Trademark Evolution
by Susan M. Kornfield, JD & Angela Alvarez Sujek, JD, Bodman LLP

New types of trademarks are emerging in the early 21st century. According to a 2006 survey by Business Week and Interbrand (www.interbrand.com), the five most valuable brands in the world are Coca-Cola ($67 billion), Microsoft ($56.9 billion), IBM ($56.2 billion), GE ($48.9 billion), and Intel ($32.3 billion). These figures are not product sales or market capitalization. They represent the estimated market value of the brands themselves.

Your corporate brand may not be valued in that range, yet (a few years ago, Google didn't exist, but it was number 24 on the 2006 brand-value list: $12.3 billion) but working with branding professionals and trademark attorneys, there are steps you can take to increase the strategic and market value of your brand.

These new types of brands, notably scent marks and touch marks, are best understood against the backdrop of classic trademark law. Most of us are quite familiar with brands that fit in the following categories:

• Word marks, such as "KLEENEX"
• Slogans (another type of word mark), such as "Melts in Your Mouth, Not in Your Hands"
• Graphic symbols ("logos"), sometimes combined with words or letters:
  
  
  
  
• Sounds (for example, the three tones for the National Broadcasting Company, the Intel chime, and the sound of Microsoft Windows software at start-up)
• Nicknames such as FedEx for delivery services, HoJo's for hotel services, the Volkswagen "Bug"
• Stylized lettering (not just the word "Kellogg's" but the graphic appearance of the brand):
  
  
  
  
• Brands derived from the design of the product itself (for example, the shape of the Coca-Cola bottle and the user interface of the i-POD):
  
        
  
  
• Brands created from the color of the product itself (such as Nexium's "purple pill" and Owens-Corning's pink for fiberglass insulation)
• Graphic elements of product packaging (the red and white label of Campbell's soup cans or the visual appearance of the books in the "For Dummies" series):
  
                    
  
  

Let's summarize a few trademark principles that form the bedrock of your brand's power. When choosing a trademark, think "distinctive" and "not related to the goods and services" and "creative," and you end up with a brand that the law will protect as powerful. An emerging online bookseller could have been named "www.booksonline.com" but instead chose the name "www.amazon.com." In so doing, it did not limit its business to books, and it created a brand, not just a name. A company that sold a book about computers, then expanded to other subject matter, chose a name " . . . for dummies" that tapped into our sense of humor and self-deprecation combined with a distinctive graphic look (color, font, layout) that allows consumers to instantly recognize a book they had never seen before as part of a series that they know well.

The Legal Definition of a Trademark
Legally, a trademark is "any word, name, symbol, or device, or any combination thereof" that is used to "identify and distinguish ... goods, including a unique product, from those manufactured or sold by others." You can see that the definition does not exclude anything from being a mark so long as it is distinctive and functions to identify a common source. Based on this definition, we have seen a combination of elements in a Mexican restaurant (the building's exterior, signage, kitchen floor plan, decor, menu, serving equipment, uniforms, and other features reflecting the restaurant's Mexican theme) qualify for "trade dress protection" if the combination is distinctive.

Scent Marks (Olfactory Marks)
In 1990, the U.S. Trademark Office allowed registration of a distinctive scent to identify sewing thread (In re Clarke, 17 USPQ2d 1238 [TTAB 1990]). As a result - now think about this - the company that thought to infuse its sewing thread with the fragrance of plumeria blossom has the legal power to prevent anyone else in the country from selling thread that smells like a flower. Of course, one cannot secure a "scent mark" for a product that is supposed to smell, because in that case the smell is a part of the function of the product, and trademark law does not protect functional aspects of a product. So you cannot get a trademark registration on the lemon scent for your housecleaning product, but you can do so for your series of books on semiotics and religion.

Of course, these branding choices, like all branding choices, require careful attention to a number of factors. Smells powerfully connect us to a time or an experience (good or bad). A scent that is attractive to one person can be off-putting to another. Smells, like most brands, are highly cultural. And some people are seeking to eliminate smells from their product purchases. Although product designers would want to work closely with their branding consultants before launching such a product, for companies thinking about creating a connection between a distinctive smell and a product identity, trademark law can offer very important support.

Touch Marks
In the fall of 2006, the International Trademark Association resolved that "it is possible that touch characteristics can function to indicate the origin of goods and services," and "providing trademark protection for touch characteristics that function as marks will enhance the ability of consumers to identify the source of products or services. A properly defined touch characteristic that is distinctive in relation to a product or service may function as a trademark or service mark and, therefore, in appropriate circumstances, should be entitled to trademark recognition, protection and registration."

What does this mean? It means you should at least consider the tactile characteristics of your product packaging to see if you can develop an aspect of the packaging that is distinctive, is not a feature that gives the product itself greater value (such as stability, ease of use, longer shelf life); will not describe the product or its features, characteristics, or ingredients; and is not commonly used in your industry. As you might imagine, choosing a tactile aspect of your product packaging that is unrelated to the product itself means adding a feature that your target audience would not associate with that product. This is a project that involves product designers, branding specialists, test marketing, and your new best friend, the trademark lawyer.

Don't be daunted by the fact that touch marks are in a class of trademarks currently referred to as "nontraditional" trademarks. Until recently, so were sound marks, marks comprised only of color, and trade dress for services (such as restaurants), or that the U.S. Patent and Trademark Office has not yet registered a touch trademark. Perhaps you will be the first?

Susan M. Kornfield chairs the Intellectual Property Group Practice at Bodman LLP and teaches copyright law at the University of Michigan Law School.

Angela Alvarez Sujek is an attorney at Bodman specializing in national and international trademark law.