Id.Today, many consumers neither know nor care about the true origin of the product, only that it isthe quality they seek. See Robert N. Klieger, Trademark Dilution: The Whittling Away of theRational Basis for Trademark Protection, 58 U. PITr. L. REV. 789, 790 (1997) (discussing theevolving finctions of trademarks). While there are still certain "manufacturer" brands thatprovide an instant product-source connection, these trademarks "are promises, not as to a

2005] A NEW TRADITION 459

creating and developing these unique brand personas, 13 they rely ontrademark law to protect their investments.14

Trademark law protects against consumer confusion about thesource of products sold under a trademark, instilling confidence inconsumer purchases and reducing information and transaction costs inthe marketplace. 15 Trademark law also safeguards a mark owner fromhaving the "fruit of his labor misappropriated"' 16 by infringers, creatingincentives for the production of high-quality goods and for preservingthe mark's goodwill. 17 While these protections apply indiscriminatelyto nontraditional trademarks,18 the current registration practices for such

producer, but as to the fulfillment of a perception." Jerre B. Swann, Sr., Dilution Redefined forthe Year 2002, 92 TRADEMARK REP. 585, 592 (2002).

13 "Competing companies spend fortunes in their continuous efforts to develop consumer

awareness and trust towards their brands, making sure that their products stand out and areremembered by consumers selecting a purchase." Bella I. Safro & Thomas S. Keaty, What's in aName? Protection of Well-Known Trademarks Under International and National Law, 6 TUL. J.TECH. & INTELL. PROP. 33, 34 (2004); see James Surowiecki, The Decline of Brands, WIREDMAG., Nov. 2004, at 206 ("The brand value of companies like Coca-Cola and IBM is routinelycalculated at tens of billions of dollars, and brands have come to be seen as the ultimate long-termasset--economic engines capable of withstanding turbulence and generating profits fordecades.").

14 While the expenditure of large sums of money will not always give rise to legally protectedrights, those who have invested in developing goodwill and reputation will be allowed to reap thebenefits of their investments and receive protection from trademark law. See Smith v. Chanel,Inc., 402 F.2d 562 (9th Cir. 1968); Armstrong Cork Co. v. Armstrong Plastic Covers Co., 434 F.Supp. 860 (E.D. Mo. 1977); MCCARTHY, supra note 8, § 2:30.

Companies often view trademarks as their most valuable asset. Klieger, supra note 12, at791 ("[T]hese functions of trademarks as product, source, and quality identifiers, and as vesselsfor the development of brand personas, elevate trademarks above physical assets and other formsof intellectual property as the most valuable assets of many companies."); see id. at n.6 (sourcescited); see also Jacob Siegel Co. v. FTC, 327 U.S. 608, 612 (1946) (noting that trademarks are"valuable business assets" and it is "the policy of the law to protect them as assets of a business");Klieger, supra note 12, at 793 ("[Mjodern trademark law directly safeguards trademarks as sourceand quality identifiers and indirectly protects the 'commercial magnetism' imbued in marksthrough extensive advertising.").

15 Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3d Cir. 1985)("Consumers are also benefited by the registration of national trademarks, because suchregistration helps to prevent confusion about the source of products sold under a trademark and toinstill in consumers the confidence that inferior goods are not being passed off by use of afamiliar trademark."); MCCARTHY, supra note 8, § 2:3; see also Peter Menell & SuzanneSchotchmer, Intellectual Property, in HANDBOOK OF LAW & ECONOMICS 59 (forthcoming, onfile with author) ("Trademarks reduce information and transaction costs in the marketplace byallowing customers to gauge the nature and quality of goods before they purchase them.Consumers rely most on trademarks where it is difficult to inspect a product quickly and cheaplyto determine its quality.").

16 Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670, 694-95 (S.D.N.Y. 1963).17 See In re Int'l Flavors & Fragrances, 183 F.3d 1361, 1367 (Fed. Cir. 1999); S. REP. NO. 79-

1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274; infra notes 77-81 and accompanying text.18 Not only does United States trademark law recognize and protect nontraditional

trademarks, but international treaties also recognize the possibility of nontraditional trademarkregistration, as do many foreign countries. The Agreement of Trade-Related Aspects ofIntellectual Property Rights (TRIPS) defines a trademark as:

Any sign, or any combination of signs, capable of distinguishing the goods or services


marks 19 pose several problems and arguably impede United Statestrademark law from achieving its underlying objectives. 20

Consumers readily recognize traditional trademarks such as brandnames and logos as identifying the source and quality of goods andservices. 21 However, consumers may not readily acknowledge that acolor, sound, or scent functions as a trademark.22 Further, even whereconsumer recognition is not an issue, consumers rarely have theopportunity to make a direct comparison between similar nontraditionalmarks and, as a result, face increased difficulty identifying anddistinguishing their desired product or service. 23 As such, grantingtrademark protection in nontraditional marks may incite rather than

of one undertaking from those of other undertakings, shall be capable of constituting atrademark. Such signs, in particular words including personal names, letters, numerals,figurative elements and combinations of colours as well as any combination of suchsigns, shall be eligible for registration as trademarks. Where signs are not inherentlycapable of distinguishing the relevant goods or services, Members may makeregistrability depend on distinctiveness acquired through use. Members may require,as a condition of registration, that signs be visually perceptible.

Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, MarrakeshAgreement Establishing the World Trade Organization, Annex IC, Legal Instruments-RESULTSOF THE URAGUAY ROUND vol. 31, 33 1.L.M. 81 (1994), at art. 15(1) [hereinafter TRIPSAgreement].

Ecuador, Greece, Hong Kong, Hungary, Peru, Portugal, and Spain also recognizenontraditional trademark registration. See I ANNE-LAURE COVIN, TRADEMARKS THROUGHOUTTHE WORLD §§ 47:5, 63:5, 71:5, 72:6, 126:6, 129:5, 148:5 (4th ed. 2005).

19 For an in-depth discussion of the registration procedures for nontraditional trademarks, see

infra Part III.20 For a more in-depth discussion of the policies underlying United States trademark law, see

infra Part I.21 David I. Bainbridge, Smell, Sound, Colour and Shape Trade Marks: An Unhappy

Flirtation, 2004 J. BUS. L. 219, 222. Mr. Bainbridge notes:In the past, consumers have been educated to recognise, in particular, words anddevices (pictorial signs) and combinations of words and devices as trademarks. Theyhave traditionally recognised these as identifying the undertaking responsible forputting the goods in question on the market, usually as the manufacturer of goods orprovider of services.

Id.22 Id. (noting that consumers are not aware that some types of marks operate as trademarks);

Jerome Gilson & Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks and Cherry-ScentedRacecar Exhaust: Protecting Nontraditional Trademarks, 95 TRADEMARK REP. 773, 774 (2005)(noting that color, sound, scent, and three-dimensional marks are not readily perceived as sourceidentifiers). A mark functions as a trademark if it identifies and distinguishes the goods of onemanufacturer from the goods of another. See MCCARTHY, supra note 8, § 3:1. A trademark alsosignifies that goods bearing the mark come from the same source and are of consistent level andquality. Id. § 3:2. However, if consumers are unable to recognize a trademark, the mark wouldneither serve its function nor lower consumers' search costs. See Menell & Schotchmer, supranote 15, at 63 ("Consumers benefit from concise and effective designations of the source ofproducts."); see also Gilson & LaLonde, supra, at 777 (commenting that consumers may notrecognize nontraditional trademarks as trademarks but rather as decorative or inherent aspects ofthe product itself).

23 See, e.g., James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 275 (7th Cir.1976) (noting that the consuming public is unlikely ever to be presented with an opportunity forside-by-side comparison of two similar marks).

2005] A NEW TRADITION

mitigate consumer confusion.Color, sound, and scent marks also cannot be identified with great

precision in the registration process. 24 As a result, trademark registrysearches25 may not provide notice to a new entrant in the marketplacethat its prospective venture could trigger an action for trademarkinfringement. 26 Additionally, the degree of recognition ofnontraditional marks varies among individuals, rendering theevaluation, registration, and enforcement of nontraditional marksinconsistent and unpredictable. 27 Both the United States Patent and

24 ARDEN, supra note 10, at 35. The current registration practices make it difficult fortrademark owners to identify their nontraditional marks with the desired precision. Whileprecision is arguably not a goal of the current registration practices, the registration practices arenot fatally flawed and can be remedied by adopting several additional practices. See discussioninfra notes 137-45, 178-86, 212-18 and accompanying text.

25 Conducting a search of the trademark registry prior to adopting a trademark is important

for several reasons. First, under the Lanham Act, a subsequent user of a trademark is deemed tohave constructive notice of the registrant's claim of ownership. Lanham Act § 22, 15 U.S.C. §1072 (2000). From a business standpoint, it is in a business owner's best interest to knowwhether his investment in developing a new product infringes on an existing right before makingthe expenditure. See, e.g., Paul W. Reidl, Understanding Basic Trademark Law: A Primer onGlobal Trademark Protection, in UNDERSTANDING BASIC TRADEMARK LAW 2004, at 266 (PLIPatent, Copyrights, Trademarks, & Literary Prop. Course Handbook Series, 2004). From a legalstandpoint, failure to conduct a search can lead to a finding of bad faith or willfulness, subjectingthe infringer to payment of damages or profits. Lanham Act § 35(a), i5 U.S.C. § 1117 (2004);Reidl, supra.

26 Additionally, a trademark owner may not have the requisite notice that its mark is beinginfringed. Section 32(1) of the Lanham Act, 15 U.S.C. § 1114 (2005), addresses infringement ofregistered marks. The statute states in relevant part:

Any person who shall, without the consent of the registrant.., use in commerce anyreproduction, counterfeit, copy, or colorable imitation of a registered mark inconnection with the sale, offering for sale, distribution, or advertising of any goods orservices on or in connection with which such use is likely to cause confusion, or tocause mistake, or to deceive ... shall be held liable in a civil action by theregistrant ....

Id. In order to succeed in an action for trademark infringement, the owner must prove that heowns the mark, the mark is legally protectable, and the infringer used the mark in commerce in amanner causing confusion. Id. In assessing confusion, courts consider the degree of similaritybetween the registered mark and the allegedly infringing mark. See, e.g., In re Majestic DistillingCo., 315 F.3d 1311, 1315 (Fed. Cir. 2003); Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 972(10th Cir. 2002); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992);Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989); Polaroid Corp. v.Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Other factors courts consider include:similarity of the goods, evidence of actual confusion, and the defendant's intent. See, e.g., SmithFiberglass Prods. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993); Anheuser-Busch, Inc. v. L& L Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992); Merchant & Evans, Inc. v. Roosevelt Bldg.Prods. Co., 963 F.2d 628, 637 (3d Cir. 1992); Dieter v. B & H Indus. of S.W. Fla., Inc., 880 F.2d322, 326 (1lth Cir. 1989); Sno-Wizard Mfg. v. Eisenmann Prods. Co., 791 F.2d 423, 428 (5thCir. 1986).

27 Bainbridge, supra note 21, at 222. Similarly, what one consumer may perceive as a source

identifier, another may perceive as simply a sound, scent, or color. This individualizedperception not only complicates consumers' purchasing decisions in the marketplace, but alsocauses problems in the United States Patent & Trademark Office (U.S.P.T.O.). Trademarkexaminers may have trouble differentiating between two competing marks, and one may view the


Trademark Office (U.S.P.T.O.) and the federal courts struggle with theinadequacy of the present procedural rules in evaluating claims fornontraditional trademark infringement, and recognize the ubiquitousneed for the registry to provide proper notice to other trademark users asto the scope of registered trademarks.2 8 Although specificity is notcritical to effecting registration,29 lack thereof hinders trademarkprotection and complicates courts' fashioning of injunctive relief.30

The United States' current registration procedures fornontraditional trademarks do not effectively serve the interests ofconsumers, manufacturers, or the marketplace. 3' Therefore, asregistration of color, sound, and scent marks proliferate in the UnitedStates, there is an increasing need for specificity and precision innontraditional trademark registration to ensure that the use of newbranding techniques promote the policies that underlie United Statestrademark law.32 Increased specificity in nontraditional trademarkregistrations would more clearly delineate and protect trademarkholders' rights. 33 More specific registrations would allow

challenged mark as infringing while another may not. Cf ARDEN, supra note 10, at 27 (notingthat two senior trademark attorneys handle all single color trademarks cases "to provideconsistency and predictability in the handling of color applications").

28 See In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361 (Fed. Cir. 1999); LandscapeForms, Inc. v. Columbia Cascade Co., 113 F.3d 373 (2d Cir. 1997); Master Distribs. v. PakoCorp., 986 F.2d 219 (8th Cir. 1993); Minn. Mining & Mfg. Co. v. Beautone Specialties, Co., 82F. Supp. 2d 997 (D. Minn. 2000); Amsted Indus. Inc. v. W. Coast Wire & Rope Rigging Inc., 2U.S.P.Q.2d 1755 (T.T.A.B. 1987); ARDEN, supra note 10, at 168.

29 The U.S.P.T.O. has permitted registration of nontraditional marks, despite the unclear andimprecise nature of the mark. For example, the sound of a thunderclap has been registered.Beacon Broad. Corp., Reg. No. 1746090; see, e.g., ARDEN, supra note 10, at 37 (citingexamples).

30 The Second Circuit emphasized the need for precise descriptions so that courts may

evaluate the mark and shape injunctive relief. ARDEN, supra note 10, at 40; see LandscapeForms, 113 F.3d at 381 ("Without... a precise expression of the character and scope ofthe ... [mark], litigation will be difficult .... Courts will.., be unable to shape narrowly-tailored relief if they do not know what... deserves protection."); cf Olay Co. v. CococareProds., 218 U.S.P.Q. 1028, 1045 (S.D.N.Y. 1983) (court relied on precise hue of color pinkdefined in a color code to fashion injunctive relief).

31 See infra Part II and notes 99-104.32 Registration is especially important in the developing area of nontraditional trademarks, as

such marks may not be readily perceived as trademarks. See, e.g., Faye M. Hammersley, TheSmell of Success: Trade Dress Protection for Scent Marks, 2 MARQ. INTELL. PROP. L. REV. 105,110 (1998) (noting that, while not required, federal registration is very important fornontraditional marks because registration defines trademark rights in an area of law that is notfully developed); see also Lee Bendekgey & Caroline H. Mead, International Protection ofAppellations of Origin and Other Geographic Indications, 82 TRADEMARK REP. 765, 769 (1992)(noting "consumer perceptions are of paramount importance" in United States trademark law);supra notes 21-23 and accompanying text.

While the need for legal certainty and precision in registration practices is applicable to allnontraditional mark registrations, including shape, taste, texture, and motion, the focus of thisNote will be limited to the nontraditional trademarks of color, sound, and scent.

33 Bainbridge, supra note 21, at 222. Trademark owners also need to see the precise nature ofa pending trademark application, so they may determine whether the new mark infringes their


entrepreneurs, by searching the trademark registry, to discover possiblecompetition in the marketplace and safeguard against possibleinfringement claims before expending large sums developing andpromoting new marks.34 Additionally, increased specificity wouldminimize consumer confusion as to source, enabling consumers tocorrectly identify and purchase their preferred goods and services.35

Recently in the European Union,36 the European Court of Justice(E.C.J.)37 addressed nontraditional trademark registration andestablished procedures that tackle many of the concerns raised bynontraditional trademarks in the United States.38 Notably, the EuropeanUnion's strict graphic representation requirement for nontraditionaltrademark registrations39 provides legal certainty and accessibility4°-

rights and oppose the registration. Id. Further, with regard to nontraditional trademarks, itbecomes increasingly difficult for courts to ascertain what the applicant seeks to register and themark's scope of protection. See, e.g., Minn. Mining, 82 F. Supp. 2d at 999-1000 (raising "what is'canary yellow"' as a threshold inquiry in an action for trademark infringement and noting thebreadth of the range of color encompassed by canary yellow would impact findings ofdistinctiveness and functionality).

In fact, as David Keeling, a member of the Board of Appeals of the OHIM (see infra notes51, 161) correctly notes, many of the problems that nontraditional trademarks face in theregistration process mirror underlying issues in trademark law, such as: "(1) what a trademarktruly is, (2) how do you know what the applicant has registered, and (3) how can you determinethe scope of protection which registration confers." Posting of Jeremy Phillips & Ilanah Simon,Keeling Registers a Note of Caution on Unusual Trade Marks in Europe, IPKat,http://www.ipkitten.blogspot.com/2003_10 01_ipkittenarchive.html (Oct. 23, 2003, 17:37EST).

34 Bainbridge, supra note 21, at 223 ("It is vitally important for undertakings to be able todetermine with a high degree of predictability what they can and cannot do. The success andeffectiveness of marketing effort depends on this.").

35 It follows that precise definition of marks informs competitors and trademark owners ofpossible infringement, mitigating and possibly preempting consumer confusion. See In re Int'lFlavors & Fragrances, 183 F.3d 1361 (Fed. Cir. 1999).

36 European Union trademark law is an exciting and developing area of law. In the past fiveyears, the European Union has been developing its trademark law and addressing manyfundamental issues for the first time, such as the registrability of nontraditional, descriptive, andgeographical marks, as well as slogans and retail services. See Pen Hosford, Trade Marks inEurope-A Clearer Horizon?, MANAGING INTELL. PROP., Oct. 2003, at 27.

37 The E.C.J. is the highest court in the European Union. It was established in 1952 pursuantto the Treaty of Paris. The E.C.J. is made up of twenty-five judges, one judge from each MemberState. The E.C.J. ensures that European Union legislation is applied and interpreted uniformlythroughout the Member States. See Europa, European Union Institutions and Other Bodies: TheCourt of Justice, http://europa.eu.int/institutions/court/index en.htm (last visited Sept. 5, 2005).

38 Recently, the Court discussed the registrability of nontraditional marks, specifically

sounds, colors, and scents. See, e.g., Case C-447/02 P, KWS Saat AG v. OHIM, 2004 WL 59751(Oct. 21, 2004); Case C-283/01, Shield Mark BV v. Joost Kist H.O.D.N., 2004 E.T.M.R. 33;Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37.

39 The Court has noted that "[t]he registration system for trade marks constitutes an essentialelement of their protection, which contributes ... to legal certainty and sound administration."Sieckmann, 2003 E.T.M.R. 33, 37. The E.C.J. in Sieckmann outlined many of the policies thegraphic representation requirement seeks to achieve, such as precise identification of the subjectmatter, accessibility to the public and authorities, and precise and complete information to otherbusinesses in the marketplace. See id. 48-52.

40 Legal certainty is the most important criteria sought in trademark registries, according to a

CARDOZO LA W REVIEW

policies the United States hopes to promote through its registrationprocess.4' While the procedures adopted by the European Union do notcompletely resolve the problems inherent in nontraditional trademarkregistration, they represent positive advances for the European Unionand, if adopted in the United States, would greatly benefit United Statestrademark law. 42

This Note argues that the United States would benefit fromincorporating many of the steps taken by the European Union toguarantee that registration of nontraditional trademarks proceeds withspecificity and provides certainty. This Note further argues that byefficiently utilizing some of its current registration procedures to theirfullest potential, the United States would provide trademark owners andcompetitors with the specificity and definiteness necessary to create,protect, and guarantee rights in nontraditional marks.

Part I of this Note introduces European Union trademark law andits registration procedures. Part II delineates United States trademarklaw and its trademark registration practices. Part II also highlightsdeficiencies in United States nontraditional trademark registration inlight of the policies underlying the Lanham Act. Part III discusses theEuropean Union and United States' treatment of nontraditionaltrademarks, detailing their respective registration procedures for color,sound, and scent marks. Part III also suggests possible changes to theUnited States' treatment of nontraditional marks, which would bettereffectuate the goals of trademark law.

I. TRADEMARK LAW IN THE EUROPEAN UNION

Two initiatives combine to create European Union trademarklaw43-the First Council Directive (Directive) and the CommunityTrade Mark Regulation (Regulation).44 The Directive requires

survey conducted by Managing Intellectual Property. The Truth About Trade Marks, MANAGINGINTELL. PROP., May 2004, at 32. Nearly eighty percent of in-house counsel surveyed stated thatlegal certainty was a very important aspect of the registration process. Id. Other importantfactors included accuracy of examination procedures and availability of extensive searches. Id.

41 See infra Part II and notes 72-81 and accompanying text.42 See infra Part III.

43 The European Union was established to create a uniform internal market among itsMember States. It sought to promote social and economic harmony through the free andunhinged movement of goods, services, and capital. See TREATY ESTABLISHING THE EUROPEANCOMMUNITY art. 3(c) and pmbl., Nov. 10, 1997, O.J. (C 340) 3 (1997); see, e.g., First CouncilDirective 89/104/EEC of 21 Dec. 1988 to Approximate to the Laws of the Member StatesRelating to Trade Marks, recitation 9, 1989 O.J. (L 40/1) [hereinafter Directive]. However, thetrademark laws of its Member States contained disparities, which impeded, rather than furthered,economic cohesion. See id. recitation 1; Council Regulation (EC) No 40/94 of 20 Dec. 1993 onthe Community Trade Mark, 1994 O.J. (L 11/1) [hereinafter Regulation].

44 See supra note 43. The European Union adopted the Regulation and Directive in an

[Vol. 27:1464


European Union Member States45 to adapt or "harmonize" theirrespective trademark laws to comply with the Directive's provisions.46

The Directive defines what may be registered as a trademark,47 thegrounds for refusing or invalidating a trademark, 48 and the rights

attempt to harmonize E.U. trademark law and remove internal barriers restricting free trade andcompetition. See Luis-Alfonso Duran, The New European Trademark Law, 23 DENV. J. INT'L L.& POL'Y 489, 499 (1995). The Directive states "it is fundamental, in order to facilitate the freecirculation of goods and services, to ensure that henceforth registered trade marks enjoy the sameprotection under the legal systems of all the Member States." Directive, supra note 43, recitation9; see also Regulation, supra note 43, pmbl., recitation 1. The Regulation sought to create

a harmonious development of economic activities and a continuous and balancedexpansion by completing an internal market which functions properly and offersconditions which are similar to those obtaining in a national market ... [T]o create amarket of this kind ... barriers to [the] free movement of goods and services [must] beremoved and arrangements [must] be instituted which ensure that competition is notdistorted ....

Id. Professor J. Thomas McCarthy in an interview extolled the virtues of the European Union,suggesting that the Community Trademark "'is a necessary step in the globalization of trade."'Justin A. Horwitz, Conflicting Marks: Embracing the Consequences of the European Communityand Its Unitary Trademark Regime, 18 ARIZ. J. INT'L & CoMP. LAW 245, 261 (2001) (citingtelephone interview with Professor J. Thomas McCarthy, Professor of Law, University of SanFrancisco School of Law (Feb. 18, 2000)). Professor McCarthy further noted:

With the world having hundreds of nations, and each nation having its own set of laws,the obstacles to successful international trade are numerous. It becomes very difficultfor a company to stay up to date on the different laws and to keep their marks in goodstanding. Moreover, variables in each nation's laws make it more difficult forindividuals to buy and sell. In the long march of history, we will see the developmentof intellectual property laws at the global level .... In light of these facts, it becomesapparent that the Community Trademark system is absolutely necessary for Europe.

Id.45 Twenty-five member countries or states make up the European Union: Austria, Belgium,

Cyprus, Czech Republic, Denmark, Estonia, Germany, Greece, Finland, France, Hungary,Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Slovakia, Slovenia, Spain,Sweden, The Netherlands, and the United Kingdom. See Europa, European Union at a Glance,http://www.europa.eu.intlabc/indexen.htm# (last visited Sept. 5, 2005).

46 The Directive was not designed to create a uniform trademark system, but rather to

synthesize the laws of its Member States. See Directive, supra note 43, recitations 1, 3; Horwitz,supra note 44, at 262-63; Duran, supra note 44, at 490. The Directive states:

[I]t does not appear to be necessary at present to undertake full-scale approximation ofthe trade mark laws of the Member States and it will be sufficient if approximation islimited to those national provisions of law which most directly affect the functioning ofthe internal market ....

Directive, supra note 43, recitation 3. The Directive grants Member States authority to legislateon matters not expressly mentioned in the Directive, such as procedures concerning registration,revocation, invalidity, and priority. Id. recitation 5.

47 A trademark may beany sign capable of being represented graphically, particularly words, includingpersonal names, designs, letters, numerals, the shape of goods or of their packaging,provided that such signs are capable of distinguishing the goods or services of oneundertaking from those of other undertakings.

Directive, supra note 43, art. 2; Regulation, supra note 43, art. 4.48 Such grounds include: "signs which cannot constitute a trade mark," non-distinctive marks,

descriptive marks, marks designating geographic origin, generic marks, marks contrary to publicpolicy, and deceptive marks. Directive, supra note 43, art. 3.

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conferred by a trademark.49 The Regulation instituted a unitarytrademark system in which a single registration of a Community TradeMark 50 grants exclusive protection and rights to the trademark holder inall European Union countries simultaneously. 51

Theoretically, in the European Union, any mark, including a sound,scent, or color mark, is registrable, as long as it is capable of graphicrepresentation and distinguishes the goods or services of oneundertaking from the goods or services of another.5 2 While theEuropean Union treads cautiously as to whether nontraditional marksshould be registrable, its decisions open the door to the possibility ofsuch registration, and its registration requirements fashion a body oftrademark law that furthers policies the United States seeks topromote. 53

Graphic representation is not merely a technical requirement forregistration in the European Union; it embodies the "principle ofprecision. ' '54 Vitally important in nontraditional trademark registration,graphic representation ensures that the scope and nature of the mark areclearly defined and comprehensible so that searchers checking theregistry can readily ascertain what is registered.55

49 The Directive also limits the rights and use of a trademark, such as cancellation for lack ofuse, licensing, abandonment, and exhaustion of trademark rights. Directive, supra note 43;Duran, supra note 44, at 490. For a detailed analysis of the Directive's provisions, see Horwitz,supra note 44, at 262-67.

50 To avoid confusion, this Note will use the term "trademark" as used in the United States,

rather than "trade mark," which is the European Union's preferred term.51 See, e.g., Vincent O'Reilly, The Community Trademark System: A Brief Introduction and

Overview, 8 MARQ. INTELL. PROP. L. REv. 93, 93 (2004). While the unitary system simplifiestrademark registration, enabling a mark holder to maintain the mark throughout the EuropeanUnion through use in a single country, the unitary system can also be an obstacle to the system'sobjectives because a registration in one region will affect the registrant's ability to obtain orregister trademarks in the entire European Union. See SWEET & MAXWELL'S EUROPEAN TRADEMARK LITIGATION HANDBOOK 34-35 (Isabel M. Davies ed., 1998) [hereinafter SWEET &MAXWELL'S].

In order to register for a Community Trade Mark, an application must be filed either at theOffice for Harmonization in the Internal Market (OHIM) or at the Patent or Trade Mark Office ofa Member State. O'Reilly, supra, at 93. The application must contain (a) a request forregistration of the trademark, (b) identification of the applicant, (c) a list of goods or services tobe registered, and (d) a representation of the mark. See Regulation, supra note 43, art. 26. OHIMexamines trademark applications for compliance with registration requirements, publishes marksfor registration, examines opposition to registration, registers valid marks, and determineswhether registration should be revoked. Regulation, supra note 43, arts. 36-38, 40, 43, 45, 55.

52 See supra note 47; Case C-283/01, Shield Mark BV v. Joost Kist H.O.D.N., 2004 E.T.M.R.33, 34-41.

53 See supra note 40. While the United States has recognized the benefits registration bringsto the marketplace, see In re Int'l Flavors & Fragrances, 183 F.3d 1361, 1367 (Fed. Cir. 1999), itscurrent procedures, while competent in their treatment of traditional marks, create moreambiguities in trademark law than they fix with regard to nontraditional marks.

54 Case C-49/02, Heidelberger Bauchemie GmbH, 2004 E.T.M.R. 99, 13.55 Sieko Hidaka et al., A Sign of the Times? A Review of Key Trade Mark Decisions of the

European Court of Justice and Their Impact Upon National Trade Mark Jurisprudence in the


The E.C.J. requires graphic representation by "means of images,lines or characters, so that [the mark] can be precisely identified. '56 Therepresentation must be "clear, precise, self-contained, easily accessible,intelligible, durable and objective.157 According to the E.C.J., thegraphic representation requirement enables precise definition of themark so that the trademark holder, consumers, and competitors canascertain the scope of trademark protection. 58 Graphic representationalso assists authorities in properly examining, publishing, andeventually protecting the mark from unfair use by competitors. 59

Further, the E.C.J. stipulates that the representation must bedurable so that the marketplace perceives the mark in a uniform andsystematic manner, guaranteeing that the mark remains an invariableindication of source. 60 Lastly, the E.C.J. requires that a graphicrepresentation must be unambiguous and objective, ensuring thatregistration, protection, and enforcement of trademark rights ishomogeneous.

61

The European Union's second requirement for trademarkprotection, the distinctiveness requirement, 62 ensures that a trademark

EU, 94 TRADEMARK REP. 1105, 1124 (2004) ("The policy behind this decision was to enablepeople checking the trade marks register to be clear about what is registered given the papernature of the registry."); see also Abida Chaudri, Graphically Speaking: Registering Smell,Colour and Sound Marks in the UK and Europe, 157 TRADEMARK WORLD 26, 26 (May 2003)("[Graphic representation] ensure[s] that infringement rights can be determined and third partiescan understand, from the graphical representation, the nature of the mark.").

56 Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37, T 46. The trademarkitself must be depicted; a description is insufficient. SWEET & MAXWELL'S, supra note 51, at 35.This contradicts the United States' system, which does not require a graphic representation, butrather a succinct description, for smell and sound marks. TRADEMARK MANUAL OF EXAMININGPROCEDURE § 807.09 (4th ed. 2005) [hereinafter T.M.E.P.].

57 Shield Mark, 2004 E.T.M.R. 33, T 55. The graphic representation must be self-contained,easily accessible, and intelligible so that users of the registry can determine the precise nature ofthe mark. Id. 52. The E.C.J. has commented that such interpretation is not only essential to"the sound operation of the trade mark registration system," but it also furthers the functions andpolicies of trademark law. Id. T 47.

58 Sieckmann, 2003 E.T.M.R. 37, 91 48-49, 51. Ascertaining the scope of protection isimportant to each of these groups for different reasons. Trademark holders must be able todetermine whether a new mark will infringe its rights, a competitor needs to know what it can orcannot do without triggering an infringement action, and consumers need to know how far theycan extend their reliance on the source.

59 Id. 1 49-5060 The E.C.J. stressed the importance that a mark must "always be perceived unambiguously

and in the same way so that the mark is guaranteed as an indication of origin." Id. 53. Becauseregistration is renewable, this requirement further guarantees that the mark will be perceiveduniformly throughout its entire period of registration, bringing legal certainty and predictability tothe registration process. Id.

61 Id 54 (noting the representation must be unequivocal and objective "to avoid anyelement of subjectivity in the process of identifying and perceiving the sign").

62 The Directive's distinctiveness requirement appears to be two-fold. The mark, to function

as a trademark, must be capable of distinguishing goods and must have distinctive character.Directive, supra note 43, arts. 2, 3(1)(b)-(d); Hidaka, supra note 55, at 1106.


designates source and enables consumers to distinguish one producer'sgoods from another's without confusion. 63 Distinctiveness can beinherent, in which case consumers immediately recognize the mark asdistinguishing goods, or it can be acquired through consumerrecognition, i.e., secondary meaning.64 European Union trademark lawacknowledges that while consumers often recognize traditional markssuch as words and logos as readily indicating source, this may not bethe case with colors, sounds, and scents.65 As such, nontraditionaltrademarks are unlikely to be regarded as inherently distinctive andgenerally will need substantial acquired distinctiveness, i.e., consumerrecognition, for registration. 66

63 Hidaka, supra note 55, at 1106, 1116. The distinctiveness requirement serves the primary

function of a trademark, which is "'to guarantee the identity of the origin of the trade-markedproduct to the consumer or ultimate user, by enabling him without any possibility of confusion todistinguish that product from products which have another origin."' Id. (internal citationomitted).

64 Directive, supra note 43, arts. 3(1)(b), 3(3); Hidaka, supra note 55, at 1117.

Distinctiveness is inherent when the mark is entirely unique or coined or when there is nosemantic connection between the mark and the product or service. Id. Acquired distinctivenessor secondary meaning requires that the public has come to identify the product or service usingthe mark as coming from a particular source. Id. The consumer recognition must be substantial."[T]his means the sign ha[s] gained a new significance from the perspective of at least asignificant proportion of the relevant class of people.. . [and] the mark ... [has] 'become part ofeveryday language and has acquired its own meaning ... ' Id. (quoting Joined Cases C-108/97and C-109/97, Windsurfing Chiemsee Produktions und Vertriebs GmbH v. Boots undSegelzubehor Walter Huber, 1999 E.C.R. 1-2779).

65 See, e.g., Case C-104/01, Libertel Groep BV v. Benelux-Merkenbureau, 2003 E.T.M.R. 63,40-4 1. The E.C.J. noted:

[W]hilst colours are capable of conveying certain associations of ideas, and of arousingfeelings, they possess little inherent capacity for communicating specific information,especially since they are commonly and widely used, because of their appeal, in orderto advertise and market goods or services, without any specific message....[However], [t]he possibility that a colour per se may in some circumstances serve as abadge of origin of the goods or services of an undertaking cannot be ruled out. It musttherefore be accepted that colours per se may be capable of distinguishing the goods orservices of one undertaking from those of other undertakings ....

Id; see, e.g., Hidaka, supra note 55, at 1121; Sound and Smell Trade Mark Registrations: Sound,or a Bit Fishy?, 25 Bus. L. REV. 190, 191 (2004) [hereinafter Sound, or a Bit Fishy] ("Smell andsound marks may face particular obstacles ... since they are, invariably, used alongside othermarks, such as words and logos, and it may be difficult to demonstrate that customers recognisethe sound or smell as indicating origin."); see also Case C-136/02, Mag Instrument Inc. v. OHIM,2005 E.T.M.R. 46, 30:

Average consumers are not in the habit of making assumptions about the origin ofproducts on the basis of their shape or the shape of their packaging in the absence ofany graphic or word element and it could therefore prove more difficult to establishdistinctiveness in relation to such a three-dimensional mark than in relation to a wordor figurative mark.

66 Hidaka, supra note 55, at 1121 (noting that "[i]t is, therefore, generally accepted that non-

standard marks will rarely be considered inherently distinctive" since "such signs require largeramounts of use to render them distinctive"); see, e.g., Case C-49/02, Heidelberger BauchemieGmbH, 2004 E.T.M.R. 99, 39 ("Save in exceptional cases, colours do not initially have adistinctive character, but may be capable of acquiring such character as the result of the use madeof them in relation to the goods or services claimed.").


These requirements arguably restrict the registration ofnontraditional marks such as sounds, scents, and colors in the EuropeanUnion.67 However, as noted, sounds and scents are not visuallyperceptible, making clear and precise definition of sound and scentmarks difficult to achieve. 68 Further, consumers may not recognizesounds, scents, or colors as indicating source. 69 As such, these strictrequirements actually promote the underlying policies of trademark law.

II. TRADEMARK LAW IN THE UNITED STATES

In the United States, the Lanham Act codifies United Statestrademark law.70 It grants national protection for trademarks, securingfor a trademark's owner the profits of his good reputation, encouragingthe production of high-quality goods and services, and reducingcustomers' search costs. 71

Federal registration does not establish trademark rights;72 rather,

67 Bainbridge, supra note 21, at 243-44; Sound, or a Bit Fishy, supra note 65, at 190.68 See supra notes 21-23 and accompanying text.69 See, e.g., Bainbridge, supra note 21, at 222 (noting that consumers are more likely to

recognize traditional word and design marks as source identifiers because they may be unawarethat nontraditional marks operate as trademarks).

70 15 U.S.C. §§ 1051-1127 (2000). The Lanham Act places all United States trademark lawin a single statute. Its purpose is "to eliminate judicial obscurity, to simplify registration and tomake it stronger and more liberal, to dispense with mere technical prohibitions and arbitraryprovisions, to make procedure simple, and relief against infringement prompt and effective." S.REP. No. 79-1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274, 1274.

In the United States, there is a dual system of trademark law. Trademark rights can begranted at the state and federal levels. Federal registration under the Lanham Act providesnational protection, whereas state registration provides rights and protection only within thegeographic territory of the state. See Anne Hiaring, Basic Principles of Trademark Law, inUNDERSTANDING BASIC TRADEMARK LAW 2004, at 11-12 (PLI Patent, Copyrights, Trademarks,& Literary Prop. Course Handbook Series, 2004). For a detailed explanation of trademark law inthe United States at the state level, see MCCARTHY, supra note 8, §§ 22:1-22:11.

71 See Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985) (discussing howincontestability provisions further the purposes of trademark law); S. REP. No. 79-1333, reprintedin 1946 U.S.C.C.A.N. 1274, 1274-75. Trademarks require national protection because:

Trade-marks, indeed, are the essence of competition, because they make possible achoice between competing articles by enabling the buyer to distinguish one from theother. Trade-marks encourage the maintenance of quality by securing to the producerthe benefit of the good reputation which excellence creates. To protect trade-marks,therefore, is to protect the public from deceit, to foster fair competition, and to secureto the business community the advantages of reputation and good will by preventingtheir diversion from those who have created them to those who have not.

Id. at 1275.72 See, e.g., In re Int'l Flavors & Fragrances, 183 F.3d 1361, 1366 (Fed. Cir. 1999) (noting

"federal registration of a trademark does not create an exclusive property right in the mark. Theowner of the mark already has the property right established by prior use."). Lanham Act § 43(a),15 U.S.C. § 1125 (2000), provides protection for unregistered trademarks. The provision states:

(a) Civil action(1) Any person who, on or in connection with any goods or services, or any container

470 CARDOZO LAW REVIEW [Vol. 27:1

actual or constructive use of the mark in commerce triggers federalprotection.73 Registration, however, grants national trademarkprotection,74 provides many statutory benefits75 to the trademarkholder,76 and plays an important role in implementing the Lanham Act'sobjectives. 77 It not only protects the registrant's interests by providing

for goods, uses in commerce any word, term, name, symbol, or device, or anycombination thereof, or any false designation of origin, false or misleading descriptionof fact, or false or misleading representation of fact, which-

(A) is likely to cause confusion, or to cause mistake, or to deceive as to theaffiliation, connection, or association of such person with another person, or as tothe origin, sponsorship, or approval of his or her goods, services, or commercialactivities by another person, or(B) in commercial advertising or promotion, misrepresents the nature,characteristics, qualities, or geographic origin of his or her or another person'sgoods, services, or commercial activities,shall be liable in a civil action by any person who believes that he or she is or islikely to be damaged by such act.

Id.73 Lanham Act § 1, 15 U.S.C. § 1051 (2000). The use requirement guarantees that trademark

law falls within Congress's commerce power, see, e.g., Trade-Mark Cases, 100 U.S. 82 (1879),and determines who owns trademark rights in a given mark. GRAEME B. DfNWOODIE & MARKD. JANIS, TRADEMARKS AND UNFAIR COMPETITION: LAW AND POLICY 225 (2004).

74 Federal registration gives nationwide priority and protection to registered trademarks, as

opposed to common law protection limited to the geographical area of use. See Lanham Act §7(c), 15 U.S.C. § 1057(c) (2000); Allard Enters. v. Advanced Programming Res., Inc., 249 F.3d564 (6th Cir. 2001) (finding junior user of registered trademark had national protection except inthe senior non-registered user's limited geographic area); Weiner King, Inc. v. Wiener KingCorp., 615 F.2d 512 (C.C.P.A. 1980) (limiting senior user's rights to small geographical area attime ofjunior user's federal registration).

75 Registration protects against possible confusion in the marketplace. See Lanham Act §45(a), 15 U.S.C. § 1127(a) (2000). Registration grants the trademark holder standing to sueinfringers in the federal courts, see Lanham Act § 39, 15 U.S.C. § 1121 (1998), provides primafacie evidence of the registered mark's validity, see Lanham Act § 7(b), 15 U.S.C. § 1057(b)(2000), establishes incontestability of the right to use the mark, see Lanham Act § 15, 15 U.S.C. §1065 (2000), and provides constructive notice of ownership, see Lanham Act § 22, 15 U.S.C. §1072 (1946). For an excellent overview of the registration process, requirements, and benefits,see Hiaring, supra note 70.

76 See, e.g., In re Int'l Flavors, 183 F.3d at 1367 ("'[T]he benefits of prior registration underthe Lanham Act are justified in light of the order such registration brings to the market place."'(quoting Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3d Cir. 1984));James E. Carlson, Phantom Trademarks: Good Law or Chain Rattling? The Negative Effects ofStrict Interpretation of the Landham [sic] Act in the International Flavors and FragrancesDecision, 8 J. INTELL. PROP. L. 53, 58 (2000) ("While registration of a mark affords a variety ofbenefits and protections to the owner, it also provide a service to entrepreneurs and existingbusinesses who may wish to register their own marks, by allowing them to rely on a search of therecords of the Trademark Office .... ).

77 Two purposes underlie the Lanham Act:One is to protect the public so it may be confident that, in purchasing a product bearinga particular trade-mark which it favorably knows, it will get the product which it asksfor and wants to get. Secondly, where the owner of a trade-mark has spent energy,time, and money in presenting to the public the product, he is protected in hisinvestment from its misappropriation by pirates and cheats.

S. REP. NO. 79-1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274, 1274.


constructive notice of trademark rights, 78 but also promotes the purposesof trademark law by providing notice to prospective users of potentiallyinfringing marks.79 Further, federal registration benefits entrepreneursor new entrants in the marketplace 80 as well as the public. 8'

In the United States, color, sound, and scent marks may beregistered if they are used in commerce,82 indicative of source, and

78 "Registration serves as constructive notice to the public of the registrant's ownership of the

mark, see 15 U.S.C. § 1072 (1946), and thus prevents another user of the mark from claiminginnocent misappropriation as a trademark infringement defense." In re Int'l Flavors, 183 F.3d at1367.

79 Id. In passing the Lanham Act, Congress sought to encourage the presence of as manytrademarks as possible on the register so that they would be available for search purposes. Id.(quoting Bongrain Int'l Corp. v. Delice de France, Inc., 811 F.2d 1479, 1485 (Fed. Cir. 1987)).

80 See id. (quoting Natural Footwear, 760 F.2d at 1395):Entrepreneurs, for example, who plan to promote and to sell a new product under afanciful mark, should be able to rely on a search of the trademark registry and theirown knowledge of whether the mark has been used so that what may be substantialexpenditures of money promoting the mark will not be wasted.

See also Carlson, supra note 76, at 65 ("[E]ach mark must be registered to allow subsequententrepreneurs to easily search the system for marks already registered and thus ensure continuedmarket stability through protecting goodwill associated with particular marks, avoidingconfusion, and protecting the benefits that owners enjoy from federal registration.").

81 In re Int'7 Flavors, 183 F.3d at 1368 ("Federal registration provides a useful means for the

public to provide enhanced legal protections to a common law property fight in exchange forprotection of the public against palming off and misrepresentation in the market place."); Carlson,supra note 76, at 58 ("This public benefit extends to all consumers of established products, as itallows these consumers to rely on the marks as a symbol of the quality they expect from certainproducers, prevents confusion among competing products, and prevents other producers frompassing off inferior products .... ").

82 Lanham Act § 1, 15 U.S.C. § 1051(a)(1) (2002) ("The owner of a trademark used incommerce may request registration of its trademark .. "). Lanham Act § 45, 15 U.S.C. 1127(2000), defines "'use in commerce"' as:

[T]he bona fide use of a mark in the ordinary course of trade, and not made merely toreserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be inuse in commerce-(1) on goods when-

(A) it is placed in any manner on the goods or their containers or the displaysassociated therewith or on the tags or labels affixed thereto, or if the nature of thegoods makes such placement impracticable, then on documents associated withthe goods or their sale, and(B) the goods are sold or transported in commerce, and(2) on services when it is used or displayed in the sale or advertising of servicesand the services are rendered in commerce, or the services are rendered in morethan one State or in the United States and a foreign country and the personrendering the services is engaged in commerce in connection with the services.

Congress passed the Lanham Act under its Commerce Clause powers; as such, the Lanham Actonly protects trademarks that are used in commerce. See, e.g., Trade-Mark Cases, 100 U.S. 82(1879). However, courts interpret the "use in commerce" requirement very liberally, andintrastate use that directly affects a type of commerce that Congress may regulate satisfies therequirement. See, e.g., Wickard v. Filbum, 317 U.S. 111 (1942) (finding farmer's production ofwheat for personal consumption fell within Congress' Commerce power); Larry Harmon PicturesCorp. v. Williams Rest. Corp., 929 F.2d 662 (Fed. Cir. 1991) (finding trademark of restaurant,which did less than 15% of its business with interstate travelers, to be used in interstatecommerce); Midge M. Hyman & Sandra Covington, Important Trademark Use Issues and the

472 CARDOZO LAW REVIEW [Vol. 27:1

distinctive.8 3 As in the European Union, a trademark's distinctivenessmay be either inherent or acquired (registrable after a showing ofsecondary meaning). 84 In the United States, however, sound and scentnontraditional trademarks may be inherently distinctive, while colormarks require a showing of secondary meaning for registration. 85

In addition to these substantive requirements, a drawing of themark and a specimen must accompany the application for registration.86

The drawing and the specimen must accurately depict the mark, as usedin commerce, so the mark can be easily located and identified upon asearch of the trademark registry. 87 By providing proper notice,registration "maintains the market stability effected by certainty ofregistry and ownership of existing trademarks. '88

The drawing requirement provides notice of the nature of the markand must detail what the applicant seeks to register.89 Traditional

Risk of Fraud on the Trademark Office, in ADVANCED SEMINAR ON TRADEMARK LAW 2004, at252 (PLI Patent, Copyrights, Trademarks, & Literary Prop. Course Handbook Series, 2004)(citing examples).

83 It is not the subject matter of the mark, but its source-identifying status, that largely enablesthese colors, sounds, and scents to be registered as trademarks. Qualitex Co. v. Jacobson Prods.Co. 514 U.S. 159, 164 (1995) (citing William Landes & Richard Posner, Trademark Law: AnEconomic Perspective, 30 J. LAW & ECON. 265, 290 (1987)); see also In re Gen. Elec. Broad.Co., 199 U.S.P.Q. 560, 562 (T.T.A.B. 1978) ("[T]he nature of a mark is no basis for refusing toregister it either as a service mark or as a trademark if it performs as an indication ofsource .... ).

84 See supra notes 62-66 and accompanying text. In the United States, distinctiveness refers

not only to the ability to distinguish one's goods, but also to the particular commercial andconceptual strength of the mark. See, e.g., Brennan's, Inc. v. Brennan's Rest., 360 F.3d 125, 128(2d Cir. 2004); Checkpoint Sys. v. Check Point Software Techs., 269 F.3d 270 (3d Cir. 2001).For example, while "Apple" is a strong source identifier for computers, with a large amount ofconsumer recognition and commercial strength, it is also an arbitrary mark, which is inherentlydistinctive and entitled to great protection. See, e.g., Abercrombie & Fitch Co. v. Hunting World,Inc., 537 F.2d 4 (2d Cir. 1976) (outlining the "Abercrombie Spectrum," in which arbitrary,fanciful and suggestive marks are inherently distinctive, descriptive marks may be protected upona showing of acquired distinctiveness, and generic marks never can be protected).

85 See Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000) (noting color marks require a

finding of secondary meaning or acquired distinctiveness because color is never inherentlydistinctive); In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) (accepting applicant's argumentthat fragrance applied to yam may be registered if it is inherently distinctive or has secondarymeaning); In re Gen. Elec., 199 U.S.P.Q. at 563 (stating that a sound may be "unique, different,or distinctive," i.e. inherently distinctive, or commonplace, requiring secondary meaning forregistration).

86 See Lanham Act § l(a)()-(2), 15 U.S.C. § 1051 (2002); 37 C.F.R. §§ 2.51, 2.56 (2003);

T.M.E.P., supra note 56, §§ 807, 904, 1604.12.87 In re Int'l Flavors & Fragrances, 183 F.3d 1361, 1368 (Fed. Cir. 1999) (unambiguous

registration needed to make constructive notice meaningful).88 Carlson, supra note 76, at 63; see In re Int'l Flavors, 183 F.3d at 1367.89 37 C.F.R. §§ 2.51, 2.52 (2003); T.M.E.P., supra note 56, §§ 807, 1202.05(d). The drawing

should depict the mark the applicant seeks to register. 37 C.F.R. §§ 2.51, 2.52; T.M.E.P., supranote 56, § 807; see also U.S.P.T.O. Trademark FAQ, What is the Drawing?,http://www.uspto.gov/web/offices/tac/tmfaq.htm#Application006 (last visited Sept. 5, 2005).The drawing must illustrate the mark as used in commerce, and must only depict one mark. See37 C.F.R. § 2.52. The U.S.P.T.O. publishes the drawing as a depiction of the mark in the Official


trademark applications require submission of a black and white standardcharacter or typed drawing,90 whereas an application to register a colorrequires a color drawing supplemented by a detailed description of themark.91

Registration of sound, scent, and other non-visual marks do notrequire a drawing; rather, the applicant must submit a detaileddescription explaining the mark.92 The description of a nontraditionaltrademark assists trademark examiners in determining what theapplicant seeks to register, because visual inspection of the mark oftenfails to provide certainty.93 The description also provides notice tosearchers of the registry of features of the trademark not readilyapparent from the drawing alone. 94 The U.S.P.T.O. publishes thedrawings and descriptions in the Official Gazette, making themavailable to searchers of the trademark registry.95

The specimen shows in a precise manner the mark's use incommerce and the public's perception the mark.96 The specimen is a

Gazette. T.M.E.P., supra note 56, § 807; see infra note 95.90 See 37 C.F.R. § 2.52(a) (2003); 1 JAMES E. HAWES & AMANDA V. DWIGHT, TRADEMARK

REGISTRATION PRACTICE § 3:31 (2004).91 37 C.F.R § 2.52(b)(1) (2003) ("If the mark includes color, the drawing must show the mark

in color, and the applicant must name the color(s), describe where the color(s) appear on themark, and submit a claim that the color(s) is a feature of the mark."); HAWES & DWIGHT, supranote 90, § 3.20 ("An acceptable color description would be: The colors(s) (specify color) appearin (specify areas of mark on which color(s) appear). If the color(s) claim is inconsistent with thecolor(s) in the drawing, the color(s) shown in the drawing will control.").

92 37 C.F.R. § 2.52(e) (2003); T.M.E.P., supra note 56, §§ 807.09, 1202.13, 1202.15. TheT.M.E.P. directs that the description should accurately and precisely explain what the markcomprises and should not create a misleading impression of the mark. T.M.E.P., supra note 56, §808.02. The T.M.E.P comments "[a] mark's meaning is based on the impression actually createdby the mark in the minds of consumers, not on the impression that the applicant states the mark isintended to convey." Id.

93 See HAWES & DWIGHT, supra note 90, § 3.20 ("The primary purpose of the description isto assist the PTO in properly filing and referencing the mark in its records.... Descriptions areparticularly helpful when it is difficult to determine from an inspection of the mark just whatletters or numbers are included within it.").

94 See JAMES HAWES & AMANDA DWIGHT, PRACTITIONER'S TRADEMARK MANUAL OFEXAMINING PROCEDURE § 808.01 (2004). Hawes and Dwight note that

one of the most important reasons to include a description of the mark in theapplication is for notice purposes. Often a computer database generated search reportof a mark will not include a pictorial display of the mark [or there will not be adrawing] but rather will only include a description of the mark. [A description isdesirable] [t]o make sure that others are aware of the nature and salient features of amark ....

Id95 The Official Gazette is the official journal of the U.S.P.T.O. It is published weekly and

contains illustrations of trademarks published for opposition, a list of registered trademarks, anindex of registrants, and a list of cancelled and renewed registrations.

96 Specimens are required as proof of actual use in commerce and illustrate how the mark isused in connection with the goods or services. See T.M.E.P., supra note 56, § 904; ARDEN, supranote 10, at 31; Deborah L. Benson & Amy B. Spagnole, Trademark Registration § 6.1.3(a), inINTELLECTUAL PROPERTY PRACTICE, IPPRAC MA-CLE 6-1 (Mass. Continuing Legal Educ.,


duplicate or sample of the mark as viewed in connection with the goods,such as a label, tag, container, display, or photograph. 97 As an integralpart of the examination process, trademark examiners inspect thespecimen to ascertain whether the mark functions as a trademark,whether competing companies are using the same mark, and whetherthe mark can be accurately represented in a drawing.98

The drawing and description requirements for nontraditional marksdo not facilitate a precise impression of the mark or clearly delineatewhat in fact the applicant seeks to register.99 The description generatessubjective, individualized impressions, 00 and the drawing, which is notrequired for sound marks, not feasible for scent marks, and applicableonly to color marks, fails its purpose because the Official Gazette is notpublished in color. 01 The specimen appears to resolve the ambiguitiescreated by the drawing and description requirements. However, onlythe drawing and the description inform consumers and competitors ofwhat constitutes the mark because the specimen is neither published inthe register, nor available on the Trademark Electronic Search Systemwebsite (TESS). 10 2 It is available for examination only at theU.S.P.T.O. office in Washington D.C. 0 3 As a result, registration of

Inc. 2004); see also U.S.P.T.O. Trademark FAQ, What is a Specimen?,http://www.uspto.gov/web/offices/tac/tmfaq.htm#Application006 (last visited Sept. 5, 2005) ("Aspecimen is a real-world example of how the mark is actually used on the goods or in the offer ofservices.").

97 37 C.F.R. §§ 2.56(b)(1), 2.56(c) (2003); T.M.E.P., supra note 56, § 904.04; HAWES &DWIGHT, supra note 90, § 3.26. Advertising materials, informational charts, marketing materials,internal business materials, and bags or other packaging material not directly associated with theproduct are not acceptable specimens. Id. However, for the registration of a nontraditionalservice mark, a trademark used to distinguish services, evidence of advertising may constitute anappropriate specimen because there is "no physical commodity on which the mark is placed whenrendering the service, for service marks customarily are used in other ways than by attachment tosome physical article." Id. For detailed information on materials acceptable as specimens, seeT.M.E.P., supra note 56, §§ 904.04 - 904.08.

98 HAWES & DWIGHT, supra note 90, § 3.26. The specimen is also examined to determine

"whether or not the applicant is actually using the mark ... and the goods or services on or inconnection with which the mark is being used." Id.

99 See ARDEN, supra note 10, at 19:The drawing requirements for nontraditional marks... most often fail to provideflexible methods for pinpointing what, in fact, the applicant seeks to register. Althoughverbal descriptions may be used to supplement the drawing, current USPTO practiceoften creates a somewhat artificial and imprecise registration system for nontraditionalmarks.

100 See infra notes 135-36, 181-83, 204-06 and accompanying text.101 See infra Part III and notes 133, 141-45 and accompanying text.102 TESS is the U.S.P.T.O.'s online database for searching pending, registered, and cancelled

federal trademarks. See U.S.P.T.O. Glossary, http://www.uspto.gov/main/glossary/index.html#tess (last visited Sept. 5, 2005).

103 See HAWES & DWIGHT, supra note 90, § 3.26 ("[Tjhese specimens are maintained in thefile of the application and the resulting registration. They may be inspected by members of thepublic and even withdrawn by any member of the public for that person's use."). This isincredibly inconvenient for the small business owner who relies on a trademark search to protect


nontraditional marks in the United States is an ambiguous and ill-defined process that reduces trademark owners' security, blurs the linesof infringement, and largely fails in its attempt to create legalcertainty.

10 4

III. TREATMENT OF NONTRADITIONAL TRADEMARKS IN THEEUROPEAN UNION AND THE UNITED STATES

Neither United States nor European Union trademark lawexpressly recognizes colors, sounds, or scents as trademarks. Forexample, in the United States, "any word, name, symbol, or device, orany combination thereof' that identifies and distinguishes goods andservices can be a trademark. 0 5 Similarly, the definition of theCommunity Trade Mark omits colors and non-visual "signs" such assounds or scents, defining a trademark as any "sign" that is capable ofgraphic representation and that distinguishes goods and services. 0 6

However, in application, United States and European Union courtsinterpret both definitions with sufficient elasticity' 07 to allow

his investment and who must travel to Washington D.C. to examine the specimen.104 Registration of ambiguous or ill-defined marks "does not provide proper notice to other

trademark users, thus failing to help bring order to the marketplace and defeating one of the vitalpurposes of federal trademark registration." In re Int'l Flavors & Fragrances, 183 F.3d 1361,1368 (Fed. Cir. 1999). It makes it "impossible for the public to determine precisely what wascovered by the marks. This would give inadequate notice of unavailable trademarks to the public,when adequate notice is a primary objective of trademark registration .. " Carlson, supra note76, at 61 (discussing the T.T.A.B.'s reasoning behind denying registration of ambiguous or"phantom" marks).

105 Lanham Act § 45, 15 U.S.C. 1127 (2000). The Lanham Act defines a trademark asany word, name, symbol, or device, or any combination thereof-[which is] used by aperson, or which a person has a bona fide intention to use in commerce and applies toregister.., to identify and distinguish his or her goods, including a unique product,from those manufactured or sold by others and to indicate the source of the goods, evenif that source is unknown.

Id.106 European Union legislation defines a trademark as

any sign capable of being represented graphically, particularly words, includingpersonal names, designs, letters, numerals, the shape of goods or of their packaging,provided that such signs are capable of distinguishing the goods or services of oneundertaking from those of other undertakings.

Directive, supra note 43, art. 2; see also Regulation, supra note 43, art. 4.107 The E.C.J has noted that it "is clear from the language of both Art. 2 of the Directive and

the seventh recital in the preamble thereto, which refers to a 'list [of] examples' of signs whichmay constitute a trade mark, that list is not exhaustive." Case C-273/00, Sieckmann v. DeutschesPatent- und Markenamt, 2003 E.T.M.R. 37, 44 (alteration in original). The E.C.J. also notedthat the definition does not expressly exclude such marks. Id.

Similarly, United States courts broadly interpret the Lanham Act's definition of atrademark in recognition of the fact that a symbol or device could be "anything at all that iscapable of carrying meaning." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995);see Trademark Law Revision Act of 1988, reprinted in 1988 U.S.C.C.A.N. 5577, 5607 (stating


registration of nontraditional trademarks such as sounds, colors, andscents. 108

A. Color Marks

Both the European Union and the United States allow registrationof color marks;10 9 however, only the European Union's registrationrequirements guarantee specificity and uniformity in the perception ofsuch marks.

The E.C.J. first addressed the requirements for registration of acolor mark in Libertel Groep B V v. Benelux-Merkenbureau.I0 There,

broad definition of a trademark reflects "contemporary marketing practices" and, as such, colors,shapes, sounds, or configurations should be registered when they function as trademarks); In reParamount Pictures Corp., 213 U.S.P.Q. 1111, 1113 (T.T.A.B. 1982) (noting U.S. "trademark lawis very liberal-perhaps the most liberal in the world-as to what is registrable subject matter");In re Gen. Elec. Broad. Co., 199 U.S.P.Q. 560, 563 (T.T.A.B. 1978):

[F]lexibility... is required in order to keep up with the ever-changing ramificationsbrought about by the changing technology that accompanies the growth of a nation andcreates goods, services, and concepts unheard of in the past .... [As such], the Patentand Trademark Office has recognized that a mark need not be confined to a graphicform.

108 See, e.g., Qualitex, 514 U.S. 159 (green-gold color of dry cleaning press pads); In reClarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) (scent of plumeria blossoms for sewing andembroidery thread); In re Gen. Elec., 199 U.S.P.Q. 560 (sound of a ship's bell clock for radiobroadcasting services); Case C-49/02, Heidelberger Bauchemie GmbH, 2004 E.T.M.R. 99(recognizing colors blue and yellow may be a trademark if colors are represented in a systematicarrangement); Case C-283/01, Shield Mark BV v. Joost Kist H.O.D.N., 2004 E.T.M.R. 33(jingles and animal noises may be registered provided proper graphic representation); Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37, 44 (recognizingthat scent may operate as a trademark); 1 JEROME GILSON & ANNE GILSON LALONDE,TRADEMARK PROTECTION AND PRACTICE § 2.12 (2005).

109 The T.M.E.P. defines color marks as "marks that consist solely of one or more colors usedon particular objects." T.M.E.P., supra note 56, § 1202.05. The European Union has alsopermitted the registration of a color per se or a color combination as a trademark. "Colour per se"has been defined as a catch-all for all signs which consist solely of color, as opposed to thosesigns which use color as an element of a word or design mark. David Stone & Nicholas Bolter,Tips On Protecting Colour Combinations in the EU, MANAGING INTELL. PROP, Sept. 2004, at54. There have been seventy-two successful color mark registrations in the E.U., and more thanfour hundred applications submitted. See Office for Harmonization of the Internal Market,Statistics on Community Trade Marks, http://oami.eu.int/en/mark/stats.htm (last visited Sept.5,2005). This is not surprising, especially in light of the TRIPS Agreement, to which the UnitedStates and the European Union are signatories, and which expressly sanctions the registration ofcolor trademarks. See supra note 18; WTO, Understanding the WTO: The Organization:Members and Observers, http://www.wto.org/english/thewto e/whatis e/tif e/org6_e.htm (last visited Sept. 5, 2005). Further, the North American Free Trade Agreement(NAFTA), and other international agreements to which the United States is a signatory, providestrademark protection for color. Linda Greenhouse, High Court Ruling Upholds Trademarking ofa Color, N.Y. TIMES, Mar. 29, 1995, at D2.

110 Case C-104/01, 2003 E.T.M.R. 63. Libertel concerned the registration of a color per se.Specifically, an applicant filed the color orange as a trademark for its telecommunications goodsand services. Its graphic representation of the mark consisted of an orange rectangle and the word


the E.C.J. held that to graphically represent a color mark, an applicantmust submit a sample or swatch of the color and designate the colorusing an internationally recognized identification code."' The E.C.J.approved the use of an internationally recognized color code as anacceptable graphic representation because it is precise and stable."12

The Court found a color sample alone insufficient, 13 and a verbaldescription of the color, while a form of graphic representation, failed tosatisfy the requirements of clarity, precision, self-containment, easyaccessibility, intelligibility, and objectivity." 14

In Heidelberger Bauchemie GmbH,115 the E.C.J. held that colorcombinations 16 could not be registered unless the graphicrepresentation portrayed the colors in a "systematic arrangementassociating the colours concerned in a predetermined and uniformway.'' 117 The E.C.J. warned that if applicants could register colorcombinations in an arbitrary or indeterminate manner, 18 consumerswould be unable to recognize a particular combination as indicatingsource, and such registration would not provide competitors andauthorities with the precision or uniformity needed to determine thescope of the trademark holder's rights. 19 This reasoning suggests that acolor combination not presented in a systematic arrangement cannot

"orange." Id.111 Id. For example, an applicant seeking to register the color orange must submit a swatch of

the particular shade of orange it claims as a trademark and the corresponding color code from aninternationally recognized color chart, such as a Pantone® Color Code, RGB Color Code or RALColor Code.

112 Id. 37; see Mark Pearce, The Future's Bright, The Future's EasyMobile, 171TRADEMARK WORLD 10, 12, Oct. 2004 (noting that the use of a Pantone color code adequatelysatisfies the graphic representation requirement, enabling "a reader of the register [to]understand[] what the mark is that a proprietor has a... right to").

113 A sample or swatch of the color "may deteriorate over time.., and does not possess the

durability requirement of Article 2 of the Directive." Libertel, 2003 E.T.M.R. 63, TT 31, 33.114 Id. 77 28, 29, 31.115 Case C-49/02, Heidelberger Bauchemie GmbH, 2004 E.T.M.R. 99. The applicant sought

to register the color combination of blue and yellow in "every conceivable form." Therepresentation of the claimed mark consisted of a rectangle with the top half blue and the bottomhalf yellow. The application also provided color codes. Id. 110.

116 The E.C.J. considers a color combination to be "two or more colours, designated in theabstract and without contours." Id. 33.

117 Id. 42.118 Id. 35. The E.C.J. noted that "[t]he mere juxtaposition of two or more colours, without

shape or contours, or a reference to two or more colours 'in every conceivable form', ... does notexhibit the qualities of precision and uniformity required by Art. 2 of the Directive .... Id. 34.

119 Id 35. The E.C.J. stated:

Such representations would allow numerous different combinations, which would notpermit the consumer to perceive and recall a particular combination, thereby enablinghim to repeat with certainty the experience of a purchase, any more than they wouldallow the competent authorities and economic operators to know the scope of theprotection afforded to the proprietor of the trade mark.

Id.; see also Stone & Bolter, supra note 109, at 55 (discussing case).


constitute a trademark under Article 2 of the Trade Mark Directive. 120

The United States Supreme Court holds that color marks areregistrable provided they have acquired distinctiveness and are notfunctional. 121 The application for registration must contain a drawing ofthe mark, usually consisting of a representation of the mark on thegoods. 122 The drawing should depict in broken lines the product that thecolor will identify. 123 The drawing must be in color and show theviewer where and how the color functions as a mark for the product. 124

It should also show the viewer that the applicant claims the color, ratherthan the product shape, as the mark. 125

A description or written explanation must supplement thedrawing. 126 The Trademark Manual of Examining Procedure instructsthat the written description of the mark must describe the color inspecific terms and use ordinary, generic language. 127 It must identifythe mark as consisting of a particular color as applied to the goods orservices. 128 For example, Black & Decker Corporation has registeredthe color yellow for its saw blades. 129 The description accompanyingthe drawing states "[t]he mark consists of the color yellow applied to

120 Stone & Bolter, supra note 109, at 55 (noting that the Heidelberger decision implies "that anon-systematic arrangement of a combination of colours cannot constitute 'a sign' under theDirective).

121 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 (1995) (noting "color alone, atleast sometimes, can meet the basic legal requirements for use as a trademark. It can act as asymbol that distinguishes a firm's goods and identifies their source, without serving any othersignificant function."). Functionality is a per se bar to trademark registration. Id. at 165. "Thefunctionality doctrine prevents trademark law, which seeks to promote competition by protectinga firm's reputation, from instead inhibiting legitimate competition by allowing a producer tocontrol a useful product feature." Id. at 164. As the Court noted, while color sometimes serves afunction in making a product more desirable, this is not always the case. Id. at 165. When "coloris not essential to a product's use or purpose and does not affect cost or quality... the doctrine of'functionality' does not create an absolute bar to the use of color alone as a mark." Id.

122 T.M.E.P., supra note 56, § 1202.05(d)(i); 37 C.F.R. §§ 2.51, 2.52(b)(1) (2003).123 T.M.E.P., supra note 56, § 1202.05(d)(i). If the object is not depicted with broken lines,

the U.S.P.T.O. will assume that the applicant seeks to register a composite mark, i.e., theparticular color applied to a particular shape, rather than the color itself. Id.

124 37 C.F.R. § 2.52(b)(1) (2003); T.M.E.P., supra note 56, § 1202.05(d)(i). Until Novemberof 2003, applications for color marks were not accepted in color, but now submission in color isrequired. See HAWES & DWIGHT, supra note 90, § 3.26. While the recent change to colorapplications is a positive step in the direction toward providing legal certainty, the problemremains that thousands of trademark registrations claiming rights in colors are still made availableto searchers only in black and white. Perhaps the U.S.P.T.O. should take the color registrationrequirement a step further and require all registrants submitting renewal registrations of colormarks to submit color drawings and to adhere to the other registration recommendationsdiscussed in Part III, infra.

125 HAWES & DWIGHT, supra note 90, § 3.26.126 T.M.E.P., supra note 56, § 1202.05(e). The written description must explain what colors

comprise the mark and where they appear on the mark. Id.127 Id. Examples include "'maroon,' 'turquoise,' 'navy blue,' [and] 'reddish orange."' Id.128 Id.129 Black & Decker Corp., Reg. No. 2831672.


the perimeter of the saw blade so as to form a yellow rim on the sawblade. The dotted outline of the goods is intended to show the positionof the mark and is not part of the mark shown."130 A commercial colorcode may supplement a written description. 131 The application mustalso include a specimen that shows the actual or intended use of thecolor mark depicted in the drawing.132

Registration of a color mark in the United States is by far the mosttechnical and defined of all non-traditional mark registrations in theUnited States, yet it lacks the requisite specificity to facilitate protectionof trademark rights and provide notice to the marketplace. Because theOfficial Gazette is not published in color 133 and includes only thegeneric description of the mark,134 competitors cannot determine byconducting a search of the registry whether their chosen color mayinfringe on a federally registered trademark. While a trademarkexaminer may not think that an application registering the color goldenyellow for paper correspondence would infringe on a registration ofcanary yellow for stationary, a consumer may have a problemdistinguishing between the two, and a new entrant in the marketplacemight have difficulty determining whether its lemon yellow paperproducts would infringe on either mark.135 Further, an individual's

130 Id.; see also Hoodman Corp., Reg. No. 2746231 ("The mark consists of the color charcoal

juniper green as applied to the goods. The dotted outline of the goods is intended to show theposition of the mark and is not a part of the mark.").131 For example, see Thrifty, Inc.'s registration of the color light blue for its rental car

transportation services. Reg. No. 2608363. The description states:The mark consists of the solid color light blue (Pantone Matching System 300) used onvehicles such as buses and vans for shuttling customers to and from applicant's vehiclerental centers. The dotted lines shown on the drawing are not part of the mark butmerely serve to indicate the position of the mark when used in connection withvehicles.

Id.The T.M.E.P. expressly refuses to endorse or recommend a particular color code.

T.M.E.P., supra note 56, § 807.07(a)(ii); ARDEN, supra note 10, at 26 (noting that "the U. S.Patent & Trademark Office has not yet adopted a requirement for more precise identifications ofcolor, such as the Pantone Matching System used for matching colors"). The Pantone MatchingSystem is an internationally recognized color code. Each of Pantone's more that 1000 colorscorresponds to a number code, which enables uniform matching and specification of colorsworldwide. See generally Pantone, http://www.pantone.com (last visited Sept. 5, 2005), for moreinformation on the Pantone Matching System.

132 T.M.E.P., supra note 56, § 1202.05(f).133 The five most recent issues of the Official Gazette are available online at the U.S.P.T.O.

website and appear in color. See U.S.P.T.O., Trademark Official Gazette, http://www.uspto.gov/web/trademarks/tmog/ (last visited Sept. 5, 2005). However, this does not facilitate clarity in asearch of trademarks registered more than five weeks prior to the search.

134 See, e.g., Manhasset Specialty Co., Reg. No. 2722766 ("The mark consists of the colorred").

135 3M has registered the color canary yellow for adhesive stationary. Reg. No. 2390667.Western Union has registered the color golden yellow for correspondence paper. Reg. No.2696986. A search of TESS reveals that 2,167 registrations claim a shade of yellow in theirdesign or as a trademark applied to a product. Some examples include: Nintendo of Am. Inc.,

CARDOZO LAW REVIEW [Vol. 27:1

perception of a color may vary depending on the background, thelighting, or the individual's knowledge of color.136

The United States should adopt the European Union's requirementof an internationally recognized color code in its registration process.As mentioned above, the United States currently permits the use of acommercial color code, but it does not require or recommend one. 137

An international color code provides precision, which is desirable toidentify unique colors and to distinguish a claimed color mark fromother colors used in the marketplace. 38 Such a requirement wouldprovide an accurate method for selecting, specifying, and matchingcolors. 139 The use of an international color code would also simplify theexaminer's job of determining what the applicant seeks to register and

Reg. No. 2554181 (the color "orange yellow" applied to handheld electronic games); KirbyMorgan Dive Sys., Reg. No. 2803929, and Diving Sys. Int'l, Reg. No. 2634033 ("bright canaryyellow" color for diving helmets); Stego Indus., Reg. No. 2790352 (the color "yellow" applied toplastic sheeting); Kransco Mfg., Reg. No. 1432069 (the color "yellow" for plastic water slidetoys). There have been registrations claiming the colors "light yellow" and "dark yellow," JustDesserts, Inc., Reg. No. 2878653, and "bright yellow," see, e.g., Pressure Cleaning Serv., Reg.No. 2855644. Interestingly, the color "lemon yellow" is registered for trucks and movingvehicles, Ryder Sys., Reg. No. 2131635, the color "yellow" is registered for vehicles,ServiceMaster Co., Reg. No. 2085318, and the color "hot yellow green II" for forklift trucks,Clark Material Handling Co., Reg. No. 2085234. None of the registrations appear in color on theelectronic registry nor provide any guidance on ascertaining the difference between "brightcanary yellow" and "bright yellow" or "lemon yellow" and "yellow." Some registrations doprovide some guidance to the trademark searcher. For example, CEP Holdings, Reg. No.2503351, registered the color "bright lemon yellow" for mouthwash and stated that the color isthe same as Pantone Process 2C. Kirby Morgan Dive Systems, Reg. No. 2842804, claims use ofthe "yellow color buttercup" and directs the searcher to Pantone Number 116C. Lastly,Minnesota Mining and Manufacturing Co., Reg. No. 2619345, claims a "distinctive yellowshade" for telephone maintenance instruments and provides reference to Pantone 123C.

136 The possible variances of shades, depending on backgrounds, lighting, etc., will furtherconfuse consumers and give rise to actions for trademark infringement. For a thoroughdiscussion of the variances in human perception of color depending on the environment, and thedifficulty of taking these variances into account in trademark infringement actions, see LawrenceB. Ebert, Trademark Protection in Color: Do It by the Numbers!, 84 TRADEMARK REP. 379, 405-06(1994).

137 See supra note 131 and accompanying text.138 See ARDEN, supra note 10, at 27; Ebert, supra note 136, at 402-06 (discussing how

precision would prevent shade confusion and bring more objectivity to trademark law). Prior tothe Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 167(1995), many courts argued against the use of color as a trademark on the theory of shadeconfusion. See NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1027 (7th Cir. 1990); In reOwens-Coming Fiberglas Corp., 774 F.2d 1116, 1131 (Fed. Cir. 1985) (Bissel, J., dissenting).The shade confusion theory holds that the use of color as a trademark will lead to uncertainty asto whether a given shade of color infringes on a registered color mark. See Qualitex, 514 U.S. at167; Ebert, supra note 136, at 403. While the Court in Qualitex expressly rejected shadeconfusion as a basis for denying the registration of color marks, the theory is still relevant, not tobar such registration, but to improve upon it. Qualitex, 514 U.S. at 167; see Ebert, supra note136, at 403 (noting that concerns about shade confusion are misplaced, because "the human eye isphysically capable of distinguishing thousands, if not millions, of colors... [and] astraightforward algorithm is available for keeping track of these numerous shades").

139 It would also guarantee that a United States trademark owner's registration of a given coloris perceived and registered as the identical shade globally.


whether the applicant's registration infringes on another's mark. 140

Requiring use of a color code alone is not enough. While its usewould provide the United States' registration system with neededspecificity, it would preclude immediate identification of the markwithout reference to an outside source. 141 As such, the drawing shouldconsist of the color swatch that corresponds to the color code. Thespecimen of the color being used in commerce should consist of a colorphotograph of the actual product. Further, publishing the specimen inthe Official Gazette and making it available for search in the electronicregistry, TESS, 142 would provide increased clarity and notice to themarketplace. Registrants should also utilize the U.S.P.T.O.'s electronicfiling system 143 and upload color photographs during the electronic

140 The use of a color code would also assist courts in fashioning injunctive relief. See, e.g.,

Olay Co. v. Cococare Prods., 218 U.S.P.Q. 1028, 1045 (S.D.N.Y. 1983) (issuing injunctionrequiring defendant to use "a discernibly different pink, at least 40% different in terms of PMS[Pantone Matching System] tones"). While Ebert believes that a numeric approach is the bestway to identify color marks, he also suggests alternative approaches to the use of a commercialcolor code, such as the use of a spectrophotometer and a three-variable approach, to distinguishconfusingly similar shades in infringement actions. Ebert, supra note 136, at 404-05. Ebertsuggests:

Under standard conditions of incident radiation, perform spectrophotometry in thevisible range upon the sample to be trademarked to establish the intensity of reflectedradiation as a function of wavelength. Convert the spectrum into absorptioncoefficients for the three cones of the human eye. Establish error bars based on theknown wavelength discrimination of the human eye. Any shade of color is convertedinto three numbers, with objectively established error bars. Infringement of a priorshade is established when the second shade matches all three numbers within the limitsof error... [T]his approach can be used to address the use of shades which, thoughinequivalent, are confusingly similar.

If machines are not desired, in the alternative, one may utilize humans in ascientifically objective manner.... [A] human can match a given shade to a mixtureof light of three different wavelengths. The relative proportions of the three sourceswould identify the color of the trademark, again converting a shade of color into threenumbers. If the second color falls within the error bars for each of the threecoefficients, infringement exists.

Id. While, as Ebert notes, this approach would be viable as applied to trademarks, see id. at 405n.127 and sources cited therein, it would also be incredibly costly to the average trademarkowner. While this Note urges the adoption of expensive procedures to register scent marks, seeinfra text accompanying notes 215-18, color, in this author's opinion, is more "entitled" totrademark protection and capable of source identification than scent. As such, it is arguable thatthere should be "free access" to the use of colors as trademarks, which an expensive approachsuch as spectrophotometry would inhibit.

141 The use of a color code is not a self-contained solution. See Bainbridge, supra note 21, at

236 ("[The] precise colour should be available online without the need to consult anythingfurther. The same sentiment holds with all marks-they should be seen for what they are.").

142 See supra note 102.143 The U.S.P.T.O. has instituted a Trademark Electronic Application System (TEAS), which

enables applicants to fill out applications online and submit them directly to the U.S.P.T.O. SeeTrademark Electronic Application System (TEAS), http://www.uspto.gov/teas/index.html (lastvisited Sept. 5, 2005). The advent of electronic filing will help implement these proposals forspecificity. For more information on TEAS, the benefits of electronic filing, and the U.S.P.T.O.'spreference for electronic applications, see HAWES & DWIGHT, supra note 90, § 3.65.


registration process. 144 While the photographs may not be in colorwhen published in the Official Gazette,145 the black and white picture,combined with a description of the color and the international colorcode specification, will provide searchers with the specificity and claritythey need.

B. Sound Marks

The E.C.J. in Shield Mark BV v. Joost Kist146 confirmed theregistrability of sound marks in the European Union, 147 provided thesound is distinctive and able to be represented graphically. 48 ShieldMark concerned the registration of fourteen sound marks,149 which weresubmitted for registration in various formats including a written

144 This process could be completed in several ways. If the photograph is taken with a digital

camera, the files are compressed into JPEG imaging formats, which may be easily uploaded intothe system. If a digital camera is unavailable, many film developers or processors provide theoption of receiving pictures on a "Picture CD," which, according to advertisements, enables usersto take digital pictures without a digital camera. See Kodak, http://www.kodak.com (last visitedSept. 5, 2005). Lastly, if the applicant is not applying electronically, the U.S.P.T.O. could scan aphotograph submitted in hard copy when it updates the registration database with the applicant'sinformation.

While using a digital imaging format may be more costly to the applicant, the reducedfiling fee for electronic filing will subsidize any additional costs. See 37 C.F.R. § 2.6 (2005)(stating trademark application fees are $375 per class for paper applications, and $325 per classfor electronic applications).

Further, these changes for color mark registration will not increase costs for the U.S.P.T.O.TEAS currently accepts JPEG files and the U.S.P.T.O. is looking into accepting files in otherformats. See Waiver of Pixel Requirements for Drawings Filed Electronically, 69 Fed. Reg.59811 (Oct. 6, 2004) (codified at 37 C.F.R. § 2.22 (2005)); Trademark Electronic ApplicationSystem (TEAS), Up-Coming TEAS Enhancements, http://www.uspto.gov/teas/eTEASupcoming.html (last visited Jan. 29, 2005). Electronic filing saves the U.S.P.T.O time byenabling faster review of trademark applications, and eliminates the U.S.P.T.O having to enter theinformation manually into the system. HAWES & DWIGHT, supra note 90, § 3.65. Further,images in and of the applications are automatically made available on TESS. Id.

One commentator has advocated similar measures for improvement of the UK PatentOffice. Bainbridge, supra note 21, at 236. He suggests that the Patent Office's website should beimproved to ensure that all trademark applications and registrations should be reproduced andrepresented completely on the website. Id.

145 Although they should be. Compare the simplicity of publishing marks in color with theEcuadorian Trademark Office's utilization of a dual printing process to enable preciseidentification of a texture mark. See supra note 10.

146 Case C-283/01, 2004 E.T.M.R. 33.147 Forty-four sound marks have been registered in the European Union. See Office for

Harmonization of the Internal Market, Statistics Community Trade Marks (Dec. 31, 2004),http://oami.eu.int/pdf/office/Stats%20CTM%202004.pdf.

148 In doing so, the Court reaffirmed that graphic representation of a sound mark must be

depicted visually by images, lines, or characters and must be "clear, precise, self-contained, easilyaccessible, intelligible, durable and objective." Shield Mark, 2004 E.T.M.R. 33, 41; see, e.g.,Sound, or a Bit Fishy, supra note 65, at 191.

149 Eleven marks registered the first nine notes of Fur Elise by Beethoven. Three marks were

for the sound of a cockcrow crowing. Shield Mark, 2004 E.T.M.R. 33, 15-19.


description, onomatopoeia,150 and musical composition.' 5'The Court held that representation by detailed musical notation on

a stave 52 divided into bars and showing clefs, rests, pitch, and durationsatisfies the graphic representation requirement for sound marks. 153

However, in so holding, the E.C.J. discredited the use of several otherpossible graphic representations, which the United States permits, suchas a written description, onomatopoeia, and musical notation. 154

According to the E.C.J., the use of a description of a sound lackedprecision and clarity, making it difficult to determine the scope ofprotection. 55 Onomatopoeia did not satisfy the graphic representationrequirement because it creates a disparity between the written wordsand the sound and may be perceived differently depending on theindividual. 156 A third approach, musical notation in sequential order,ignored important aspects of the sound such as the pitch and durationthat form the melody. 57 Accordingly, the Court reasoned that graphicrepresentation by musical notation in sequential order is not clear,precise, self-contained, or intelligible.158 The E.C.J.'s holding illustrates

150 Onomatopoeia is "[t]he formation and use of words to imitate sounds. For example dong,

crackle, moo, pop, whizz, whoosh, [and] zoom." J. A. CUDDON, A DICTIONARY OF LITERARYTERMS 466 (1976). Other examples include "growl," "howl," "buzz," "hiss," and "meow."

151 Four of the marks consisted of the representation of the musical notes forming the melodyon a stave. Four other marks consisted of the first nine notes of Fur Elise and were representedby a description of the melody, two of which stated they were "sound mark[s]." Three of themarks consisted of the musical note sequence for Fur Elise and were represented as E, D#, E, D#,E, B, D, C, A. Two of the marks consisted of "Kukelekuuuuu," describing the sound usingonomatopoeia, one of which stated "' [s]ound mark, the trade mark consists of an onomatopoeiaimitating a cockcrow."' Shield Mark, 2004 E.T.M.R. 33, 9 15-19.

152 A stave or staff is the set of horizontal lines on and between which musical notes arewritten. The placement of a note on the staff indicates its pitch. WEBSTER'S NEW WORLDCOLLEGE DICTIONARY 1393, 1400 (4th ed. 2001).

153 Shield Mark, 2004 E.T.M.R. 33, Order 2; Sound, or a Bit Fishy, supra note 65, at 191.The E.C.J. specifically held that the graphic representation requirement was

not satisfied when the sign is represented graphically by means of a description usingthe written language, such as an indication that the sign consists of the notes going tomake up a musical work, or the indication that it is the cry of an animal, or by means ofa simple onomatopoeia, without more, or by means of a sequence of musical notes,without more. On the other hand, those requirements are satisfied where the sign isrepresented by a stave divided into measures and showing, in particular, a clef, musicalnotes and rests whose form indicates the relative value and, where necessary,accidentals.

Shield Mark, 2004 E.T.M.R. 33, Order 2. The E.C.J. also emphasized that a sound can beregistered as a trademark only if the application for registration expressly labels the mark as asound mark. Id 58.

154 See infra notes 172-77 and accompanying text.155 Shield Mark, 2004 E.T.M.R. 37, 59.156 Id 60. Another problem with onomatopoeia is that the sound of a rooster crowing in the

United States sounds very different than the sound of a rooster crowing in Denmark. Compare"cockadoodledoo" with "kukelekuuu." To find additional variances, see Sounds of the World'sAnimals, http://www.georgetown.edu/faculty/ballc/animals/ (last visited Sept.5, 2005).

157 Shield Mark, 2004 E.T.M.R. 37, 61.158 Id. 59-61. While musical notation presented on a stave divided into bars, clefs, and

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the European Union trademark law's predominate concerns withunambiguously defining a trademark holder's rights as well as enablingrecognition of the mark.159

Shield Mark's graphic representation requirements are arguablylimited to instrumental or musical marks, as sound marks such asanimal noises, spoken words, and slogans cannot be graphicallyrepresented by musical notation. 160 The Fourth Board of Appeals' 61

(Board) in Metro-Goldwyn-Mayer Lion Corp's Application recognizedthat musical notation is impracticable when the sound is not musical innature but rather a commonplace sound or animal noise. 62 The Boardfound that representation by a sonogram satisfied the graphicrepresentation requirement because it depicted pitch, volume, andprogression over time and stated such representation was "superior tothat of musical notation, since more nuances and, in particular, soundcharacteristics are depicted."' 163 As such, the Board concluded that anon-musical sound mark was registrable as a trademark, providedgraphic representation in the form of a sonogram accompanied theapplication. 164

rests, etc. arguably provides much more detail and precision than listing a series of musical notes,such as C#, B, A, C, D, A, the E.C.J. seems to overlook the fact that not everyone can readmusical notation. See Bainbridge, supra note 21, at 228; Hidaka, supra note 55, at 1128; infranotes 178-79 and accompanying text.

159 See, e.g., Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R.37, 47-53.

160 The E.C.J. did not address whether a sonogram or a digital sound recording would satisfy

the graphic representation requirement. Id. 54.161 A brief explanation of the European Union's legal system is in order. Applicants file

trademark applications with the Office for Harmonization in the Internal Market (OH[M). SeeO'Reilly, supra note 51, at 94. Applicants may appeal the OHIM's decisions before the Office'sBoard of Appeals, and may appeal Board of Appeals decisions before either the E.C.J. or theCourt of First Instance (C.F.I.). Id. at 115-16. The E.C.J. hears appeals only on matters of law.Id.

162 Case R-781/1999-4, 2004 E.T.M.R. 34. The applicant sought to register a lion's roar for

various goods and services. The application stated that the mark is the "sound produced by theroar of a lion and is represented by [a] spectrogram ...." Id. 1. The Board noted:

[T]he situation is different when it is not music, in the traditional sense of the word,that is to be registered as a sound mark, but animal noises such as the roar of a lion oreven completely different noises such as rolling thunder in a storm. Here,representation by musical notation regularly fails to work.

Id. 22.163 Id. 26. A sonogram, or sound spectrogram, is a "three-dimensional depiction of the

distribution of a signal's frequency content (blackening) versus frequency (vertical axis) and time(horizontal axis)." Id. In a sonogram, the vertical axis represents the pitch, the horizontal axisrepresents the duration, and the blackening represents the volume. Id.

164 Id. T 28. While the mark at issue was a permissible registration, the Board denied the

application, because the sonogram submitted did not contain the representation of scale on either

the rime or the frequency axes. The Board commented, "[a] pattern that cannot be read, andtherefore not understood, cannot be considered as a valid graphic representation of a mark." Id.

29. Notably, the Board rejected the argument that a sonogram is unintelligible because examinersor consumers cannot read it. This argument exemplifies a problem with the European Union'sregistration of sound marks, which is discussed infra notes 178-79 and accompanying text.


The U.S.P.T.O. recognized the registrability of sound marks morethan fifty years ago. 165 For example, the National BroadcastingCompany registered the NBC chimes in 1950 for its radio broadcastservices, 166 and Metro-Goldwyn-Mayer registered the sound of a lionroaring in 1986.167 In 1995, Harley Davidson applied to register thesound of its motorcycles. 168

The Trademark Trial and Appeals Board in In re General ElectricBroadcasting discussed the registration of a sound mark and stated thatsound marks must be inherently distinctive or have acquireddistinctiveness to be registered. 169 General Electric applied to register

165 United States trademark law recognizes that "sounds may... function as source indicatorsin those situations where they assume a definitive shape or arrangement and are used in such amanner so as to create in the hearer's mind an association of the sound with a service." In reGen. Elec. Broad. Co., 199 U.S.P.Q. 560, 563 (T.T.A.B. 1978). Trademark Rule of ExaminingProcedure 1202.15 defines a sound mark as "identiflying] and distinguish[ing] a product orservice through audio rather than visual means." T.M.E.P., supra note 56, § 1202.15. It providesexamples of "series of tones or musical notes, with or without words, and... wordingaccompanied by music." Id; see also Candida J. Hinton, In Your Ear! Trademarking a SoundMark Requires More Than a Good Ear for Music, INTA BULLETIN ARCHIVE (April 2002),http://www.inta.org/articles/inyourear.html.

166 Reg. No. 0523616. This registration expired, and in 1971, NBC registered three "chime-like musical notes" to denote its broadcasting services. Reg. No. 0916522 ("The mark comprisesa sequence of chime-like musical notes which are in the key of C and sound the notes G, E, C, the'G' being the one just below middle C, the 'E' the one just above middle C, and the 'C' beingmiddle C, thereby to identify applicant's broadcasting service."). See Hinton, supra note 165.

167 Reg. No. 1395550. In contrast to the strict requirement of a sonogram in the EuropeanUnion, Metro-Goldwyn-Mayer was able to register its sound mark in the U.S. by filing thefollowing description: "The mark comprises a lion roaring." Cf infra text accompanying notes160-64.

168 Serial No. 74485223 ("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."). Thecompany spokesman said in support of its registration, "[w]e do know that the sound is one of thetwo main reasons why people buy our cycle-the look and the sound .... Competitors havebegun copying our sound, and we are concerned about possible confusion." Harley-DavidsonWants to Register a Roar, N.Y. TIMES, Oct. 8, 1995, § 1, p. 26. Harley-Davidson eventuallyabandoned the application. Cf Kawasaki Motors Corp., U.S.A. v. H-D Michigan, Inc., 43U.S.P.Q.2d 1521 (T.T.A.B. 1997) (denying summary judgment motion because issues of factexisted as to whether the description of the sound of a motorcycle engine was indefinite andencompassed more than one sound mark). For an in-depth discussion of the Harley-Davidsontrademark application, see Michael B. Sapherstein, The Trademark Registrability of the Harley-Davidson Roar: A Multimedia Analysis, 1998 B.C. INTELL. PROP. & TECH. F. 101101 (Oct. 11,1998), http://infoeagle.bc.edu/bc-org/avp/law/st-org/iptf/articles/index.html.

169 199 U.S.P.Q 560, 563 (T.T.A.B. 1978). The Board noted thatunlike the case of a trademark which is applied to the goods in such a manner as tocreate a visual and lasting impression upon a purchaser or prospective purchaserencountering the mark in the marketplace, a sound mark depends upon aural perceptionof the listener which may be as fleeting as the sound itself unless, of course, the soundis so inherently different or distinctive that it attaches to the subliminal mind of thelistener to be awakened when heard and to be associated with the source or event withwhich it is struck.

Id. This distinctiveness requirement is comparable to the European Union's requirement that thesound must be capable of distinguishing the goods and services of one undertaking from those ofanother. For a discussion of distinctiveness in European Union and United States trademark law,

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the sound of a ship's bell clock for radio broadcast services. 170 Inassessing the distinctiveness of the sound mark, the Board distinguishedbetween those sounds that resemble "commonplace" sounds and thosethat are arbitrary, unique, or distinctive and, finding the sound of shipbells to be the former, required evidence of acquired distinctiveness.'17

In contrast to the strict graphic representation requirement in theEuropean Union, registration of a sound mark in the United States doesnot require a drawing but rather a detailed description of the mark.172

For example, the Edgar Rice Burrow company registered "the sound ofthe famous Tarzan yell" in 1998.173 The mark was described as

a yell consisting of a series of approximately ten sounds, alternatingbetween the chest and falsetto registers of the voice, as follow[s]- 1)a semi-long sound in the chest register, 2) a short sound up aninterval of one octave plus a fifth from the preceding sound, 3) ashort sound down a Major 3rd from the preceding sound, 4) a shortsound up a Major 3rd from the preceding sound, 5) a long sounddown one octave plus a Major 3rd from the preceding sound, 6) ashort sound up one octave from the preceding sound, 7) a shortsound up a Major 3rd from the preceding sound, 8) a short sounddown a Major 3rd from the preceding sound, 9) a short sound up aMajor 3rd from the preceding sound, 10) a long sound down anoctave plus a fifth from the preceding sound. 174

However, not all marks are described in such detail, and yet arestill registered under the flexible United States system. 7 5 In fact, manyare vague and ambiguous, providing a brief description or utilizingonomatopoeia, making it difficult to transfer the written description intoan aural impression. 176 In addition to providing a description of the

see Eric E. Bowman, Trademark Distinctiveness in a Multilingual Context: Harmonization of theTreatment of Marks in the European Union and the United States, 4 SAN DIEGO INT'L L.J. 513(2003).

170 In re Gen. Elec., 199 U.S.P.Q. at 561. The mark was described in the application as "aseries of bells tolled during four, hour sequences, beginning with one ring at approximately a firsthalf hour and increasing in number by one ring at approximately each half hour thereafter." Id.The application was submitted with an audio tape recording of the sound. Id. at 562.171 Id. at 563. The Board did not reject the possibility that the sound of a ship's bell could be

indicative of broadcasting services, but did not find enough evidence that purchasers associate thesound with anything other than a ship or that the sound mark "ring[s] a bell for the listener." Id.

172 See 37 C.F.R. § 2.52(e) (2003); T.M.E.P., supra note 56, § 807.09.173 Edgar Rice Burroughs, Inc., Reg. No. 2210506.174 Id. Note the ease of understanding the mark for those who have seen the movie Tarzan.

However, for others such as this author, the description, while detailed and specific, renders noaural recognition of the sound. See Hinton, supra note 165. For an in-depth discussion of theproblems with registration by description, see infra notes 181-83 and accompanying text.

175 See e.g., Kes Irrigation Sys., Inc., Reg. No. 2203470 ("The mark consists of the sounds of

thunder and rain."); AWS Convergence Techs., Reg. No. 2827972 ("The mark consists of a seriesof five chirps similar to the chirping sound of a cricket."); Ginsburg Enters., Reg. No. 2000963("The mark consists of the sound, 'Ooh it's so good'.").

176 See e.g., Netbytel, Inc., Reg. No. 2788028 ("The mark consists of a xylophone tone,playing a series of 16th notes, beginning at middle 'C': CECDCFDG."); Heritage Siding &

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mark, the applicant must submit a specimen of the sound being used incommerce, such as an audio cassette or a musical score.177

Neither the European Union's nor the United States' registrationprocedures for sound marks is ideal. The European Union's registrationprocedures provide specificity, but they lack certainty andcomprehension. 178 The use of musical notations on a stave andsonograms facilitates reproduction and systematic identification of thesounds registered; however, not everyone is able to read musical notesand very few are able to read sonograms. 179 Nonetheless, the UnitedStates should require a sonogram or detailed musical notation,depending on the type of mark. While unintelligible to the average userof the registry, they enable quick comparison between sounds, whichcannot be done aurally. 80

Similarly, the United States' reliance on a description, apart frombeing entirely subjective, makes it extremely difficult both to ascertain

Windows, Reg. No. 2524758 ("The mark consists of the sound of a kiss made when, for example,one is 'blowing a kiss' to another person .... ); EasyTel Corp., Reg. No. 2685338 ("The mark isthe sound of a ringing cash register."); Minn. State Lottery Agency, Reg. No. 2600195 ("Themark is the sound of a wild loon provided in one or more short bursts .... "); MTM Enters., Reg.No. 2158156 ("The mark consists of the sound of a cat's meow.").

177 See 37 C.F.R. § 2.56 (2003). T.M.E.P. § 1202.15 notes, "[tlo show that the sound markactually identifies and distinguishes the services and indicates their source, the specimen shouldcontain a sufficient portion of the audio content to indicate the nature of the services." T.M.E.P.,supra note 56, § 1202.15.

178 See e.g., Hidaka, supra note 55, at 1128 (noting that the average member of the public doesnot find notes on a musical stave comprehensible); Bainbridge, supra note 21, at 228 ("[Ilt islikely that less than half of those interested in trade marks can, by looking at a piece of music soexpressed, have a real and accurate perception of the nature and character of the mark."). But seeCase R 186/2000-4, Institut pour la Protection des Fragrances' Application, 2005 E.T.M.R. 42,18 (rejecting argument that musical notes on a stave are not comprehensible and noting that "therelevant public usually perceives the score, containing the conventional indications needed tointerpret this, as the standard and universally known code for representing a melody, even if itdoes not always know how to decipher this"). The European Union could improve its registry byfollowing the United States' lead in requiring a detailed description of the sound in addition to aformal notation. The Board of Appeals in Metro-Goldwyn-Mayer Lion Corp's Application notedthat the applicant could submit a description of the mark in addition to the sonogram to facilitatefurther understanding of the mark, but it unfortunately stopped short of requiring one. See CaseR-781/1999-4, Metro-Goldwyn Mayer Lion Corp. Application, 2004 E.T.M.R. 34, 31. TheEuropean Union should also require a digital sound sample. See Bainbridge, supra note 21, at231 (advocating the digital registration of sound marks in the European Union); infra notes 184-86 and accompanying text.

179 The Board of Appeals recognized this objection in Metro-Goldwyn-Mayer and noted that,while training and practice are prerequisites to conceptualizing a sonogram as the sound or noisedepicted, the same is true for a musical notation, and "nobody seriously disputes the fact thatmusical notation is a suitable way of representing sound marks graphically." Metro-GoldwynMayer, 2004 E.T.M.R. 34, 27.

180 See, e.g., Mary Louise Serafine, The Development of Cognition in Music, 70 MUSICAL Q.218, 221-24 (1984) (discussing how recognition of a sound differs from person to person and maydepend on differences in prior experience or familiarity with the sound and notes, and stating that"each listener hears the same piece [of music] . . . but each cognizes it differently.... Anothermind 'hears' differently an identical artwork.").

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the sound for which registration is sought 181 and to prove infringementof the mark. 182 A description should be used merely to supplement thesonogram or musical notation, as it better facilitates understanding ofthe mark. However, it is insufficient standing alone. 83

In addition, the United States should require the specimen, whichis usually an audio cassette or compact disc recording of the soundmark,' 84 to be made available to all searchers and users of the trademarkregistry. This may be accomplished by requiring applicants toelectronically file sound marks by uploading digital sound files duringthe registration process, which the U.S.P.T.O. could later makeavailable on TESS.' 85 Alternatively, the U.S.P.T.O. could upload thesound files upon receipt of the paper applications. Utilizing thespecimen in such a manner would enable a clear and preciseunderstanding of the scope of the mark.186

181 See supra notes 175-76. Other examples illustrating the imprecision and unintelligibility of

a description are: Reg. No. 2741129, which registersthe sound of a brass bell tuned to the pitch D, but with an overtone of D-sharp, strucknine times at a brisk tempo, with the final tone allowed to ring until the sound decaysnaturally. The rhythmic pattern is eight 16th notes and a quarter note; the totalduration, from the striking of the first tone to the end of the decay on the final one, isjust over 3 seconds.

Can you identify the sound or the source of this mark? It is the closing bell for the New YorkStock Exchange. VISA has registered

[a] mark consist[ing] of three main audio and musical elements; it begins with a'whoosh' sound similar to a quick passing jet. This is followed by rising orchestralchoir vocals in the key of D major. The sound is then concluded with a very quickascending five-note scale played in the voice of high pitched bells: D5, F5, G5[,] A#5,C6. Underlying the last scale is a bass note of D2.

Reg. No. 2802893.182 It is difficult to determine what comprises the mark, much less how broad its scope of

protection should be. For support of this argument, see Bainbridge, supra note 21, at 230. TheTrademark Trial and Appeal Board has acknowledged that it is difficult to ascertain the nature ofa sound mark from the description alone. In Kawasaki Motors Corp., U.S.A. v. H-D Mich., Inc.,43 U.S.P.Q.2d 1521 (1997), the Board used the sound recordings submitted as a specimen inaddition to the description. While the Board noted that the aural perception on the tape could"fairly be characterized as an aural presentation of the literal description," the Board probablywould not have understood the description in the same manner without having listened to themark.

183 For example, Boston Duck Tours registered "the sound of a human voice making quacking

noises like a duck." Reg. No. 2308503. This description lacks precision and clarity, raisingmany more questions than it answers. Is a man, woman, or child making the sound? How longdoes the quacking last? Does the sound consist of a noise actually imitating a duck or is thehuman voice just speaking the word "quack"? Interpretation of the mark will largely depend onthe searcher's unique, subjective interpretation. See Bainbridge, supra note 21, at 230 (using anexample of a dog barking to raise objections to sound marks).

184 See supra note 177 and accompanying text.185 See Bainbridge, supra note 21, at 231 (suggesting making sound samples available over the

internet to enable anyone to access and play the mark).186 See Hidaka, supra note 55, at 1129 (noting that, with the advent of technology, new

methods for registering sounds will make marks more accessible online at national registries); seealso supra note 180.


C. Olfactory Scent Marks

Theoretically, the European Union permits registration of olfactorymarks; however, in practice, the European Union's strict graphicrepresentation requirement essentially precludes their registration. 187

The E.C.J addressed the requirements for olfactory mark registration inSieckmann v. Deutsches Patent-und Markenamt 88 and held that neitherrepresentation by a chemical formula, a written description, a scentsample, nor a combination of these methods satisfied the graphicrepresentation requirement. 89

Specifically, the E.C.J. rejected the use of a chemical formulabecause it represented the substance of a scent rather than the scentitself, and very few people would recognize the scent by looking at achemical formula. 190 The Court deemed the description of the scent,191

although graphic in form, insufficient because users of the registrywould not perceive the description of the scent uniformly. 92 A sample

187 Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37; seealso Sound, or a Bit Fishy, supra note 65, at 191 ("This [Sieckmann] decision makes it verydifficult, if not impossible, to register a smell as a mark, at least until such time as it can bedemonstrated that technology exists which can identify smells with sufficient clarity, precisionand objectivity.").

188 Case C-273/00, 2003 E.T.M.R. 37. Sieckmann involved the registration of a'balsamically fruity [smell] with a slight hint of cinnamon"' for services ranging fromadvertising and education to medical, agricultural, and scientific services. Id. 10, 13; Chaudri,supra note 55, at 28. The application included representation of the scent by a chemical formula,a description of the scent, and a sample of the scent. Sieckmann, 2003 E.T.M.R. 37, 11-13.

189 Case C-273/00, 2003 E.T.M.R. 37, 9 69-73. As aforementioned, graphic representationrequires a "clear, precise, self-contained, easily accessible, intelligible, durable and objective"representation "by means of images, lines or characters .... Id. Order 2.

190 Id. 1 69. It is interesting to compare the rejection of a chemical formula as unintelligiblewith the adoption of a sonogram or musical composition as sufficient graphic representation. Seesupra text accompanying notes 153, 163-64, 178-80. However, the two methods can bereconciled by the fact that the latter, once deciphered, represents the actual sound, while theformer when deciphered still does not represent the fragrance the formula creates.

191 The description stated:'Trade mark protection is sought for the olfactory mark deposited withthe... [Trademark Office] of the pure chemical substance methyl cinnamate (=cinnamic acid methyl ester), whose structural formula is set out below. Samples of thisolfactory mark can also be obtained via local laboratories listed in the ... (YellowPages) of Deutsche Telekom AG or, for example, via the firm E. Merck in Darmstadt.C6H5-CH = CHCOOCH3.

Id. 11.192 Id. 70 (finding the description was "not sufficiently clear, precise and objective").

The Second Board of Appeals previously found a written description constituted sufficientgraphical representation of a scent. In Vennootschap Onder Firma Senta Aromatic Marketing'sApplication, the Board accepted an application to register the "smell of fresh cut grass" for tennisballs. Case R 156/1998-2, Vennootschap Onder Firma Senta Aromatic Mktg.'s Application,1999 E.T.M.R. 429 (CTM No. 000428870). It is unclear whether this registration will be revokedas a result of the E.C.J.'s decision in Sieckmann. See Chaudri, supra note 55, at 28; Sound, or aBit Fishy, supra note 65, at 191. Interestingly, prior to Sieckmann, the Third Board of Appealsalso accepted that a written description of an olfactory mark satisfied the graphic representation


of the scent also failed to satisfy the graphic representation requirementbecause the sample was neither a graphic representation in the strictsense of the word, 193 nor stable nor durable as it was likely to fade orchange over time. 194 The Court's reasoning reveals the EuropeanUnion's hesitancy to grant property rights in a scent, and arguablyillustrates its opposition to the registration of scent marks altogether. 95

requirement; it rejected the application for "the scent or smell of raspberries" for motor fuel,however, on the ground that it was not distinctive. Case R 711/1999-3, Myles Ltd.'s App., 2003E.T.M.R. 56. The Board

recognized the difficulty with regard to graphical representation of olfactory marks butconsidered it was not impossible that, in an exceptional case, a scent can be representedcompletely, clearly, precisely and objectively. They considered that the scent or smellof raspberries, like the smell of fresh cut grass before it, was such an exception.

Hosford, supra note 36, at 29.193 It was not represented graphically by means of images, lines, or characters. See supra note

56 and accompanying text. However, a statement "that the scent was usually described as'balsamically fruity with a slight hint of cinnamon' accompanied the sample. Sieckmann, 2003E.T.M.R. 37, 13. Interestingly, although not noted by the Court, the scent sample wassurprisingly accessible because the applicant had offered to make it available for inspection atvarious laboratories throughout the Union. Id. 11.

194 Id. 71. The E.C.J. did not elaborate on why a scent sample was insufficient. However,the opinion noted the concerns of the Austrian Government that "an odour changes over timebecause of volatilisation or other phenomena and that a deposit can therefore not produce alasting olfactory impression capable of constituting a graphic representation." Id 67.

195 One commentator accurately summarized many of the European Union's concerns, and theconcern in general with permitting the registration of a scent:

There is no conceivable way of describing a smell with precision such that it can standon its own without reference to some other information, stimuli or material or withoutinviting an unacceptably wide range of subjective perceptions of what the mark reallyis. Even if smells can be completely and precisely represented graphically, thereremains the doubt as to whether they should be registered in principle as smells are notgenerally recognised by the public as performing a trade mark function.

Bainbridge, supra note 21, at 227. For an argument against the registration of scent marks, seeDouglas D. Churovich, Scents, Sense or Cents?; Something Stinks in the Lanham Act, 20 ST.Louis U. PUB. L. REv. 293 (2001).

Further illustrating the barriers to scent mark registration in the E.U., as well as the E.U.'sarguable opposition to scent mark registrations, the Fourth Board of Appeals recently rejected ascent mark application with a graphic representation consisting of a rectangle with various bandsof color resulting from digitized electronic signals emitted from the sense itself. See Case R186/2000-4, Institut pour la Protection des Fragrances' Application, 2005 E.T.M.R. 42. TheBoard reasoned as follows:

[T]he coloured matrix filed does not comply with the graphic representationrequirements ... as it does not allow the relevant public to perceive the identity of thesign or to determine the extent of its protection. It is not sufficient for the sign to betechnically capable of reproduction. The [sign] must also be perceived as such byusers of the register and it must enable them to obtain the necessary indications inorder to be able to interpret this.

Id. 17. The Board rejected the argument that the image could be deciphered by reference tooutside information, as well as the argument comparing the graphic representation to the"undecipherable" use of a stave and musical score for sound mark registrations. Id. 18. TheBoard explained:

[The] relevant public is not generally accustomed to the nature of the representationcode used by professionals in the perfume industry. As the technique of graphicallyrepresenting olfactory nuances by a set of coloured points or stripes positioned


In stark contrast to the European Union's approach, the UnitedStates trademark system poses no bar, theoretical nor practical, to theregistration of scents, as long as the scent is distinctive and not aninherent attribute or natural characteristic of the goods. 196 In fact, theU.S.P.T.O. has registered the scent of plumeria blossoms for sewingthread' 97 and various fruit fragrances for lubricants and motor fuels. 198

Registration of a scent in the United States requires a largequantum of evidence to prove that the scent functions as a trademark.199

Like a sound, the application does not require a drawing. Rather, theapplicant must provide a detailed written description of the markexplaining the scent.200 Submitting a sample of the scent satisfies thespecimen requirement. 20'

according to two axes is not known outside the circle of initiated professionals, therelevant public cannot perceive the reproduced image as a code. It also does not haveany key with which to read this image, containing indications relating to... theparameters and values to be attributed to the axes, such that even the nature of thecode to be applied is unknown ....

Id. The Board also rejected the use of a description to aid in the representation of the scent. Thedescription stated the mark was "' [a] lawn green note, citrus (bergamot, lemon), pink floral(orange blossom, hyacinth) musky ... ' Id. 2. The Board correctly noted that there was noway to perceive what the description meant to convey, which rendered the description useless.Id. 18. While this Note advocates the use of a description to facilitate immediate understandingand recognition of a scent mark, see infra text following note 216, I agree that the descriptionitself must be readily comprehensible to the senses, such as the scent of apples or fresh bakedbread, as only a sophisticated nose would recognize a "lawn green note."

196 See In re Clarke, 17 U.S.P.Q.2d 1238, 1239 (T.T.A.B. 1990). The Board distinguished

between the registrability of scents supplied by the applicant and "scents or fragrances ofproducts which are noted for those features, such as perfumes, colognes or scented householdproducts." Id. at 1239 n.4.; see also T.M.E.P., supra note 56, § 1202.13 ("Scents that serve autilitarian purpose, such as the scent of perfume, would be functional and not registrable.");Randall Frost, Trademarking: Senses and Sensibility, http://www.brandchannel.com/featureseffect.asp?pf id=207 (Apr. 26, 2004) (smell of fresh-baked bread would be functional asapplied to baked goods, but a strong mark if applied to computers or cars).

197 Celia Clarke d/b/a Clarke's Osewez, Reg. No. 1639128. The application described themark as "a high impact, fresh, floral fragrance reminiscent of plumeria blossoms."

198 Mike Mantel d/b/a Manhattan Oil, Reg. Nos. 2463044 (cherry scent), 2568512 (grape

scent), 2956156 (strawberry scent).199 T.M.E.P., supra note 56, § 1202.13. For example, in In re Clarke, the Board found that

Ms. Clarke had established a prima facie case of distinctiveness and, as such, the scent functionedas a trademark for embroidery yam and thread. In re Clarke, 17 U.S.P.Q.2d at 1240. Ms. Clarkepresented evidence that her product was the only scented yam on the market, her advertisementspromoted the scent of her product, and customers recognized her company as the source ofscented yam. Id.

200 T.M.E.P., supra note 56, § 807.09; C.F.R. § 2.52(e) (2003); see, e.g., Midwest Biologicals,

Reg. No. 2560618 ("The mark is a scent mark having the scent of bubble gum.").201 If the product is small enough, the applicant may submit the actual product. See T.M.E.P.,

supra note 56, § 904. For example, the application in In re Clarke included a sealed kitcontaining a sample of the scented yam, which the Board found to be a sufficient specimen. 17U.S.P.Q.2d at 1239. However, the U.S.P.T.O. requires the specimen to "be flat, and not largerthan 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long." 37 C.F.R. § 2.56(d)(1)(2003); T.M.E.P., supra note 56, § 904.03. If the product sample exceeds these measurements,the U.S.P.T.O. will accept a substitute specimen, such as a sample of the scent itself. T.M.E.P.,supra note 56, § 904.03; Hammersley, supra note 32, at 133 (noting process used by the


The United States' registration procedures are unsatisfactory,creating an administrative burden on the U.S.P.T.O. and legal obstaclesto trademark enforcement and determinations of infringement. 20 2 Infact, the Board in In re Clarke arguably recognized the possibleproblems with the current registration procedures of allowing adescription to represent a scent mark, but commented that the "era ofscratch and sniff registrations is not yet upon us. '203

Interestingly, the European Union's treatment of olfactory marksreflects many of the problems associated with the current registrationprocedures for scent marks in the United States. First, the description ofthe scent illustrates a problem of perception because scents are verysubjective and it is very difficult to unambiguously define a scent. 204 Ifconsumers or searchers of the registry do not know what a"balsamically fruity smell with a slight hint of cinnamon" or the "scentof plumeria blossoms" smells like,205 then the mark does not identifysource for those consumers, notify those competitors of the scope of themark holder's rights, or effectively enforce the trademarks againstinfringement. 206

fragrance industry to present product samples satisfies specimen requirement). According to Ms.Hammersley, "[a]pplicants soak blotter paper in the fragrance. Then, for registration purposes,the applicant hermetically seals the paper holding the scent to ensure the applicant preserves thefragrance." Id.

202 See, e.g., Churovich, supra note 195, at 293, 312-14; James E. Hawes, Fragrances as

Trademarks, 79 TRADEMARK REP. 134 (1989).203 In re Clarke, 17 U.S.P.Q.2d at 1240 n.6.204 Mr. Churovich describes many of the difficulties with relying on a description of a scent:

Anyone ever attempting to describe an odor has encountered the difficulty inherent incommunicating that information to another individual. Accordingly, several questionsimmediately present themselves. Upon what basis does one describe an olfactoryimpression to another? How can one be sure that the other individual has had similaror sufficient experiences upon which to compare the description communicated andarrive at the desired or correct understanding? ... Hence, it would be dubious indeedto claim that any two individuals ever had the same true understanding of any givenscent.

Churovich, supra note 195, at 306; see also Bainbridge, supra note 21, at 224 (noting thatdescribing a scent presents two problems: accuracy and subjectivity). But see Hammersley, supranote 32, at 131 ("Description of a fragrance mark is problematic because there is no unambiguousway to define a scent by graphical and instrumentation techniques. However, this is notnecessarily a problem for fragrance marks because Congress has allowed imprecise definitions ofmarks for some time.").

205 Such descriptions presuppose that the person reading the description immediately knows

what a "balsamically fruity" scent or a plumeria blossom smells like. See Bainbridge, supra note21, at 225.

206 Mr. Churovich further notes the problem with relying on a description:[A]ccurate scent descriptions cannot effectively be communicated through language.All of the personal perceptions, biases, and physical limitations would frustrate anysuch attempt. Furthermore, this approach will unduly burden the system withunmanageable strife during the processing of each scent claim, since the claimant willundoubtedly seek to register a description as vague as possible to attain the broadestpossible protection while the Examiner will look for a narrow and specific descriptionfor ease in administration.


Second, olfactory perception is unique to the individual. 20 7 Thismakes it difficult to determine whether a fragrance is indicative ofsource or whether the consumer would be able to distinguish goodsbased on their respective scents.208 More importantly, difficulties arisein infringement actions, such as determining whether there is consumerconfusion.20 9 How will jurors, let alone judges, distinguish between twoscents when each smells different to each individual? 210 Neither thedescription nor the specimen resolves this problem.211

Ideally, the implementation of a smell classification system wouldfacilitate olfactory mark registration.212 Until then, recent advances in

Churovich, supra note 195, at 312.207 See id. at 302-04 (discussing the subjective nature of the olfactory sense).208 Id. at 316-17 (questioning whether consumers purchase scented products because the

fragrance assures them of the quality of the good or because the concept of scent appeals tothem).

209 Id. at 306-07. Courts ascertain the existence of consumer confusion by applying a multi-factor test, which includes comparing the similarity of the marks. See supra note 26.

210 Churovich raises several questions concerning infringement:

[Wihat would constitute infringement of a scent mark? That is, how similar is toosimilar? A quick cross-reference to the discussion of registration above will highlightthe extremely nebulous nature of such questions. Even if a recordation standard isultimately established, how will infringement be regulated and enforced? Is there anyeffective testing procedure that can be feasibly administered in an infringement suit? Ifa jury is seated, will each be required to ascertain the similarities between competingscents? How can either party in such a suit possibly hope to recognize, much lessspeak to the subjective perceptive scent memories of each juror and the judge,particularly when the judge and jury are unable articulate [sic] the memoriesthemselves? What types of criteria must be met before an individual is qualified to siton such a jury? While such questions are daunting, it is perhaps even more disturbingthat the answers are as evasive and insubstantial as the scent memories that are causingthem to be asked.

Id. at 313-14; see also Hammersley, supra note 32, at 150 ("[S]cent mark infringement is 'moredifficult to detect and quantify with precision.' ... [T]he court will need experts to testify on theinterpretations of certain scents.... [S]cent interpretation is inherently subjective, and thereforea court's attempt to objectively apply trademark law to possible scent mark registration isimpossible.") (citations omitted); Hawes, supra note 202, at 154-55 (discussing infringement offragrances).

211 Churovich, supra note 195, at 306. Churovich explains:Even if a sample of the odor was available and presented, is there any guarantee thesecond individual will sense and remember the odor in the same way as the first?What could influence, or even destroy the proposed communication? Perhaps thesecond individual is suffering from a mild headcold, or just drank a cup of herb tea.What if the second individual was in a different city? An unlimited list of distortioninducing factors can be imagined that would directly influence or even preclude theline of communication sought by the two individuals. The subjective and keenlypersonal nature of scents guarantees that confusion would always be present in varyingdegrees as between two or more individuals.

Id.212 See Hidaka, supra note 55, at 1125 (recognizing that until there is a "properly recognised

and thorough smell classification system" in the E.U., "smells will not be registrable"); BettinaElias, Do Scents Signify Source?-An Argument Against Trademark Protection for Fragrances,82 TRADEMARK REP. 475, 491 (1992) ("Given this potential lack of uniformity in theadministration of a fragrance mark system, some type of objective standard is called for.


technology may improve registration procedures. For example,"electronic nose" analysis of an olfactory scent imitates the humansense of smell, creating a digital file of the scent that can be pictoriallydisplayed.21 3 Alternatively, spectrograms could be utilized to visuallydepict scents.2 14

While the above-mentioned representations of olfactory markswould assist courts in assessing infringement, facilitating enforcementof trademark rights, such representations alone would not educate a newentrant in the marketplace about possible infringement. However,immediate access to a graphic drawing, a description, and the specimen,would further this goal. As such, the description, though inadequate byitself, remains necessary for immediate, albeit imprecise, information onthe mark. Further, although subjective, opportunity to smell the markwould provide insight as to the nature of the mark. Ideally, a user of theregistry would be able to obtain a sample of the scent upon request.2 15

Alternatively, a new process could encode scents as digital data andupload them on the World Wide Web. Web users upon accessing thefile could smell the scent through a speaker attached to the computerthat plays smells rather than music. 216 While enabling access to suchtechnology may be costly, 2 17 the expense should be worth the ultimateprivilege of possessing a scent.218

However, unlike the color context, there does not exist any comparable system of fragranceclassification or 'odor dictionary' upon which a fact finder might rely.").

213 See Jennifer Ouellette, Electronic Noses Snuff Out New Markets, INDUSTRIAL PHYSICIST,

Feb. 1999, at 26. This technology would greatly aid courts in ascertaining infringement. See id.at 27 ("Human experts are subject to such variables as fatigue, health, allergies, mood, andpersonal preferences, which affect the reliability of the sensory evaluation. 'What the electronicnose now offers is the ability to put down a descriptor for an odor or flavor in terms of hardfigures."') (citation omitted). The use of an electronic nose has been suggested in the EuropeanUnion, but was rejected by the court because of "the inability of the... [electronic nose] sensoryanalysis and graphic profile to provide a graphic representation which could properly be regardedas unique to the" smell sought to be registered. See John Lewis of Hungerford Ltd.'sApplication, 2001 E.T.M.R. 104, 51. Interestingly, NASA is currently developing an electronicnose to detect smells and other odors during space exploration. See Karen Miller, ElectronicNose, SCIENCE @ NASA, Oct. 6, 2004, http://science.nasa.goviheadlines/y2004/06oct enose.htm?list1055652 (last visited Sept. 7, 2005); see also Dr. Limin Zhu et al., QualityControl of Flavours in the Pharmaceutical Industry Using Electronic Noses, Jan. 6, 2001,http://www.presearch.co.uk/pages/products/brochures/I 120/Merck%/2OEnose%/2OPublication.pdf.

214 See Churovich, supra note 195, at 299-303 (discussing the use of vibrational theory to

depict the energy of scents).215 As opposed to visiting the U.S.P.T.O.216 This technology was invented in 1999 by DigiScents. See Charles Platt, You've Got

Smell!, WIRED MAG., Nov. 1999, at 256, 258 (explaining the author's first-hand experience withthe technology and his ability to smell oranges online). The company has since gone out ofbusiness for lack of consumer interest.

217 The U.S.P.T.O could provide its federal depository libraries with computers equipped with

this technology.218 This Author recognizes the costs associated with these recommendations; however, a full

discussion of costs is beyond the scope of this Note.

A NEW TRADITION

CONCLUSION

The registration of color, sound, and scent nontraditionaltrademarks necessitates increased specificity and precision. Increasedspecificity in color, sound, and scent registrations would benefit UnitedStates trademark law by protecting the interests of the consumer, thetrademark owner, and the marketplace. As a result, trademarkregistrations would more clearly define nontraditional marks and wouldbetter protect registrants' rights. The trademark registry would moreeffectively provide notice to a prospective user of an identical orconfusingly similar mark before that user expends large sumsdeveloping and promoting a new brand. Additionally, increasedspecificity would minimize consumer confusion as to source, enablingthe consumer to correctly identify and purchase its preferred goods andservices.

By requiring the use of an international color code, color markregistrations would provide precision and enable clear identification ofunique colors. Publishing a color drawing and a facsimile of thespecimen in the Official Gazette would provide increased clarity andnotice to the marketplace. Sound mark registration should includepictorial representation by detailed musical notation or a sonogram toenable quick comparison of sounds. Additionally, requiring that adescription must supplement the representation would improvecomprehension of the mark. Availability of the sound to searchers ofthe registry in a digital audio format would also enable a clear andprecise understanding of the scope of the mark.

Olfactory scent mark registration would benefit from implementinga smell classification system or adopting other technologies such as anelectronic nose or spectrogram, enabling quick identification of, anddifferentiation among, scent marks. Providing opportunities to samplethe scent in conjunction with immediate access to a graphic depictionand a precise description would provide further clarity as to the natureand scope of the mark.

United States trademark law would be stronger and more effectiveif it incorporated several of the European Union's registrationrequirements. Further, by utilizing current registration procedures totheir fullest potential, United States trademark law would provide thespecificity and certainty needed to create and protect rights innontraditional trademarks. While these new methods may be costly,they would aid in administration of the trademark system, create legalcertainty, and further the policies of United States trademark law.

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27 Cardozo l Rev 457

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