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Melissa E. Roth*


5 giggle, 2 or a lion's roar? 3 Smell fresh cut grass 4 or plumeria blossoms? Or see the colors pink6 or brown? 7 Traditionally, trademarks convey

What comes to mind when you hear the sound of chimes,' a child's

source and quality information to consumers through the use of brand
names, 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 to nontraditional 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 for learning 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' being the one just below middle C, the 'E' the one just above middle C, and the 'C' being middle

C .... ").
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 hardens when 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 chocolate brown 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, 78 TRADEMARK REP. 267, 270 (1988) (explaining "SANKA designates a decaffeinated coffee made by General Foods Corp.; XEROX the dry copiers made by Xerox Corporation .... A stylized penguin is the symbol of a line of paperback books published by Penguin Books ... ").



[Vol. 27:1

however, trademarks appear in new and innovative contexts. 9 Companies employ new branding techniques that utilize "nontraditional marks"' 0 such as color, sound, and even scent to distinguish their products from competitors' products and entice consumers." Businesses utilize these symbols not only as source signifiers, but as promises of reliability and quality.' 2 As companies expend resources
9 A. Michael Froomkin, When We Say US, We Mean IW!, HOUS. L. REV. 839, 840 (2004) 41 (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 NONTRADITIONAL

THE U.S. (2000). However, in April 2004, Ecuador granted registration of the world's first texture trademark. The mark consisted of a crackle glass texture on a bottle. World's First Texture Trademark Registered in Ecuador, 59 INTA BULLETIN (Int'l Trademark Assoc., New York, N.Y.), Dec. 15, 2004. The actual texture of the bottle was reproduced in the Ecuadorian IP Gazette 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 TRADEMARK WORLD 66 (Sept. 2004). Mr. Phillips also advocates another nontraditional mark-the do-ityourself mark. Id. The do-it-yourself mark is assembled by consumers post-purchase; for example, the "wedging of green-skinned lemons into bottles of CORONA beer" is the creation of a trademark. Id. Nontraditional trademarks have also been labeled non-conventional, exotic, new, or extraordinary. Stefano Sandri & Sergio Rizzo, Introduction: Non-conventional Trade Marks?, MANAGING INTELL. PROP. (Brand Management Focus 2004), Apr. 2004, available at &=F=F; see also Posting of Jeremy Phillips, There's Got to Be a Better Name?, IPKat, 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 because it "do[es] not convey sufficiently the rich vein of folly with which such marks should more appropriately 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 its combined peanut butter and jelly food spread. Reg. No. 2478798. The WNBA has registered the colors 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 customers inside the shop, and a major British bank serves fresh brewed coffee at its branches because the familiar smell comforts and relaxes customers. See, e.g., Martin Lindstrom, Sensory Brand Management: It Makes (Five) Senses, writing&archive id=69 (last visited Sept. 5, 2005) ("The opportunity of brand building by leveraging the five senses is wide open. Brands are hovering in the wings, as an audience of our highly receptive senses sits in a darkened theatre, anticipating a marketing show that hasn't yet begun."). 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 advent of commercial trade, trademarks were used to identify the manufacturer of goods in the marketplace. Id. This guaranteed that the manufacturer of the goods would be held responsible for defective merchandise. Id. As markets expanded nationally, marks served as identifiers of source, 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 is the quality they seek. See Robert N. Klieger, Trademark Dilution: The Whittling Away of the Rational Basis for Trademark Protection, 58 U. PITr. L. REV. 789, 790 (1997) (discussing the evolving finctions of trademarks). While there are still certain "manufacturer" brands that provide an instant product-source connection, these trademarks "are promises, not as to a




creating and developing these unique brand personas, 13 they rely on trademark law to protect their investments.14 Trademark law protects against consumer confusion about the source of products sold under a trademark, instilling confidence in consumer purchases and reducing information and transaction costs in the marketplace. 15 Trademark law also safeguards a mark owner from having the "fruit of his labor misappropriated"' 16 by infringers, creating incentives for the production of high-quality goods and for preserving the mark's goodwill. 17 While these protections apply indiscriminately to nontraditional trademarks,18 the current registration practices for such
producer, but as to the fulfillment of a perception." Jerre B. Swann, Sr., Dilution Redefined for the 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 are remembered by consumers selecting a purchase." Bella I. Safro & Thomas S. Keaty, What's in a Name? Protection of Well-Known Trademarks Under Internationaland National Law, 6 TUL. J. TECH. & INTELL. PROP. 33, 34 (2004); see James Surowiecki, The Decline of Brands, WIRED MAG., Nov. 2004, at 206 ("The brand value of companies like Coca-Cola and IBM is routinely calculated at tens of billions of dollars, and brands have come to be seen as the ultimate long-term asset--economic engines capable of withstanding turbulence and generating profits for decades."). 14 While the expenditure of large sums of money will not always give rise to legally protected rights, those who have invested in developing goodwill and reputation will be allowed to reap the benefits 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, at 791 ("[T]hese functions of trademarks as product, source, and quality identifiers, and as vessels for the development of brand personas, elevate trademarks above physical assets and other forms of intellectual property as the most valuable assets of many companies."); see id. at n.6 (sources cited); 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 source and quality identifiers and indirectly protects the 'commercial magnetism' imbued in marks through 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 such registration helps to prevent confusion about the source of products sold under a trademark and to instill in consumers the confidence that inferior goods are not being passed off by use of a familiar trademark."); MCCARTHY, supra note 8, § 2:3; see also Peter Menell & Suzanne Schotchmer, Intellectual Property, in HANDBOOK OF LAW & ECONOMICS 59 (forthcoming, on file with author) ("Trademarks reduce information and transaction costs in the marketplace by allowing 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 cheaply to 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. 791333 (1946), reprintedin 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 trademark registration, as do many foreign countries. The Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS) defines a trademark as: Any sign, or any combination of signs, capable of distinguishing the goods or services

Id. consumers have been educated to recognise. Consumers readily recognize traditional trademarks such as brand names and logos as identifying the source and quality of goods and services. Members may require. consumers rarely have the opportunity to make a direct comparison between similar nontraditional marks and. Ecuador. in particular words including personal names. supra. as a result.. Hong Kong. even where consumer recognition is not an issue. see infra Part I. MarchingDucks and Cherry-Scented Racecar Exhaust: Protecting NontraditionalTrademarks. numerals. supra note 8. 15. Smell. Members may make registrability depend on distinctiveness acquired through use. See Menell & Schotchmer. . 19 For an in-depth discussion of the registration procedures for nontraditional trademarks. 33 1. James Burrough Ltd. Cinnamon Buns. 81 (1994).M. Colour and Shape Trade Marks: An Unhappy Flirtation. shall be eligible for registration as trademarks. Apr. 1976) (noting that the consuming public is unlikely ever to be presented with an opportunity for side-by-side comparison of two similar marks). § 3:2. in particular. the mark would neither serve its function nor lower consumers' search costs. e.L. 774 (2005) (noting that color. Marrakesh Agreement Establishing the World Trade Organization. However. Hungary. 540 F. 15(1) [hereinafter TRIPS Agreement].2004 J. and three-dimensional marks are not readily perceived as source identifiers). words and devices (pictorial signs) and combinations of words and devices as trademarks. 148:5 (4th ed. 63:5. supra note 15.2d 266. 2005). at art. 71:5. Jerome Gilson & Anne Gilson LaLonde.. Such signs. Sound. 22 Further. (noting that consumers are not aware that some types of marks operate as trademarks). 219. consumers may not readily acknowledge that a color. 72:6. face increased difficulty identifying and distinguishing their desired product or service. at 63 ("Consumers benefit from concise and effective designations of the source of products. Sign of the Beefeater. See MCCARTHY.g. A mark functions as a trademark if it identifies and distinguishes the goods of one manufacturer from the goods of another. figurative elements and combinations of colours as well as any combination of such signs. 1994. if consumers are unable to recognize a trademark. 27:1 marks 19 pose several problems and arguably impede United States 2 0 trademark law from achieving its underlying objectives. scent. § 3:1. 22 Id. Id. Portugal. Agreement on Trade-Related Aspects of Intellectual Property Rights. Inc. 21 David I. shall be capable of constituting a trademark. TRADEMARKS THROUGHOUT THE WORLD §§ 47:5. usually as the manufacturer of goods or provider of services. granting trademark protection in nontraditional marks may incite rather than of one undertaking from those of other undertakings. that signs be visually perceptible. 129:5. Bainbridge. Annex IC. Where signs are not inherently capable of distinguishing the relevant goods or services. 2 1 However. letters. at 777 (commenting that consumers may not recognize nontraditional trademarks as trademarks but rather as decorative or inherent aspects of the product itself). 23 See. Greece. 95 TRADEMARK REP. See I ANNE-LAURE COVIN. Peru. 222."). or scent functions as a trademark.460 CARDOZO LA W REVIEW [Vol. see also Gilson & LaLonde. see infra Part III. A trademark also signifies that goods bearing the mark come from the same source and are of consistent level and quality. sound. v. They have traditionally recognised these as identifying the undertaking responsible for putting the goods in question on the market. 275 (7th Cir. Legal Instruments-RESULTS OF THE URAGUAY ROUND vol. BUS. 20 For a more in-depth discussion of the policies underlying United States trademark law. and Spain also recognize nontraditional trademark registration. 773. 126:6. Bainbridge notes: In the past. sound. 23 As such. Mr. 31. as a condition of registration. L.

1992). Beautyco. under the Lanham Act. 1993). e. In re Majestic Distilling Co. § 1114 (2005). Polaroid Elecs.W. Inc. the mark is legally protectable. § 1117 (2004).. Dieter v.. Co. supra. it is in a business owner's best interest to know whether his investment in developing a new product infringes on an existing right before making the expenditure.. Roosevelt Bldg. of S. & J. Inc. Color. or to cause mistake. From a business standpoint. 1989). the owner must prove that he owns the mark.C.. Ameron. 972 (10th Cir.S.. use in commerce any reproduction. Section 32(1) of the Lanham Act. B & H Indus.2d 628. Id. rendering the evaluation.S. Merchant & Evans. v. This individualized perception not only complicates consumers' purchasing decisions in the marketplace. and scent marks also cannot be identified with great precision in the registration process. v. Sally Beauty Co. 2004). Renee Int'l Trading Corp.S. Other factors courts consider include: similarity of the goods.T.P. Polaroid Corp. See.3d 964. In order to succeed in an action for trademark infringement. v. 2002). The statute states in relevant part: Any person who shall. failure to conduct a search can lead to a finding of bad faith or willfulness.. copy. 1315 (Fed. 1961). and the infringer used the mark in commerce in a manner causing confusion. or to deceive . Inc. but also causes problems in the United States Patent & Trademark Office (U. 791 F. a subsequent user of a trademark is deemed to have constructive notice of the registrant's claim of ownership.. counterfeit. v. 967 F. Reidl. Inc.g. 287 F. i5 U. Prods. 1992). courts consider the degree of similarity between the registered mark and the allegedly infringing mark. Inc. Lanham Act § 22. 304 F. UnderstandingBasic Trademark Law: A Primer on Global Trademark Protection. offering for sale. From a legal standpoint.3d 1327. scent. See discussion infra notes 137-45. sound. 495 (2d Cir. Fla. and the defendant's intent. 26 Additionally.O. at 222.2d 423. and enforcement of nontraditional marks inconsistent and unpredictable.C.g. v.2d 316.g.. distribution. 888 F. and one may view the .S. Co. another may perceive as simply a sound. Gallo Cattle Co.. v. 212-18 and accompanying text. 25 Conducting a search of the trademark registry prior to adopting a trademark is important for several reasons. In assessing confusion. or advertising of any goods or services on or in connection with which such use is likely to cause confusion. Course Handbook Series.. The current registration practices make it difficult for trademark owners to identify their nontraditional marks with the desired precision. Cir. in UNDERSTANDING BASIC TRADEMARK LAW 2004.. shall be held liable in a civil action by the registrant . 963 F.2d 322.2d 215. or color. Trademarks.). Similarly. Keds Corp.. 315 F. e.2d 492. L & L Wings. & Literary Prop. Anheuser-Busch. or colorable imitation of a registered mark in connection with the sale. 320 (4th Cir. v. 222 (1st Cir. 1986). 2003). § 1072 (2000). 27 Bainbridge. 428 (5th Cir. Sno-Wizard Mfg. addresses infringement of registered marks. 962 F. subjecting the infringer to payment of damages or profits.2d 1280. 880 F.. Inc.. Corp. registration... Trademark examiners may have trouble differentiating between two competing marks. 15 U. 1329 (7th Cir.. what one consumer may perceive as a source identifier.3d 1311.C. See. 26 Additionally. trademark registry searches 25 may not provide notice to a new entrant in the marketplace that its prospective venture could trigger an action for trademark infringement.. at 35. Gallo Winery v. See. 24 As a result. evidence of actual confusion.. Paul W. While precision is arguably not a goal of the current registration practices. at 266 (PLI Patent. a trademark owner may not have the requisite notice that its mark is being infringed. Eisenmann Prods. 1290 (9th Cir. the registration practices are not fatally flawed and can be remedied by adopting several additional practices. 27 Both the United States Patent and 24 ARDEN. 637 (3d Cir. supra note 21. supra note 10. 178-86. Id. First. E.. 15 U.2005] A NEW TRADITION mitigate consumer confusion. 326 (1lth Cir. without the consent of the registrant. 1992). Lanham Act § 35(a).. Copyrights. Reidl. the degree of recognition of nontraditional marks varies among individuals. Smith Fiberglass Prods. e. 7 F. 1989).

Minn.. Inc.. Cococare Prods. sound. ARDEN. While the need for legal certainty and precision in registration practices is applicable to all nontraditional mark registrations. ARDEN. the sound of a thunderclap has been registered. and scent marks proliferate in the United States. and scent. REV. v. 218 U.. Cf ARDEN.. supra note 10. Reg. 27:1 Trademark Office (U. INTELL. supra note 10. at 27 (noting that two senior trademark attorneys handle all single color trademarks cases "to provide consistency and predictability in the handling of color applications").T. at 222.P. 113 F.T.g.N. See.. 28 See In re Int'l Flavors & Fragrances. 32 Registration is especially important in the developing area of nontraditional trademarks. 105. Trademark owners also need to see the precise nature of a pending trademark application. Co.D. Coast Wire & Rope Rigging Inc. 769 (1992) (noting "consumer perceptions are of paramount importance" in United States trademark law).462 CARDOZO LA W REVIEW [Vol. including shape. Pako Corp. Mead. 1746090. Supp..S. International Protection of Appellations of Origin and Other GeographicIndications. litigation will be difficult .2d 1755 (T.S. 113 F. Master Distribs. Inc. No. a precise expression of the character and scope of the .2d 219 (8th Cir. v.A. or the marketplace. The United States' current registration procedures for nontraditional trademarks do not effectively serve the interests of consumers. 1028. 2000). Mining & Mfg. 765. 986 F. PROP. despite the unclear and imprecise nature of the mark.Y. see also Lee Bendekgey & Caroline H.P.. Landscape Forms. federal registration is very important for nontraditional marks because registration defines trademark rights in an area of law that is not fully developed). e. supra note 21. sound. Corp. there is an increasing need for specificity and precision in nontraditional trademark registration to ensure that the use of new branding techniques promote the policies that underlie United States trademark law. has permitted registration of nontraditional marks.. and motion. 1987). 1999).. v. 3' Therefore..3d 1361 (Fed. 30 The Second Circuit emphasized the need for precise descriptions so that courts may evaluate the mark and shape injunctive relief. supra note 10. and recognize the ubiquitous need for the registry to provide proper notice to other trademark users as to the scope of registered trademarks.S. as such marks may not be readily perceived as trademarks.T. 31 See infra Part II and notes 99-104. Faye M.. Hammersley. [mark]. Co. 82 F. as registration of color. The Smell of Success: Trade Dress Protectionfor Scent Marks. while not required. Courts will. ARDEN.) and the federal courts struggle with the inadequacy of the present procedural rules in evaluating claims for nontraditional trademark infringement. 29 lack thereof hinders trademark 3 0 protection and complicates courts' fashioning of injunctive relief. Inc. supra notes 21-23 and accompanying text. at 168. cf Olay Co.P.. so they may determine whether the new mark infringes their .. 32 Increased specificity in nontraditional trademark registrations would more clearly delineate and protect trademark holders' rights. Amsted Indus. 2 MARQ. L. 110 (1998) (noting that.S.g... see Landscape Forms.3d at 381 ("Without. Beautone Specialties. 1045 (S. at 40. 1993). 2d 997 (D. see. 82 TRADEMARK REP. 183 F. 2 U. W.B. at 37 (citing examples). Minn. For example.P.Q. e. texture..3d 373 (2d Cir. Cir.2 8 Although specificity is not critical to effecting registration. taste. supra note 10. 33 More specific registrations would allow challenged mark as infringing while another may not..Q.O. 1983) (court relied on precise hue of color pink defined in a color code to fashion injunctive relief).. 33 Bainbridge. v. be unable to shape narrowlytailored relief if they do not know what.. 1997)..O."). 29 The U. v. deserves protection. Beacon Broad. Columbia Cascade Co. the focus of this Note will be limited to the nontraditional trademarks of color. manufacturers.

34 Additionally. Case C-447/02 P. See Pen Hosford. 38 Notably. http://europa. with regard to nontraditional trademarks.R. 17:37 EST).g. 39 The Court has noted that "[t]he registration system for trade marks constitutes an essential element of their protection. to legal certainty and sound administration.3d 1361 (Fed. 34 Bainbridge.C. 2004 WL 59751 (Oct. 2003 E. 23. as well as slogans and retail services. Joost Kist H.htm (last visited Sept. e.M. 183 F. 161) correctly notes. and geographical marks. to discover possible competition in the marketplace and safeguard against possible infringement claims before expending large sums developing and promoting new marks.g. is the highest court in the European Union. and scents. http://www. 37.M.D. as David Keeling.J. descriptive. in Sieckmann outlined many of the policies the graphic representation requirement seeks to achieve.und Markenamt.. See In re Int'l Flavors & Fragrances. In the past five years.O. See Europa. 37 The E. Sieckmann v.M. 40 Legal certainty is the most important criteria sought in trademark registries. it becomes increasingly difficult for courts to ascertain what the applicant seeks to register and the mark's scope of protection. IPKat. such as precise identification of the subject matter.. 21. KWS Saat AG v. In en. one judge from each Member 48-52.J. increased specificity would minimize consumer confusion as to source. at 223 ("It is vitally important for undertakings to be able to determine with a high degree of predictability what they can and cannot do. at 27. See id.C. 36 the European Court of Justice (E. 2004). The E. which contributes .J.R. 35 It follows that precise definition of marks informs competitors and trademark owners of possible infringement.N.T. accessibility to the public and authorities. 33. is made up of twenty-five judges." Posting of Jeremy Phillips & Ilanah Simon. PROP. Case C-273/00. 33." Sieckmann. enabling consumers to 35 correctly identify and purchase their preferred goods and services. (2) how do you know what the applicant has registered. mitigating and possibly preempting consumer confusion.. 36 European Union trademark law is an exciting and developing area of law. 2003 E.. colors. The E. specifically sounds.T. The E.blogspot. 5. 2003. 2003. Case C-283/01."). 1999). Supp.2005] A NEW TRADITION 463 entrepreneurs. ensures that European Union legislation is applied and interpreted uniformly throughout the Member States. Recently in the European Union. Deutsches Patent.C. and precise and complete information to other businesses in the marketplace. Minn. 37. by searching the trademark registry.. MANAGING INTELL. Oct.C.C. the European Union's strict graphic representation requirement for nontraditional trademark registrations 39 provides legal certainty and accessibility 4° rights and oppose the registration. European Union Institutions and Other Bodies: The Court of Justice. 38 01_ipkittenarchive. Id. the Court discussed the registrability of nontraditional marks. 2d at 999-1000 (raising "what is 'canary yellow"' as a threshold inquiry in an action for trademark infringement and noting the breadth of the range of color encompassed by canary yellow would impact findings of distinctiveness and functionality).) 37 addressed nontraditional trademark registration and established procedures that tackle many of the concerns raised by nontraditional trademarks in the United States. 2004 E. supra note 21. the European Union has been developing its trademark law and addressing many fundamental issues for the first time.ipkitten. such as: "(1) what a trademark truly is.T. according to a . 82 F. e. It was established in 1952 pursuant to the Treaty of Paris. Cir. Further. Keeling Registers a Note of Caution on Unusual Trade Marks in Europe.R. such as the registrability of nontraditional..html (Oct. a member of the Board of Appeals of the OHIM (see infra notes 51. The success and effectiveness of marketing effort depends on this.J. See. OHIM. and (3) how can you determine the scope of protection which registration confers.J. Trade Marks in Europe-A ClearerHorizon?. See. Shield Mark BV v. many of the problems that nontraditional trademarks face in the registration process mirror underlying issues in trademark law. Mining. 2005).

and guarantee rights in nontraditional marks. recitation 9. the trademark laws of its Member States contained disparities. Nearly eighty percent of in-house counsel surveyed stated that legal certainty was a very important aspect of the registration process. protect. Other important factors included accuracy of examination procedures and availability of extensive searches. (L 11/1) [hereinafter Regulation]. May 2004.g. 1989 O. See id. First Council Directive 89/104/EEC of 21 Dec. Part III also suggests possible changes to the United States' treatment of nontraditional marks. 42 This Note argues that the United States would benefit from incorporating many of the steps taken by the European Union to guarantee that registration of nontraditional trademarks proceeds with specificity and provides certainty. the United States would provide trademark owners and competitors with the specificity and definiteness necessary to create. Part III discusses the European Union and United States' treatment of nontraditional trademarks. 44 The Directive requires survey conducted by ManagingIntellectualProperty. See TREATY ESTABLISHING THE EUROPEAN COMMUNITY art. 3(c) and pmbl. 10. 27:1 policies the United States hopes to promote through its registration process. Id. at 32.J. 1993 on the Community Trade Mark. would greatly benefit United States trademark law. economic cohesion. and capital. Part II also highlights deficiencies in United States nontraditional trademark registration in light of the policies underlying the Lanham Act. Part I of this Note introduces European Union trademark law and its registration procedures. which would better effectuate the goals of trademark law. they represent positive advances for the European Union and. Id.J. 44 See supra note 43. Part II delineates United States trademark law and its trademark registration practices. 4' While the procedures adopted by the European Union do not completely resolve the problems inherent in nontraditional trademark registration. Council Regulation (EC) No 40/94 of 20 Dec.464 CARDOZO LA W REVIEW [Vol. O. MANAGING INTELL. This Note further argues that by efficiently utilizing some of its current registration procedures to their fullest potential. recitation 1.. Nov. 41 See infra Part II and notes 72-81 and accompanying text. The European Union adopted the Regulation and Directive in an . The Truth About Trade Marks. rather than furthered. 42 See infra Part III. However.. PROP. I. and scent marks. see. 1997. 1988 to Approximate to the Laws of the Member States Relating to Trade Marks. TRADEMARK LAW IN THE EUROPEAN UNION Two initiatives combine to create European Union trademark law 43-the First Council Directive (Directive) and the Community Trade Mark Regulation (Regulation).. e.J. It sought to promote social and economic harmony through the free and unhinged movement of goods. detailing their respective registration procedures for color. if adopted in the United States. (L 40/1) [hereinafter Directive]. which impeded. sound. 43 The European Union was established to create a uniform internal market among its Member States. (C 340) 3 (1997). 1994 O. services.

INT'L L. the shape of goods or of their packaging. Ireland.U. Cyprus.. Horwitz. 23 DENV. Horwitz. Professor of Law. pmbl. marks contrary to public policy. European Union at a Glance. supra note 43. 47 A trademark may be any sign capable of being represented graphically.. 2. see also Regulation. particularly words. trademark law and remove internal barriers restricting free trade and competition. Greece. art.. numerals." Directive. we will see the development In light of these facts. 2000)). generic marks. 48 Such grounds include: "signs which cannot constitute a trade mark. France.. descriptive marks. The Directive states: [I]t does not appear to be necessary at present to undertake full-scale approximation of the trade mark laws of the Member States and it will be sufficient if approximation is limited to those national provisions of law which most directly affect the functioning of the internal market . The Directive defines what may be registered as a trademark. and priority. Directive. recitation 5. variables in each nation's laws make it more difficult for individuals to buy and sell. but rather to synthesize the laws of its Member States.. The New European Trademark Law. Luxembourg. Slovakia. The Netherlands. Finland. 46 The Directive was not designed to create a uniform trademark system.. Directive.. Denmark. Estonia. provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. 4." non-distinctive marks. 47 the grounds for refusing or invalidating a trademark. 3.. apparent that the Community Trademark system is absolutely necessary for Europe. See Directive. Regulation. and each nation having its own set of laws. revocation. 3. Germany. 261 (2001) (citing telephone interview with Professor J. Duran.. Italy. Directive. J. . Conflicting Marks: Embracing the Consequences of the European Community and Its Unitary Trademark Regime. supra note 43. the obstacles to successful international trade are numerous.. and the United Kingdom. J. supra note 44. LAW 245. invalidity. [T]o create a market of this kind . at 262-63. Hungary. In the long march of history.. The Directive states "it is fundamental. Id. Professor McCarthy further noted: With the world having hundreds of nations. University of San Francisco School of Law (Feb.htm# (last visited Sept. suggesting that the Community Trademark "'is a necessary step in the globalization of trade. barriers to [the] free movement of goods and services [must] be removed and arrangements [must] be instituted which ensure that competition is not distorted . It becomes very difficult for a company to stay up to date on the different laws and to keep their marks in good standing. The Regulation sought to create a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are similar to those obtaining in a national market . & POL'Y 489. letters. Professor J. Id. recitations 1. Slovenia. Sweden. in order to facilitate the free circulation of goods and 48 and the rights attempt to harmonize E. Thomas McCarthy in an interview extolled the virtues of the European Union. 45 Twenty-five member countries or states make up the European Union: Austria. marks designating geographic origin. supra note 43. Lithuania..intlabc/indexen. Thomas McCarthy. See Europa. at 490. including personal names. Portugal. http://www..europa. recitation 1. Id. See Luis-Alfonso Duran. and deceptive marks. INT'L & CoMP. supra note 43. recitation 9. supra note 43. to ensure that henceforth registered trade marks enjoy the same protection under the legal systems of all the Member States. The Directive grants Member States authority to legislate on matters not expressly mentioned in the Directive. Malta. art. 2005). Spain. Belgium. Moreover. supra note 43.. designs.2005] A NEW TRADITION their European Union Member States 45 to adapt or "harmonize" 46 respective trademark laws to comply with the Directive's provisions. art. Poland. such as procedures concerning registration. it becomes of intellectual property laws at the global level . 499 (1995). 5. 18."' Justin A. Czech Republic. recitation 3. supra note 44. Latvia. 18 ARIZ. supra note 43.

1367 (Fed. supra note 43. including a sound.M.3d 1361. While the United States has recognized the benefits registration brings to the marketplace. REv. and determines whether registration should be revoked. While the unitary system simplifies trademark registration. 27:1 The Regulation instituted a unitary trademark system in which a single registration of a Community Trade 0 Mark 5 grants exclusive protection and rights to the trademark holder in all European Union countries simultaneously.CARDOZO LA W REVIEW conferred by a trademark. For a detailed analysis of the Directive's provisions. Heidelberger Bauchemie GmbH. supra. Joost Kist H. 45.T. The application must contain (a) a request for registration of the trademark. 51 Theoretically. and exhaustion of trademark rights. OHIM examines trademark applications for compliance with registration requirements. it embodies the "principle of precision.D. such as cancellation for lack of use. 2004 E. The Community Trademark System: A Brief Introduction and Overview. its decisions open the door to the possibility of such registration. in the European Union. Regulation.5 2 While the European Union treads cautiously as to whether nontraditional marks should be registrable. 8 MARQ. 55 Sieko Hidaka et al. graphic representation ensures that the scope and nature of the mark are clearly defined and comprehensible so that searchers checking the registry can readily ascertain what is registered. licensing. and (d) a representation of the mark. Vincent O'Reilly. PROP. 33. (c) a list of goods or services to be registered. at 93. (b) identification of the applicant. this Note will use the term "trademark" as used in the United States. supra note 44. Case C-283/01. supra note 43. at 490.M. INTELL. Davies ed. or color mark. 1999). as long as it is capable of graphic representation and distinguishes the goods or services of one undertaking from the goods or services of another. 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 .O. at 262-67. examines opposition to registration.. 99. 54 Case C-49/02. 55. supra note 44. 26.R. Graphic representation is not merely a technical requirement for registration in the European Union. and its registration requirements fashion a body of trademark law that furthers policies the United States seeks to 53 promote. rather than "trade mark. 93 (2004). 49 [Vol.T.N. 52 See supra note 47. enabling a mark holder to maintain the mark throughout the European Union through use in a single country. see In re Int'l Flavors & Fragrances.R. 55 49 The Directive also limits the rights and use of a trademark. 13.. supra note 43. 50 To avoid confusion. Duran." which is the European Union's preferred term. e. 40. Shield Mark BV v. the unitary system can also be an obstacle to the system's objectives because a registration in one region will affect the registrant's ability to obtain or register trademarks in the entire European Union. any mark. abandonment. see Horwitz. its current procedures. scent. In order to register for a Community Trade Mark. while competent in their treatment of traditional marks. art. publishes marks for registration.g. 36-38. 51 See.. See Regulation. O'Reilly. L. 2004 E. create more ambiguities in trademark law than they fix with regard to nontraditional marks. 183 F. an application must be filed either at the Office for Harmonization in the Internal Market (OHIM) or at the Patent or Trade Mark Office of a Member State.. ' '54 Vitally important in nontraditional trademark registration. registers valid marks. is registrable. 1998) [hereinafter SWEET & MAXWELL'S]. 43. 53 See supra note 40. 34-41. See SWEET & MAXWELL'S EUROPEAN TRADE MARK LITIGATION HANDBOOK 34-35 (Isabel M. 93. Directive. arts. Cir.

R. and competitors can ascertain the scope of trademark protection."). 2005) [hereinafter T. guaranteeing that the mark remains an invariable indication of source. The E. 58 Graphic representation also assists authorities in properly examining. Directive. 57 Shield Mark. 3(1)(b)-(d).C. the nature of the mark. the graphic representation requirement enables precise definition of the mark so that the trademark holder. precise. 56 Sieckmann v. The European Union's second requirement for trademark protection. arts. supra note 55. and intelligible so that users of the registry can determine the precise nature of the mark.J. Hidaka. 1 49-50 60 The E.C.J. at 35. see also Abida Chaudri. 62 The Directive's distinctiveness requirement appears to be two-fold.R. SWEET & MAXWELL'S.]. durable and objective. from the graphical representation." but it also furthers the functions and policies of trademark law.C. 2.2005] A NEW TRADITION The E. 37. Ascertaining the scope of protection is important to each of these groups for different reasons. T 46. and consumers need to know how far they can extend their reliance on the source. a competitor needs to know what it can or cannot do without triggering an infringement action. 2003 E. Because registration is renewable. to function as a trademark. lines or characters. .und Markenamt. T 55. Id. 1105.157 According to the E. self-contained.T.M. 62 ensures that a trademark EU. so that [the mark] can be precisely identified. easily accessible.M.. Colour and Sound Marks in the UK and Europe. Deutsches Patent. TRADEMARK MANUAL OF EXAMINING PROCEDURE § 807.T."). consumers. 157 TRADEMARK WORLD 26.C. 59 Id. 61 Id 54 (noting the representation must be unequivocal and objective "to avoid any element of subjectivity in the process of identifying and perceiving the sign").R. the E. supra note 51. 1124 (2004) ("The policy behind this decision was to enable people checking the trade marks register to be clear about what is registered given the paper nature of the registry. requires graphic representation by "means of images. but rather a succinct description.C. T 47.C.E. 52. which does not require a graphic representation. the E. 2004 E.J. and enforcement of trademark rights is 61 homogeneous. for smell and sound marks. protection. Graphically Speaking: Registering Smell.J. 37. this requirement further guarantees that the mark will be perceived uniformly throughout its entire period of registration.J. This contradicts the United States' system. Id. 94 TRADEMARK REP. the distinctiveness requirement. requires that a graphic representation must be unambiguous and objective. 58 Sieckmann. bringing legal certainty and predictability to the registration process.P.M. supra note 43. easily accessible. has commented that such interpretation is not only essential to "the sound operation of the trade mark registration system. Trademark holders must be able to determine whether a new mark will infringe its rights.09 (4th ed. 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.T. 26 (May 2003) ("[Graphic representation] ensure[s] that infringement rights can be determined and third parties can understand. 51. Further. publishing. 2003 E. '56 The representation must be "clear. ensuring that registration. 33. Id. The trademark itself must be depicted. stipulates that the representation must be durable so that the marketplace perceives the mark in a uniform and systematic manner. a description is insufficient. The mark.J. must be capable of distinguishing goods and must have distinctive character.M. The graphic representation must be self-contained. 60 Lastly. intelligible. 53." Id. and 59 eventually protecting the mark from unfair use by competitors. at 1106. 91 48-49.

M. 66 63 Hidaka.M. see also Case C-136/02. 39 ("Save in exceptional cases. supra note 55. 64 European Union trademark law acknowledges that while consumers often recognize traditional marks such as words and logos as readily indicating source. "[T]his means the sign ha[s] gained a new significance from the perspective of at least a significant proportion of the relevant class of people. without any specific message. e. for registration.. 1116... by enabling him without any possibility of confusion to distinguish that product from products which have another origin..M. . The E.g.R.R. and it may be difficult to demonstrate that customers recognise the sound or smell as indicating origin. 2004 E. secondary meaning..C."). .e. at 1106. 2005 E. 46. Libertel Groep BV v. Case C-104/01. 63. or a Bit Fishy?. [However]..J. this may not be the case with colors. Benelux-Merkenbureau. Case C-49/02. nontraditional trademarks are unlikely to be regarded as inherently distinctive and generally will need substantial acquired distinctiveness. 65 See. REV. colours do not initially have a distinctive character. Distinctiveness is inherent when the mark is entirely unique or coined or when there is no semantic connection between the mark and the product or service. see. and of arousing feelings. Id.g.T.e. [has] 'become part of everyday language and has acquired its own meaning .. [and] the mark . or it can be acquired through consumer recognition. at 1121. Hidaka. in order to advertise and market goods or services. therefore. 1999 E. they possess little inherent capacity for communicating specific information. 27:1 designates source and enables consumers to distinguish one producer's goods from another's without confusion. L. used alongside other marks.. 3(3). supra note 55. It must therefore be accepted that colours per se may be capable of distinguishing the goods or services of one undertaking from those of other undertakings . Boots und Segelzubehor Walter Huber.T.T. 3(1)(b). Hidaka. The consumer recognition must be substantial. (internal citation omitted). 190. Id.").. 191 (2004) [hereinafter Sound.. supra note 55. 40-4 1.. in which case consumers immediately recognize the mark as distinguishing goods. at 1121 (noting that "[i]t is. supra note 55. Heidelberger Bauchemie GmbH. 99.R. arts. i. see. but may be capable of acquiring such character as the result of the use made of them in relation to the goods or services claimed.R. Acquired distinctiveness or secondary meaning requires that the public has come to identify the product or service using the mark as coming from a particular source. v. ' Id. and scents. OHIM.C.. invariably.. Id. such as words and logos. since they are. 1-2779).. which is "'to guarantee the identity of the origin of the trade-marked product to the consumer or ultimate user. 30: Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. supra note 43. Sound and Smell Trade Mark Registrations: Sound. 65 As such. e. generally accepted that nonstandard marks will rarely be considered inherently distinctive" since "such signs require larger amounts of use to render them distinctive"). 64 Directive.CARDOZO LA W REVIEW [Vol. Mag Instrument Inc.. noted: [W]hilst colours are capable of conveying certain associations of ideas. because of their appeal."' Id.. The distinctiveness requirement serves the primary function of a trademark. or a Bit Fishy] ("Smell and sound marks may face particular obstacles . at 1117. 63 Distinctiveness can be inherent.g. (quoting Joined Cases C-108/97 and C-109/97. 2003 E. 66 Hidaka. Windsurfing Chiemsee Produktions und Vertriebs GmbH v. i. [t]he possibility that a colour per se may in some circumstances serve as a badge of origin of the goods or services of an undertaking cannot be ruled out.. especially since they are commonly and widely used. consumer recognition. e. 25 Bus. sounds..

198 (1985) (discussing how incontestability provisions further the purposes of trademark law).. §§ 1051-1127 (2000). In the United States. II. Inc.C.. 1274-75. 189. 79-1333 (1946). e. 1274.. or a Bit Fishy. and colors in the European Union. Sound. Its purpose is "to eliminate judicial obscurity. In re Int'l Flavors & Fragrances. Id. Lanham Act § 43(a). Trademarks.C. 15 U. supra note 21. TRADEMARK LAW IN THE UNITED STATES In the United States. 183 F. and reducing 71 customers' search costs. v. No. 79-1333. on or in connection with any goods or services. 67 Bainbridge. Course Handbook Series. The provision states: (a) Civil action (1) Any person who. 70 It grants national protection for trademarks. reprinted in 1946 U. 68 See supra notes 21-23 and accompanying text. 2004). encouraging the production of high-quality goods and services. The Lanham Act places all United States trademark law in a single statute. reprintedin 1946 U. No. supra note 65. at 1275. provides protection for unregistered trademarks."). supra note 8. Trademark rights can be granted at the state and federal levels.A.g.S. 68 Further. 67 However. 71 See Park 'N Fly. 72 See. 1999) (noting "federal registration of a trademark does not create an exclusive property right in the mark.C. § 1125 (2000). & Literary Prop." S. indeed. at 222 (noting that consumers are more likely to recognize traditional word and design marks as source identifiers because they may be unaware that nontraditional marks operate as trademarks).A. §§ 22:1-22:11.g. For a detailed explanation of trademark law in the United States at the state level. 1366 (Fed. 1274. To protect trade-marks. 469 U. scents. at 243-44. Basic Principles of Trademark Law. or colors as indicating source. or any container . 70 15 U. and to secure to the business community the advantages of reputation and good will by preventing their diversion from those who have created them to those who have not. Federal registration under the Lanham Act provides national protection. is to protect the public from deceit. The owner of the mark already has the property right established by prior use.N. scents. Cir. Bainbridge. to make procedure simple.S. therefore.3d 1361. Federal registration does not establish trademark rights. there is a dual system of trademark law.C. these strict requirements actually promote the underlying policies of trademark law. 1274. because they make possible a choice between competing articles by enabling the buyer to distinguish one from the other. are the essence of competition.2005] These A NEW TRADITION requirements arguably restrict the registration 469 of nontraditional marks such as sounds. REP.C. Dollar Park & Fly. 69 See. consumers may not recognize sounds.S. see MCCARTHY.S. 69 As such. making clear and precise definition of sound and scent marks difficult to achieve.C. and relief against infringement prompt and effective. 72 rather. to dispense with mere technical prohibitions and arbitrary provisions. at 11-12 (PLI Patent.S. supra note 21. REP. sounds and scents are not visually perceptible. to simplify registration and to make it stronger and more liberal.N. See Anne Hiaring. Copyrights. Trade-marks encourage the maintenance of quality by securing to the producer the benefit of the good reputation which excellence creates. to foster fair competition. S. as noted. securing for a trademark's owner the profits of his good reputation. the Lanham Act codifies United States trademark law. Trademarks require national protection because: Trade-marks. whereas state registration provides rights and protection only within the geographic territory of the state. at 190. in UNDERSTANDING BASIC TRADEMARK LAW 2004. Inc. e.

77 Two purposes underlie the Lanham Act: One is to protect the public so it may be confident that. which(A) is likely to cause confusion. reprinted in 1946 U. § 1051 (2000). 15 U. uses in commerce any word. For an excellent overview of the registration process. Trade-Mark Cases.g. REP. or commercial activities by another person.A. 15 U. 15 U. 76 See. ). NO. Inc.470 CARDOZO LAW REVIEW [Vol. and money in presenting to the public the product. 73 protection. JANIS. 1984)). 183 F. 15 U. INTELL. 75 Registration protects against possible confusion in the marketplace.C.2d 512 (C. it will get the product which it asks for and wants to get. § 1057(b) (2000).C.S.S. however. connection. services."' (quoting Natural Footwear Ltd. requirements.C. 82 (1879). or (B) in commercial advertising or promotion. See Lanham Act § 7(c). 100 U. S. see Hiaring. L.. see Lanham Act § 39. establishes incontestability of the right to use the mark. 27:1 actual or constructive use of the mark in commerce triggers federal Registration. false or misleading description of fact. 53. or commercial activities. 2001) (finding junior user of registered trademark had national protection except in the senior non-registered user's limited geographic area). e. Id.C. or false or misleading representation of fact.C. shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 615 F. symbol. In re Int'l Flavors. v. as opposed to common law protection limited to the geographical area of use. or any false designation of origin. 58 (2000) ("While registration of a mark affords a variety of benefits and protections to the owner.. Advanced Programming Res.S. it also provide a service to entrepreneurs and existing businesses who may wish to register their own marks. 73 Lanham Act § 1.S. Registration grants the trademark holder standing to sue infringers in the federal courts.P.S. Schaffner & Marx. Hart. See Lanham Act § 45(a). see Lanham Act § 7(b).C. PROP. 15 U. sponsorship. by allowing them to rely on a search of the records of the Trademark Office . v.. 74 Federal registration gives nationwide priority and protection to registered trademarks. DfNWOODIE & MARK D. and benefits. time. 76 and plays an important role in implementing the Lanham Act's objectives. 15 U. The use requirement guarantees that trademark law falls within Congress's commerce power. name. see Lanham Act § 22. supra note 70. misrepresents the nature. or device. 760 F. Wiener King Corp. § 1121 (1998). term. and provides constructive notice of ownership. see Lanham Act § 15. 77 It not only protects the registrant's interests by providing for goods. 79-1333 (1946). 1274. in purchasing a product bearing a particular trade-mark which it favorably knows.A. or geographic origin of his or her or another person's goods. characteristics. § 1127(a) (2000). see. e.S. 74 provides many statutory benefits 75 to the trademark holder.C. 1980) (limiting senior user's rights to small geographical area at time ofjunior user's federal registration). or as to the origin. or association of such person with another person. v.C.C. Secondly. Weiner King. grants national trademark protection.. § 1065 (2000).N.S. services. James E. 8 J.3d 564 (6th Cir.2d 1383. 1274. TRADEMARKS AND UNFAIR COMPETITION: LAW AND POLICY 225 (2004). § 1072 (1946). and determines who owns trademark rights in a given mark. GRAEME B. qualities. Inc. or to cause mistake. Allard Enters. 15 U.. provides prima facie evidence of the registered mark's validity. Carlson.S.. § 1057(c) (2000).g.3d at 1367 ("'[T]he benefits of prior registration under the Lanham Act are justified in light of the order such registration brings to the market place. where the owner of a trade-mark has spent energy. 1395 (3d Cir. .. 249 F.. or to deceive as to the affiliation. Phantom Trademarks: Good Law or Chain Rattling? The Negative Effects of Strict Interpretation of the Landham [sic] Act in the International Flavors and Fragrances Decision.S. he is protected in his investment from its misappropriation by pirates and cheats. or approval of his or her goods.C. or any combination thereof.

v. For purposes of this chapter.S.. at 58 ("This public benefit extends to all consumers of established products."). § 1051(a)(1) (2002) ("The owner of a trademark used in commerce may request registration of its trademark . and not made merely to reserve a right in a mark. Wickard v.3d at 1367.. e. 1485 (Fed. prevents confusion among competing products. Hyman & Sandra Covington. Lanham Act § 45. Williams Rest. for example.S.2d 662 (Fed. Inc. Delice de France. 82 (1879). See.760 F. See.C. and (B) the goods are sold or transported in commerce. Larry Harmon Pictures Corp. defines "'use in commerce"' as: [T]he bona fide use of a mark in the ordinary course of trade. sound. at 65 ("[E]ach mark must be registered to allow subsequent entrepreneurs to easily search the system for marks already registered and thus ensure continued market stability through protecting goodwill associated with particular marks.2d 1479. Congress sought to encourage the presence of as many trademarks as possible on the register so that they would be available for search purposes. 82 Lanham Act § 1. 317 U.S. "). then on documents associated with the goods or their sale.. courts interpret the "use in commerce" requirement very liberally. 15 U.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 for protection of the public against palming off and misrepresentation in the market place. and protecting the benefits that owners enjoy from federal registration. 1987)). and prevents other producers from passing off inferior products . the Lanham Act only protects trademarks that are used in commerce. as it allows these consumers to rely on the marks as a symbol of the quality they expect from certain producers.C. See also Carlson. and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce. 79 Further.C. Trade-Mark Cases. 929 F. 78 but also promotes the purposes of trademark law by providing notice to prospective users of potentially infringing marks. as such. 1991) (finding trademark of restaurant. see 15 U. Carlson. avoiding confusion. and 78 "Registration serves as constructive notice to the public of the registrant's ownership of the mark. Cir. However.. supra note 76. color. § 1072 (1946)..g. 100 U. ' In the United States.2d at 1395): Entrepreneurs. 81 In re Int'7 Flavors. federal registration benefits entrepreneurs 8 8 0 or new entrants in the marketplace as well as the public. Cir. 79 Id. or if the nature of the goods makes such placement impracticable.. 80 See id. to be used in interstate commerce). and thus prevents another user of the mark from claiming innocent misappropriation as a trademark infringement defense. (quoting NaturalFootwear. v. which did less than 15% of its business with interstate travelers.g.S. a mark shall be deemed to be in use in commerce(1) on goods when(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto. "). and scent marks may be registered if they are used in commerce. Filbum. 183 F. should be able to rely on a search of the trademark registry and their own knowledge of whether the mark has been used so that what may be substantial expenditures of money promoting the mark will not be wasted."). Important Trademark Use Issues and the .2005] A NEW TRADITION constructive notice of trademark rights. 82 indicative of source.S. e. 1127 (2000). and intrastate use that directly affects a type of commerce that Congress may regulate satisfies the requirement. 15 U. Id. In passing the Lanham Act. (quoting Bongrain Int'l Corp. 811 F. supra note 76." In re Int'l Flavors. who plan to promote and to sell a new product under a fanciful mark. Congress passed the Lanham Act under its Commerce Clause powers. Corp. 183 F.. 111 (1942) (finding farmer's production of wheat for personal consumption fell within Congress' Commerce power).. or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. Midge M.

& Literary Prop.51. Cir..T. fanciful and suggestive marks are inherently distinctive.. 2005).A.S.R. v. Broad. 360 F.O.. as used in commerce. Copyrights. 1202. 2. registration "maintains the market stability effected by certainty of '88 registry and ownership of existing trademarks. 904. 85 See Wal-Mart Stores v. 562 (T.htm#Application006 (last visited Sept.uspto. Abercrombie & Fitch Co.S.S. e. v. Samara Bros. 30 J. In the United States. 159. publishes the drawing as a depiction of the mark in the Official . 17 U. 89 Traditional Risk of Fraudon the Trademark Office. In addition to these substantive requirements. it is also an arbitrary mark. 84 See supra notes 62-66 and accompanying text. Trademark Law: An Economic Perspective.E. Inc.g.. Brennan's Rest. The drawing and the specimen must accurately depict the mark.). 269 F.51.M.05(d). §§ 807. while "Apple" is a strong source identifier for computers. Brennan's. 84 In the United States.3d 270 (3d Cir.Q. sounds. Co. 83 It is not the subject matter of the mark. that largely enables these colors. and generic marks never can be protected). See.P. different. 1990) (accepting applicant's argument that fragrance applied to yam may be registered if it is inherently distinctive or has secondary meaning).R.51. at 252 (PLI Patent. a trademark's distinctiveness may be either inherent or acquired (registrable after a showing of secondary meaning). 1976) (outlining the "Abercrombie Spectrum. 199 U. T.F. The U. supranote 56.52.M. 37 C.56 (2003). with a large amount of consumer recognition and commercial strength.Q.P. 1368 (Fed. The drawing requirement provides notice of the nature of the mark and must detail what the applicant seeks to register. in ADVANCED SEMINAR ON TRADEMARK LAW 2004. inherently distinctive.. 199 U. 87 By providing proper notice. but its source-identifying status.S. 265. distinctiveness refers not only to the ability to distinguish one's goods.. at 63.472 CARDOZO LAW REVIEW [Vol. Course Handbook Series. 514 U.T. descriptive marks may be protected upon a showing of acquired distinctiveness. Elec. T.." in which arbitrary.B.183 F. requiring secondary meaning for registration).g.12. 1978) ("[T]he nature of a mark is no basis for refusing to register it either as a service mark or as a trademark if it performs as an indication of source .F. See 37 C. § 1051 (2002). 86 See Lanham Act § l(a)()-(2).F. 1604. 2. 89 37 C.. Trademark FAQ. supra note 76.. 27:1 distinctive.3d at 1367. Elec.52 (2003).P. 37 C.2d 1238 (T. See. 2004). which is inherently distinctive and entitled to great protection. 164 (1995) (citing William Landes & Richard Posner.S. and scents to be registered as trademarks. 2004) (citing examples). 537 F.. 205 (2000) (noting color marks require a finding of secondary meaning or acquired distinctiveness because color is never inherently distinctive).Q. Jacobson Prods. so the mark can be easily located and identified upon a search of the trademark registry. Check Point Software Techs.3d 1361. T.P.T. In re Clarke.e.M. 2001).C. 87 In re Int'l Flavors & Fragrances. §§ 2.. 183 F. and must only depict one mark.P.. 2. 128 (2d Cir. The drawing must illustrate the mark as used in commerce. see In re Int'l Flavors. Inc.. or distinctive.P. but also to the particular commercial and conceptual strength of the mark. supra note 56. Qualitex Co. sound and scent nontraditional trademarks may be inherently distinctive.. 1999) (unambiguous registration needed to make constructive notice meaningful). while color 85 marks require a showing of secondary meaning for registration.E. v. 560. 15 U. supra note 56.S.P. § 807. § 2.R.2d 4 (2d Cir.3d 125. §§ 2. v. see also In re Gen. 290 (1987)). 529 U. or commonplace. see also U. The drawing should depict the mark the applicant seeks to register.B. For example. Trademarks." i. §§ 2.52.8 3 As in the European Union. at 563 (stating that a sound may be "unique. a drawing of the 86 mark and a specimen must accompany the application for registration.A. however. In re Gen. 88 Carlson. Hunting World. LAW & ECON. §§ 807.O.S.E.F. http://www.R. Checkpoint Sys. Co. What is the Drawing?. e.

94 The U.E.09.2005] A NEW TRADITION 473 trademark applications require submission of a black and white standard mark. supra note 90. 92 The description of a nontraditional trademark assists trademark examiners in determining what the applicant seeks to register.P. and a list of cancelled and renewed registrations. § 3. supra note 56. Often a computer database generated search report of a mark will not include a pictorial display of the mark [or there will not be a drawing] but rather will only include a description of the mark.M. ARDEN. TRADEMARK REGISTRATION PRACTICE § 3:31 (2004).E.3(a).M. 1202. supra note 56.F.52(e) (2003). Hawes and Dwight note that one of the most important reasons to include a description of the mark in the application is for notice purposes.R.P. an index of registrants.. PRACTITIONER'S TRADEMARK MANUAL OF EXAMINING PROCEDURE § 808. 1 JAMES E. 9 1 character or typed drawing. Continuing Legal Educ. 1202. rather. [A description is desirable] [t]o make sure that others are aware of the nature and salient features of a mark .E.. The specimen shows in a precise manner the mark's use in 91 37 C.. 95 apparent from the drawing alone.. directs that the description should accurately and precisely explain what the mark comprises and should not create a misleading impression of the mark. the color(s) shown in the drawing will control.20 ("The primary purpose of the description is to assist the PTO in properly filing and referencing the mark in its records. scent.R § 2. §§ 807. the applicant must submit a detailed description explaining the mark.52(b)(1) (2003) ("If the mark includes color. Trademark Registration § 6. at 31. publishes the drawings and descriptions in the Official Gazette.T. Descriptions are particularly helpful when it is difficult to determine from an inspection of the mark just what letters or numbers are included within it.E.M.O. Id 95 The Official Gazette is the official journal of the U.15."). 93 The description also provides notice to searchers of the registry of features of the trademark not readily available to searchers of the trademark registry. Benson & Amy B.F.T.S. Deborah L..01 (2004).P comments "[a] mark's meaning is based on the impression actually created by the mark in the minds of consumers.P.E. If the color(s) claim is inconsistent with the color(s) in the drawing.F. and other non-visual marks do not require a drawing. and the applicant must name the color(s). HAWES & DWIGHT. 96 The specimen is a Gazette. DWIGHT. 93 See HAWES & DWIGHT.M.M. supra note 10. HAWES & AMANDA V. a list of registered trademarks. IPPRAC MA-CLE 6-1 (Mass.. The T.. T." Id.1. § 904. making them commerce and the public's perception the mark. supra note 90.02. The T. 90 See 37 C.O..13. in INTELLECTUAL PROPERTY PRACTICE. and submit a claim that the color(s) is a feature of the mark. § 807. supra note 56. supra note 56. § 808. the drawing must show the mark in color. It is published weekly and contains illustrations of trademarks published for opposition.52(a) (2003).P. § 3.S. § 2.9 0 whereas an application to register a color requires a color drawing supplemented by a detailed description of the Registration of sound. see infra note 95."). Spagnole.. not on the impression that the applicant states the mark is intended to convey.M.").P.P. T.P. T.. 94 See JAMES HAWES & AMANDA DWIGHT. 92 37 C. § 2. 96 Specimens are required as proof of actual use in commerce and illustrate how the mark is used in connection with the goods or services.E. describe where the color(s) appear on the mark. .R. because visual inspection of the mark often fails to provide certainty.. See T.20 ("An acceptable color description would be: The colors(s) (specify color) appear in (specify areas of mark on which color(s) appear).

P. For detailed information on materials acceptable as specimens. The drawing and description requirements for nontraditional marks do not facilitate a precise impression of the mark or clearly delineate what in fact the applicant seeks to register. most often fail to provide flexible methods for pinpointing what. informational charts. evidence of advertising may constitute an appropriate specimen because there is "no physical commodity on which the mark is placed when rendering the service. for the registration of a nontraditional service mark." Id.html# tess (last visited Sept.T. Id. 1 2 It is available for examination only at the U. 141-45 and accompanying text. 102 TESS is the U.E. see also U. § 904. 5. 2005) ("A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. supra note 10. §§ 2. 204-06 and accompanying text. for service marks customarily are used in other ways than by attachment to some physical article. such as a label. § 3. 2004). 2005). trademark examiners inspect the specimen to ascertain whether the mark functions as a trademark..M. 103 See HAWES & DWIGHT.P.08. 100 See infra notes 135-36. Glossary. container.P. Although verbal descriptions may be used to supplement the drawing.P.26 ("[Tjhese specimens are maintained in the file of the application and the resulting registration. registration of Inc. What is a Specimen?. and the goods or services on or in connection with which the mark is being used. and whether 9 8 the mark can be accurately represented in a drawing. Trademark FAQ."). whether competing companies are using the same mark. nor available on the Trademark Electronic Search System 0 website (TESS). 181-83. the applicant seeks to register.04 .. 2.E. display. This is incredibly inconvenient for the small business owner who relies on a trademark search to protect . Advertising materials. http://www. supra note 56.uspto.uspto. and cancelled federal trademarks. in fact.O. However.904..S.56(c) (2003). individualized impressions.O. 97 37 C. not feasible for scent marks. However.T. a trademark used to distinguish services. see T.R.S. fails its purpose because the Official Gazette is not published in color. 98 HAWES & DWIGHT. 5.56(b)(1). § 3. which is not required for sound marks. tag.O. marketing materials. supra note 56. 99 See ARDEN. HAWES & DWIGHT. internal business materials.htm#Application006 (last visited Sept.S. http://www..T.T. 99 The description generates subjective.O.'s online database for searching pending. 101 See infra Part III and notes 133.P. at 19: The drawing requirements for nontraditional marks. See U. registered. current USPTO practice often creates a somewhat artificial and imprecise registration system for nontraditional marks.26. and applicable only to color marks.S.M. The specimen is also examined to determine "whether or not the applicant is actually using the mark . They may be inspected by members of the public and even withdrawn by any member of the public for that person's use. T.26.. supra note 90."). 0 3 As a result. 0 1 The specimen appears to resolve the ambiguities created by the drawing and description or photograph.C.. office in Washington D. §§ 904.F. 00 and the only the drawing and the description inform consumers and competitors of what constitutes the mark because the specimen is neither published in the register. 27:1 duplicate or sample of the mark as viewed in connection with the goods. 97 As an integral part of the examination process.P. § 3. and bags or other packaging material not directly associated with the product are not acceptable specimens.CARDOZO LA W REVIEW [Vol.04." Id. supra note 90. supra note 90.

the definition of the Community Trade Mark omits colors and non-visual "signs" such as sounds or scents. particularly words. 514 U. even if that source is unknown. It makes it "impossible for the public to determine precisely what was covered by the marks.2005] A NEW TRADITION 475 nontraditional marks in the United States is an ambiguous and illdefined process that reduces trademark owners' security. 104 Registration of ambiguous or ill-defined marks "does not provide proper notice to other trademark users. including personal names.'s reasoning behind denying registration of ambiguous or "phantom" marks). name.C.T." Qualitex Co. 2003 E. art. 5577.S..." Case C-273/00. 183 F.J has noted that it "is clear from the language of both Art. supra note 76. 1999). Cir. the shape of goods or of their packaging. art. United States and European Union courts interpret both definitions with sufficient elasticity' 07 to allow his investment and who must travel to Washington D. 37. 2 of the Directive and the seventh recital in the preamble thereto.R. 2. in application. or which a person has a bona fide intention to use in commerce and applies to register.N.T. 107 The E.J. to examine the specimen. v.C.C. including a unique product. thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration. 1127 (2000). symbol. or scents as trademarks. at 61 (discussing the T. Co. 162 (1995). Similarly. 1368 (Fed. 4. blurs the lines of infringement. sounds. or any combination thereof' that identifies and distinguishes goods and services can be a trademark. letters. numerals.S. see Trademark Law Revision Act of 1988. Sieckmann v. or device. 44 (alteration in original). from those manufactured or sold by others and to indicate the source of the goods. which refers to a 'list [of] examples' of signs which may constitute a trade mark. 159. Deutsches Patent.. when adequate notice is a primary objective of trademark registration . The E. reprinted in 1988 U." In re Int'l Flavors & Fragrances. and largely fails in its attempt to create legal certainty.und Markenamt. name. in the United States. The Lanham Act defines a trademark as any word. also noted that the definition does not expressly exclude such marks.3d 1361. "any word. Id.S. to identify and distinguish his or her goods.M. that list is not exhaustive. Jacobson Prods. Id. symbol. Directive. This would give inadequate notice of unavailable trademarks to the public.B. or device. supranote 43. provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.C. 15 U. United States courts broadly interpret the Lanham Act's definition of a trademark in recognition of the fact that a symbol or device could be "anything at all that is capable of carrying meaning. However. 106 European Union legislation defines a trademark as any sign capable of being represented graphically. 105 Lanham Act § 45. For example. or any combination thereof-[which is] used by a person.C.. defining a trademark as any "sign" that is capable of 06 graphic representation and that distinguishes goods and services.A. " Carlson. TREATMENT OF NONTRADITIONAL TRADEMARKS IN THE EUROPEAN UNION AND THE UNITED STATES Neither United States nor European Union trademark law expressly recognizes colors. 10 4 III.A. 0 5 Similarly. supra note 43. designs. see also Regulation.C. 5607 (stating .

2d 1238 (T. Benelux-Merkenbureau.S. Understanding the WTO: The Organization: Members and Observers.U..B.htm (last visited Sept. Case C-49/02. Linda Greenhouse.I0 There. 213 U. 108 A.T. 563 (T.05. Further.. There have been seventy-two successful color mark registrations in the E. 1990) (scent of plumeria blossoms for sewing and embroidery thread). 560 (sound of a ship's bell clock for radio broadcasting services).M. 2003 E.S. an applicant filed the color orange as a trademark for its telecommunications goods and services. Libertel concerned the registration of a color per se.T. only the European Union's registration requirements guarantee specificity and uniformity in the perception of such marks. Statistics on Community Trade Marks. 2003 E.P.CARDOZO LA W REVIEW [Vol. Case C-283/01. services. "Colour per se" has been defined as a catch-all for all signs which consist solely of color. In re Gen. Deutsches Patent. e. Sept. WTO. broad definition of a trademark reflects "contemporary marketing practices" and. Case C273/00. 1 9 however.. Elec. Co.Q.R.T. 1982) (noting U. TRADEMARK PROTECTION AND PRACTICE § 2. PROP. 44 (recognizing that scent may operate as a trademark).T.S. TIMES.Q. 199 U.C. 108 See. Mar.T.R. colors. supra note 56. 2004 E.wto. especially in light of the TRIPS Agreement. 1113 (T. 560. "trademark law is very liberal-perhaps the most liberal in the world-as to what is registrable subject matter"). This is not surprising.M. 110 Case C-104/01.P. Heidelberger Bauchemie GmbH.. at D2. as opposed to those signs which use color as an element of a word or design mark. Shield Mark BV v. The European Union has also permitted the registration of a color per se or a color combination as a trademark. 2005).. See Office for Harmonization of the Internal Market. first addressed the requirements for registration of a color mark in Libertel Groep B V v.B. to which the United States and the European Union are signatories. Its graphic representation of the mark consisted of an orange rectangle and the word . Broad.R.. 159 (green-gold color of dry cleaning press pads).N. The E. provides trademark protection for color.A. 199 U.P. or configurations should be registered when they function as trademarks).A.M. 2005).J.T. In re Clarke." T. David Stone & Nicholas Bolter.E. [As such]. Qualitex. MANAGING INTELL.. http://oami.htm (last visited Sept. 5. N.M. Color Marks Both the European Union and the United States allow registration 0 of color marks. 109 The T.Q. In re Gen.. 2004 E. Tips On Protecting Colour Combinations in the EU.und Markenamt.M. and which expressly sanctions the registration of color trademarks. and more than four hundred applications submitted.. 514 U. See supra note 18. 27:1 registration of nontraditional trademarks such as sounds. at 54. as such. § 1202. sounds. the Patent and Trademark Office has recognized that a mark need not be confined to a graphic form.O. and scents.B. High Court Ruling Upholds Trademarkingof a Color. is required in order to keep up with the ever-changing ramifications brought about by the changing technology that accompanies the growth of a nation and creates goods.S. Joost Kist H.P.M. http://www. 1978): [F]lexibility. 63. the North American Free Trade Agreement (NAFTA). 37. Specifically.R. 99 (recognizing colors blue and yellow may be a trademark if colors are represented in a systematic arrangement). defines color marks as "marks that consist solely of one or more colors used on particular objects. Sieckmann v. 1 JEROME GILSON & ANNE GILSON LALONDE. 2004.. In re Paramount Pictures 29. 33 (jingles and animal noises may be registered provided proper graphic representation). Elec. 1111.P.S. 17 U..12 (2005) e/whatis e/tif e/ org6_e. shapes. 1995.A. and other international agreements to which the United States is a signatory. and concepts unheard of in the past .

110. 33. approved the use of an internationally recognized color code as an 12 acceptable graphic representation because it is precise and stable. does not Id. and does not possess the durability requirement of Article 2 of the Directive. RGB Color Code or RAL Color Code.C. 113 A sample or swatch of the color "may deteriorate over time. 171 TRADEMARK WORLD 10. 112 Id." Id. 117 Id. 33. .C.C. which would not permit the consumer to perceive and recall a particular combination. failed to satisfy the requirements of clarity. 1 9 This reasoning suggests that a color combination not presented in a systematic arrangement cannot "orange. 35.J.. any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark. considers a color combination to be "two or more colours.J. 42. Oct. at 55 (discussing case).J. an applicant must submit a sample or swatch of the color and designate the color using an internationally recognized identification code."' The E. 13 and a verbal description of the color. 116 The E. The E. while a form of graphic representation.J. without shape or contours. TT 31.. 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 an internationally recognized color chart. 77 28. 2004 (noting that the use of a Pantone color code adequately satisfies the graphic representation requirement.. 119 Id 35.R.. intelligibility. 115 Case C-49/02. noted that "[t]he mere juxtaposition of two or more colours...M. 1 8 consumers would be unable to recognize a particular combination as indicating source.T. 2004 E. The E. enabling "a reader of the register [to] understand[] what the mark is that a proprietor has a." In Heidelberger Bauchemie GmbH. Id.R. self-containment. The applicant sought The to register the color combination of blue and yellow in "every conceivable form. right to"). and objectivity.'' 117 The E. stated: Such representations would allow numerous different combinations. held that to graphically represent a color mark. see also Stone & Bolter. such as a Pantone® Color Code. 2 of the Directive . 37.2005] A NEW TRADITION 477 the E. For example. 63. Id. easy 1 4 accessibility. 34. 12. thereby enabling him to repeat with certainty the experience of a purchase." Id. see Mark Pearce.J. or a reference to two or more colours 'in every conceivable form'. and such registration would not provide competitors and authorities with the precision or uniformity needed to determine the scope of the trademark holder's rights. The Future's Bright. held that color combinations 1 6 could not be registered unless the graphic representation portrayed the colors in a "systematic arrangement associating the colours concerned in a predetermined and uniform way. 111 Id.C. precision. exhibit the qualities of precision and uniformity required by Art. The Future's EasyMobile. supra note 109..C. 114 Id. 29. designated in the abstract and without contours. 31.J.J. .T.." representation of the claimed mark consisted of a rectangle with the top half blue and the bottom half yellow. warned that if applicants could register color combinations in an arbitrary or indeterminate manner. 2003 E.C.. Heidelberger Bauchemie GmbH. 99. 118 Id.." Libertel.M. The application also provided color codes.C.115 the E." The Court found a color sample alone insufficient.

supra note 56. 128 Id. The written description must explain what colors comprise the mark and where they appear on the mark. 2. Perhaps the U.05(d)(i).52(b)(1) (2003). Until November of 2003.S.. 123 The drawing must be in color and show the viewer where and how the color functions as a mark for the product.M.P.51. § 1202. Black & Decker Corporation has registered the color yellow for its saw blades. as the mark. § 3. while color sometimes serves a function in making a product more desirable. at 164. rather 125 than the product shape. § 1202. 159. 126 T. Id.M. .T.F.26. §§ 2. As the Court noted.. 122 The drawing should depict in broken lines the product that the color will identify. 128 For example.S.CARDOZO LA W REVIEW [Vol.05(d)(i).F. at 165.. A description or written explanation must supplement the drawing. should take the color registration requirement a step further and require all registrants submitting renewal registrations of color marks to submit color drawings and to adhere to the other registration recommendations discussed in Part III.O."' Id. While the recent change to color applications is a positive step in the direction toward providing legal certainty.P. Id. Examples include "'maroon. 166 (1995) (noting "color alone.' [and] 'reddish orange.. without serving any other significant function. 121 Qualitex Co. § 1202. 126 The Trademark Manual of Examining Procedure instructs that the written description of the mark must describe the color in specific terms and use ordinary. supra note 90.E.P..T.E. supra note 109.05(d)(i).O.. at least sometimes.e. 514 U. 124 It should also show the viewer that the applicant claims the color. 122 T. When "color is not essential to a product's use or purpose and does not affect cost or quality. 27:1 constitute a trademark under Article 2 of the Trade Mark Directive. Functionality is a per se bar to trademark registration. the problem remains that thousands of trademark registrations claiming rights in colors are still made available to searchers only in black and white. which seeks to promote competition by protecting a firm's reputation. can meet the basic legal requirements for use as a trademark." Id. § 1202.05(e). the U. Id. applications for color marks were not accepted in color. supra note 56. "The functionality doctrine prevents trademark law.R.P. supra note 56.E. rather than the color itself. § 3. infra. 129 Black & Decker Corp. usually consisting of a representation of the mark on the goods.M. 12 1 The application for registration must contain a drawing of the mark. Id. 165.' 'turquoise. 124 37 C. v.M. Jacobson Prods. Reg. the doctrine of 'functionality' does not create an absolute bar to the use of color alone as a mark. generic language." Id. Co.P. 127 Id. It can act as a symbol that distinguishes a firm's goods and identifies their source. 2831672.E. See HAWES & DWIGHT.."). from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. If the object is not depicted with broken lines.R. No. supra note 56. 125 HAWES & DWIGHT. 37 C.. supra note 90. T.' 'navy blue. 123 T.52(b)(1) (2003). this is not always the case. 127 It must identify the mark as consisting of a particular color as applied to the goods or services. at 55 (noting that the Heidelberger decision implies "that a non-systematic arrangement of a combination of colours cannot constitute 'a sign' under the Directive). § 2.P.. 120 The United States Supreme Court holds that color marks are registrable provided they have acquired distinctiveness and are not functional. the particular color applied to a particular shape. but now submission in color is required. will assume that the applicant seeks to register a composite mark. 129 The description accompanying the drawing states "[t]he mark consists of the color yellow applied to 120 Stone & Bolter.S.

132 T.M. Manhasset Specialty Co. The dotted outline of the goods is intended to show the position of the mark and is not a part of the mark. which enables uniform matching and specification of colors worldwide. 2608363. http://www.P. 2005)..pantone. Inc.T.167 registrations claim a shade of yellow in their design or as a trademark applied to a product. 2722766 ("The mark consists of the color red"). Reg.. 131For example. See U. ARDEN. yet it lacks the requisite specificity to facilitate protection of trademark rights and provide notice to the (last visited Sept. website and appear in color. A search of TESS reveals that 2.. for more information on the Pantone Matching System.O.T. The dotted outline of the goods is intended to show the position of the mark and is not part of the mark shown. § 807. No. However. S. 5. a consumer may have a problem distinguishing between the two.'s registration of the color light blue for its rental car transportation services.P. No. see also Hoodman Corp.uspto. http://www. this does not facilitate clarity in a search of trademarks registered more than five weeks prior to the search. 5. Trademark Official Gazette.. 2005). Western Union has registered the color golden yellow for correspondence paper.g. Each of Pantone's more that 1000 colors corresponds to a number code. Reg. supra note 56. supra note 56.135 Further."1 30 A commercial color code may supplement a written description.07(a)(ii). § 1202. Id. 135 3M has registered the color canary yellow for adhesive stationary. supra note 10. 134 competitors cannot determine by conducting a search of the registry whether their chosen color may infringe on a federally registered trademark.05(f). and a new entrant in the marketplace might have difficulty determining whether its lemon yellow paper products would infringe on either mark. Because the Official Gazette is not published in color 133 and includes only the generic description of the mark.M. Reg. 133 The five most recent issues of the Official Gazette are available online at the U.M. Some examples include: Nintendo of Am.S. Inc. at 26 (noting that "the U. Reg.P. web/trademarks/tmog/ (last visited Sept. No. see Thrifty. The Pantone Matching System is an internationally recognized color code. While a trademark examiner may not think that an application registering the color golden yellow for paper correspondence would infringe on a registration of canary yellow for stationary. See generally Pantone. an individual's 130 Id. such as the Pantone Matching System used for matching colors").").. The description states: The mark consists of the solid color light blue (Pantone Matching System 300) used on vehicles such as buses and vans for shuttling customers to and from applicant's vehicle rental centers. expressly refuses to endorse or recommend a particular color code. 2746231 ("The mark consists of the color charcoal juniper green as applied to the goods. T.S. Reg.E. e.P. Patent & Trademark Office has not yet adopted a requirement for more precise identifications of color. 134 See.O.E. 2390667..2005] A NEW TRADITION 479 the perimeter of the saw blade so as to form a yellow rim on the saw blade. .P.1 Registration of a color mark in the United States is by far the most technical and defined of all non-traditional mark registrations in the United States. No.. The dotted lines shown on the drawing are not part of the mark but merely serve to indicate the position of the mark when used in connection with vehicles. 2696986. The T.E. 131 The application must also include a specimen that shows the actual or intended use of the 32 color mark depicted in the drawing.

917 F. 1432069 (the color "yellow" for plastic water slide toys).CARDOZO LAW REVIEW [Vol. No. 137 An international color code provides precision... 514 U. 2619345. 40506(1994). Kransco Mfg. 2842804. supra note 10. Ebert. at 167. the color "yellow" is registered for vehicles. No. of colors. 136 The possible variances of shades.2d 1024. but it does not require or recommend one.. 159. at 402-06 (discussing how precision would prevent shade confusion and bring more objectivity to trademark law).. and Diving Sys. Kirby Morgan Dive Sys. the United States currently permits the use of a commercial color code.. No. 137 See supra note 131 and accompanying text. See NutraSweet Co. Prior to the Supreme Court's decision in Qualitex Co. 2878653. and matching colors. Qualitex. supra note 136. 1985) (Bissel. ServiceMaster Co. No. Reg. Reg. 84 TRADEMARK REP. Reg.S.. many courts argued against the use of color as a trademark on the theory of shade confusion. at 403. 139 It would also guarantee that a United States trademark owner's registration of a given color is perceived and registered as the identical shade globally. Kirby Morgan Dive Systems. No. While the Court in Qualitex expressly rejected shade confusion as a basis for denying the registration of color marks. which is desirable to identify unique colors and to distinguish a claimed color mark from other colors used in the marketplace. J. 514 U. 2503351.. registered the color "bright lemon yellow" for mouthwash and stated that the color is the same as Pantone Process 2C. Inc. Reg.. [and] a straightforward algorithm is available for keeping track of these numerous shades"). and the color "hot yellow green II" for forklift trucks. In re Owens-Coming Fiberglas Corp. No. Reg. 2085318. 2085234. 2131635.. the theory is still relevant. No. see Ebert. dissenting). and "bright yellow. Inc. No. 1027 (7th Cir. or the individual's knowledge of color. e. The shade confusion theory holds that the use of color as a trademark will lead to uncertainty as to whether a given shade of color infringes on a registered color mark. supra note 136. Reg. 1990). at 27. if not millions. Interestingly. Stego Indus. at 403 (noting that concerns about shade confusion are misplaced. Lastly. Reg. Minnesota Mining and Manufacturing Co. because "the human eye is physically capable of distinguishing thousands. will further confuse consumers and give rise to actions for trademark infringement. 139 The use of an international color code would also simplify the examiner's job of determining what the applicant seeks to register and Reg. the 36 lighting. 27:1 perception of a color may vary depending on the background. 2634033 ("bright canary yellow" color for diving helmets).. specifying. 3 8 Such a requirement would provide an accurate method for selecting. Reg. Ebert. No. at 167. Reg.." see. For a thorough discussion of the variances in human perception of color depending on the environment. not to bar such registration. 2803929..S. TrademarkProtection in Color: Do It by the Numbers!. As mentioned above.. No. CEP Holdings. Ryder Sys. .. 138 See ARDEN. see Lawrence B. 774 F. None of the registrations appear in color on the electronic registry nor provide any guidance on ascertaining the difference between "bright canary yellow" and "bright yellow" or "lemon yellow" and "yellow. the color "lemon yellow" is registered for trucks and moving vehicles. etc. 2855644. There have been registrations claiming the colors "light yellow" and "dark yellow. No. depending on backgrounds. Clark Material Handling Co." Some registrations do provide some guidance to the trademark searcher.. Reg. Reg. For example.S. and the difficulty of taking these variances into account in trademark infringement actions.. claims use of the "yellow color buttercup" and directs the searcher to Pantone Number 116C.g. Stadt Corp.. Cir. 379. lighting. but to improve upon it. Pressure Cleaning Serv. Reg. Ebert.. Jacobson Products Co. 1131 (Fed. 514 U. No. 167 (1995). 2790352 (the color "yellow" applied to plastic sheeting). v.1 The United States should adopt the European Union's requirement of an internationally recognized color code in its registration process. claims a "distinctive yellow shade" for telephone maintenance instruments and provides reference to Pantone 123C. 2554181 (the color "orange yellow" applied to handheld electronic games). Int'l. See Qualitex.2d 1116. No. supra note 136. v." Just Desserts.

see id. 218 U. which an expensive approach such as spectrophotometry would inhibit. it is arguable that there should be "free access" to the use of colors as trademarks.N. the benefits of electronic filing.O. 142 See supranote 102. in the alternative.S.'s electronic filing system 143 and upload color photographs during the electronic 140 The use of a color code would also assist courts in fashioning injunctive relief. it would also be incredibly costly to the average trademark owner. again converting a shade of color into three numbers. See Bainbridge. [A] human can match a given shade to a mixture of light of three different wavelengths. though inequivalent.html (last visited Sept. Olay Co..S. Ebert.. see infra text accompanying notes 215-18. publishing the specimen in the Official Gazette and making it available for search in the electronic registry.uspto. 141 The use of a color code is not a self-contained solution. 2005). Infringement of a prior shade is established when the second shade matches all three numbers within the limits of error.P. 141 As such. . is more "entitled" to trademark protection and capable of source identification than scent. one may utilize humans in a scientifically objective manner. Registrants should also utilize the U.2005] A NEW TRADITION 481 whether the applicant's registration infringes on another's mark. e. which enables applicants to fill out applications online and submit them directly to the U. the drawing should consist of the color swatch that corresponds to the color code. 140 Requiring use of a color code alone is not enough. While its use would provide the United States' registration system with needed specificity.S. with objectively established error bars. at 405 n.g. at 236 ("[The] precise colour should be available online without the need to consult anything further. 5.T. See Trademark Electronic Application System (TEAS) in this author's opinion. Any shade of color is converted into three numbers. at least 40% different in terms of PMS [Pantone Matching System] tones"). see HAWES & DWIGHT. If machines are not desired. Ebert suggests: Under standard conditions of incident radiation. While this Note urges the adoption of expensive procedures to register scent marks. to distinguish confusingly similar shades in infringement actions. supra note 21. TESS. Cococare Prods. as Ebert notes. [T]his approach can be used to address the use of shades which. at 404-05. Establish error bars based on the known wavelength discrimination of the human eye. are confusingly similar.Y.").P. For more information on TEAS.'s preference for electronic applications.Q. supra note 136. 1028.T.O.P. color. While. The specimen of the color being used in commerce should consist of a color photograph of the actual product.P.. infringement exists. has instituted a Trademark Electronic Application System (TEAS).T. it would preclude immediate identification of the mark without reference to an outside source. If the second color falls within the error bars for each of the three coefficients. http://www. 143 The U.T.. 1045 (S. 142 would provide increased clarity and notice to the marketplace. this approach would be viable as applied to trademarks. he also suggests alternative approaches to the use of a commercial color code.. As such. Convert the spectrum into absorption coefficients for the three cones of the human eye.S. The relative proportions of the three sources would identify the color of the trademark.O. supra note 90. While Ebert believes that a numeric approach is the best way to identify color marks. Id.P. perform spectrophotometry in the visible range upon the sample to be trademarked to establish the intensity of reflected radiation as a function of wavelength.65. and the U.. § 3.O.127 and sources cited therein. v. See. The same sentiment holds with all marks-they should be seen for what they are.S. The advent of electronic filing will help implement these proposals for specificity. Further.. 1983) (issuing injunction requiring defendant to use "a discernibly different pink. such as the use of a spectrophotometer and a three-variable approach.

e. HAWES & DWIGHT.65. 31. 2004 E. 2004). 6." Shield Mark. Statistics Community Trade Marks (Dec.M. One commentator has advocated similar measures for improvement of the UK Patent Office. the eTEASupcoming. While using a digital imaging format may be more costly to the applicant.M.S. .eu.145 the black and white picture. 33. Reg.P. 148 In doing so. Id. according to advertisements.kodak. is looking into accepting files in other formats. intelligible. B. If a digital camera is unavailable.S.P. 59811 (Oct." which.T.O. combined with a description of the color and the international color code specification.T. at 191.22 (2005)). 33. Shield Mark. 146 Case C-283/01. Sound. 2004 E. Trademark Electronic Application System (TEAS). and eliminates the U. http://www. See Kodak. Sound Marks The E.T. these changes for color mark registration will not increase costs for the U.T.html (last visited Jan. Id.R. lines.O. 5. Up-Coming TEAS Enhancements. could scan a photograph submitted in hard copy when it updates the registration database with the applicant's information. See 37 C. the files are compressed into JPEG imaging formats. 41. 4 8 Shield Mark concerned the registration of fourteen sound marks.R. See Office for Harmonization of the Internal Market. the Court reaffirmed that graphic representation of a sound mark must be depicted visually by images. § 3. 2004 E. 147 Forty-four sound marks have been registered in the European Union. If the photograph is taken with a digital camera.C. 14 7 provided the sound is distinctive and able to be represented graphically. Lastly. at 236. 33.P. many film developers or processors provide the option of receiving pictures on a "Picture LA W REVIEW [Vol. Joost Kist146 confirmed the registrability of sound marks in the European Union. or a Bit Fishy.M. images in and of the applications are automatically made available on (last visited Sept.S. or characters and must be "clear. the reduced filing fee for electronic filing will subsidize any additional costs.6 (2005) (stating trademark application fees are $375 per class for paper applications.S.F. durable and objective.O having to enter the information manually into the system. Further.O.R. and $325 per class for electronic applications). Three marks were for the sound of a cockcrow crowing. § 2.T. will provide searchers with the specificity and clarity they need. precise. Compare the simplicity of publishing marks in color with the Ecuadorian Trademark Office's utilization of a dual printing process to enable precise identification of a texture mark.P. TEAS currently accepts JPEG files and the U. 144 While the photographs may not be in color when published in the Official Gazette. 69 Fed. see. http://www. easily accessible. See supra note 10. enables users to take digital pictures without a digital camera.. He suggests that the Patent Office's website should be improved to ensure that all trademark applications and registrations should be reproduced and represented completely on the website.T. supra note 65. 27:1 registration process.pdf.T.F. § 2. 2004) (codified at 37 C. See Waiver of Pixel Requirements for Drawings Filed Electronically. 2005). 149 Eleven marks registered the first nine notes of FurElise by Beethoven. 15-19.T.uspto.R. http://oami. which may be easily uploaded into the system. Electronic filing saves the U. Further.g. Bainbridge.R. 149 which were submitted for registration in various formats including a written 144 This process could be completed in several ways. if the applicant is not applying electronically. 145 Although they should be. supra note 21.S.J. 29. supra note 90. in Shield Mark BV v. self-contained.P.O time by enabling faster review of trademark applications. 2005).

a clef. 155 Shield Mark." "buzz. specifically held that the graphic representation requirement was not satisfied when the sign is represented graphically by means of a description using the written language. precise. 37. one of which stated "' [s]ound mark.M.. 9 15-19.R. 33.georgetown.158 The E. Order 2. 2004 E. Id 58. making it difficult to determine the scope of protection.C." J." describing the sound using onomatopoeia.'s holding illustrates 150 Onomatopoeia is "[t]he formation and use of words to imitate sounds. Two of the marks consisted of "Kukelekuuuuu. 59-61. E. whoosh. moo. Shield Mark.C. also emphasized that a sound can be registered as a trademark only if the application for registration expressly labels the mark as a sound mark. 2004 E. whizz.T." "hiss.J. The E. or intelligible. in particular. 2004 E. pitch. 157 Shield Mark. CUDDON.J. E. at 191.R. However. 37. ignored important aspects of the sound such as the pitch and duration that form the melody.T. Order 2. without more.T. 1400 (4th ed. D#.2005] A NEW TRADITION 483 description.C. the Court reasoned that graphic representation by musical notation in sequential order is not clear. 153 Shield Mark. onomatopoeia. Sound." 151 Four of the marks consisted of the representation of the musical notes forming the melody on a stave. 33. The placement of a note on the staff indicates its pitch. WEBSTER'S NEW WORLD COLLEGE DICTIONARY 1393. 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. 158 Id. While musical notation presented on a stave divided into (last visited Sept. discredited the use of several other possible graphic representations. pop. C.M. and musical notation. which the United States permits. B. 156 A third approach. 61. Compare "cockadoodledoo" with "kukelekuuu. A. see Sounds of the World's Animals. self-contained." "howl.R. in so holding. or a Bit Fishy. 57 Accordingly. or the indication that it is the cry of an animal.J. 55 Onomatopoeia did not satisfy the graphic representation requirement because it creates a disparity between the written words and the sound and may be perceived differently depending on the individual. or by means of a simple onomatopoeia. supra note 65.J. 152 A stave or staff is the set of horizontal lines on and between which musical notes are written. onomatopoeia. The E.R. For example dong. D#. the E." and "meow. http://www. 59.M.T. where necessary. rests. According to the E.J. D. two of which stated they were "sound mark[s]. musical notes and rests whose form indicates the relative value and. or by means of a sequence of musical notes." Three of the marks consisted of the musical note sequence for Fur Elise and were represented as E. 2001)." To find additional variances.T. and duration 153 satisfies the graphic representation requirement for sound marks.M. 154 See infra notes 172-77 and accompanying text.M. 156 Id 60. Four other marks consisted of the first nine notes of FurElise and were represented by a description of the melody. such 154 as a written description. A DICTIONARY OF LITERARY TERMS 466 (1976).R. crackle. [and] zoom. On the other hand. and . Other examples include "growl. accidentals.C. the trade mark consists of an onomatopoeia imitating a cockcrow. those requirements are satisfied where the sign is represented by a stave divided into measures and showing. 2004 E. 2004 E.' 5' The Court held that representation by detailed musical notation on a stave 52 divided into bars and showing clefs."' Shield Mark. the use of a description of a sound lacked precision and clarity. without more. such as an indication that the sign consists of the notes going to make up a musical work.150 and musical composition. musical notation in sequential order. 33.C. 2005). clefs. A.

even completely different noises such as rolling thunder in a storm.). and the blackening represents the volume. Applicants file trademark applications with the Office for Harmonization in the Internal Market (OH[M). etc. the vertical axis represents the pitch. This argument exemplifies a problem with the European Union's registration of sound marks. 27:1 the European Union trademark law's predominate concerns with unambiguously defining a trademark holder's rights as well as enabling 59 recognition of the mark. 62 The Board found that representation by a sonogram satisfied the graphic representation requirement because it depicted pitch. in the traditional sense of the word. See Bainbridge. The Board commented. seems to overlook the fact that not everyone can read musical notation.C. 2004 E.R. representation by musical notation regularly fails to work. "[a] pattern that cannot be read. or sound spectrogram.M. While the mark at issue was a permissible registration. the horizontal axis represents the duration.F. and slogans cannot be graphically1 16 0 The Fourth Board of Appeals' 6 represented by musical notation.J. Deutsches Patent. 47-53. but animal noises such as the roar of a lion or Here. at 228. and therefore not understood. because the sonogram submitted did not contain the representation of scale on either the rime or the frequency axes. volume. as sound marks such as animal noises." Id.T. supra note 55. Id. provided graphic representation in the form of a sonogram accompanied the 64 application. 160 The E. sound characteristics are depicted. in particular. 34. A sonogram.M. which is discussed infra notes 178-79 and accompanying text. 54.C.. A.J. arguably provides much more detail and precision than listing a series of musical notes. In a sonogram. 163 Id. infra notes 178-79 and accompanying text. or the Court of First Instance (C. supra note 51. Applicants may appeal the OHIM's decisions before the Office's Board of Appeals. 2003 E. cannot be considered as a valid graphic representation of a mark.C. 164 Id.und Markenamt. The applicant sought to register a lion's roar for various goods and services. e. spoken words. 159 See. Id. . 22.J.. at 94. since more nuances and. 29.J.I. Notably. 37. The E.484 CARD OZO LA W REVIEW [Vol. C. the Board denied the application. did not address whether a sonogram or a digital sound recording would satisfy the graphic representation requirement. is a "three-dimensional depiction of the distribution of a signal's frequency content (blackening) versus frequency (vertical axis) and time (horizontal axis). 1. the E. Id. 26. T 28. Id.R. A. the Board concluded that a non-musical sound mark was registrable as a trademark. and progression over time and stated such representation was "superior to that of musical notation."' 163 As such. Id.. supra note 21.C. The application stated that the mark is the "sound produced by the " roar of a lion and is represented by [a] spectrogram . Id. Sieckmann v. 162 Case R-781/1999-4. such as C#. See O'Reilly. Hidaka. D. 1 rests. the Board rejected the argument that a sonogram is unintelligible because examiners or consumers cannot read it. at 115-16.g." Id.1 Shield Mark's graphic representation requirements are arguably limited to instrumental or musical marks. B.. Case C-273/00. 161 A brief explanation of the European Union's legal system is in order. (Board) in Metro-Goldwyn-Mayer Lion Corp's Application recognized that musical notation is impracticable when the sound is not musical in nature but rather a commonplace sound or animal noise.T. The Board noted: [T]he situation is different when it is not music. hears appeals only on matters of law. and may appeal Board of Appeals decisions before either the E. that is to be registered as a sound mark. at 1128.

S. 1395550. 563 (T. Reg. 0916522 ("The mark comprises a sequence of chime-like musical notes which are in the key of C and sound the notes G. of course..Y. Metro-Goldwyn-Mayer was able to register its sound mark in the U. 1978). 1995. No.S." In re Gen.A.B. Harley Davidson applied to register the 68 sound of its motorcycles. see Michael B.A.P. 74485223 ("The mark consists of the exhaust sound of applicant's motorcycles. 168 Serial No.O. 169 General Electric applied to register 165 United States trademark law recognizes that "sounds may.. by filing the following description: "The mark comprises a lion roaring. the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it is struck.P. This registration expired.E. http://www. Competitors have begun copying our sound. with or without words. 8.. PROP. wording accompanied by music. C. produced by V-Twin.C. Inc. 0523616. the 'E' the one just above middle C."). recognized the registrability of sound marks more than fifty years ago. "[w]e do know that the sound is one of the two main reasons why people buy our cycle-the look and the sound ..P.P. 169 199 U. 43 U. 1998). It provides examples of "series of tones or musical notes.. thereby to identify applicant's broadcasting service.S. See Hinton. In Your Ear! Trademarkinga Sound Mark Requires More Than a Good Ear for Music. Id. p.2005] A NEW TRADITION 485 The U. 11.inta.S. http://infoeagle. INTELL.html.T. see also Candida J. H-D Michigan. Trademark Rule of Examining Procedure 1202. 165 For example.S. 560. 563 (T. The Board noted that unlike the case of a trademark which is applied to the goods in such a manner as to create a visual and lasting impression upon a purchaser or prospective purchaser encountering the mark in the marketplace.Q 560. This distinctiveness requirement is comparable to the European Union's requirement that the sound must be capable of distinguishing the goods and services of one undertaking from those of another." Harley-Davidson Wants to Register a Roar. The company spokesman said in support of its registration. E.").T. Co. Sapherstein. 199 U. and.2d 1521 (T. common crankpin motorcycle engines when the goods are in use. the 'G' being the one just below middle C. Hinton. Harley-Davidson eventually abandoned the application. For an in-depth discussion of the Harley-Davidson trademark application. NBC registered three "chimelike musical notes" to denote its broadcasting services. For a discussion of distinctiveness in European Union and United States trademark law. a sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless. U. Elec. The Trademark Registrability of the HarleyDavidson Roar: A Multimedia Analysis.15. 166 and Metro-Goldwyn-Mayer registered the sound of a lion roaring in 1986. and we are concerned about possible confusion. supra note 165. No.. 1 The Trademark Trial and Appeals Board in In re General Electric Broadcastingdiscussed the registration of a sound mark and stated that sound marks must be inherently distinctive or have acquired distinctiveness to be registered. INTA BULLETIN ARCHIVE (April 2002).15 defines a sound mark as "identiflying] and distinguish[ing] a product or service through audio rather than visual means. .html.S.Q.bc..A. 1978). the National Broadcasting Company registered the NBC chimes in 1950 for its radio broadcast services. 101101 (Oct. supra note 56." Id. TIMES.." T.A. F.B. 167 Reg. Broad. § 1. Oct.. 166 Reg.. 1997) (denying summary judgment motion because issues of fact existed as to whether the description of the sound of a motorcycle engine was indefinite and encompassed more than one sound mark). function as source indicators in those situations where they assume a definitive shape or arrangement and are used in such a manner so as to create in the hearer's mind an association of the sound with a service. & TECH. Cf Kawasaki Motors Corp.T. § 1202. 1998 B.T. In contrast to the strict requirement of a sonogram in the European Union.167 In 1995.. N.M. and in 1971. and the 'C' being middle" Cf infra text accompanying notes 160-64. v. No.

199 U.R. playing a series of 16th notes.. § 807." Id.F. For an in-depth discussion of the problems with registration by description. unique. the description. No. The application was submitted with an audio tape recording of the sound. However. but did not find enough evidence that purchasers associate the sound with anything other than a ship or that the sound mark "ring[s] a bell for the listener.g. Reg. 170 In assessing the distinctiveness of the sound mark. finding the sound of ship bells to be the former. Bowman. 2788028 ("The mark consists of a xylophone tone.. many are vague and ambiguous. at 561. Reg.J. 7 5 In fact. Ginsburg Enters. 6) a short sound up one octave from the preceding sound. not all marks are described in such detail. 2) a short sound up an interval of one octave plus a fifth from the preceding sound."). Id. 4 SAN DIEGO INT'L L. No. while detailed and specific. at 563.1) a semi-long sound in the chest 562. Kes Irrigation Sys. 10) a long sound down an 174 octave plus a fifth from the preceding sound. The mark was described in the application as "a series of bells tolled during four. 'Ooh it's so good'. T. the Board distinguished between those sounds that resemble "commonplace" sounds and those that are arbitrary. 176 In addition to providing a description of the see Eric E.g. Netbytel.P. 8) a short sound down a Major 3rd from the preceding sound. 27:1 the sound of a ship's bell clock for radio broadcast services.. No. 5) a long sound down one octave plus a Major 3rd from the preceding sound.E. 513 (2003). 176 See e.'17 In contrast to the strict graphic representation requirement in the European Union. beginning at middle 'C': CECDCFDG. and yet are still registered under the flexible United States system.. 2827972 ("The mark consists of a series of five chirps similar to the chirping sound of a cricket. hour sequences. supra note 165.09. TrademarkDistinctiveness in a Multilingual Context: Harmonizationof the Treatment of Marks in the European Union and the United States.. Elec. See Hinton. 4) a short sound up a Major 3rd from the preceding sound. 171Id. 175 See e. 173 Edgar Rice Burroughs. For example..S.. renders no aural recognition of the sound. However."). alternating between the chest and falsetto registers of the voice. the Edgar Rice Burrow company registered "the sound of the famous Tarzan yell" in 1998.Q. 2000963 ("The mark consists of the sound.CARDOZO LA W REVIEW [Vol. Reg."). No. 7) a short sound up a Major 3rd from the preceding sound. § 2." Id. providing a brief description or utilizing onomatopoeia. 2210506. 3) a short sound down a Major 3rd from the preceding sound. making it difficult to transfer the written description into an aural impression.173 The mark was described as a yell consisting of a series of approximately ten sounds. Inc.P. Heritage Siding & . Reg. Inc.52(e) (2003). for others such as this author. Inc."). 174 Id.. 170 In re Gen. The Board did not reject the possibility that the sound of a ship's bell could be indicative of broadcasting services. Reg. AWS Convergence Techs. see infra notes 181-83 and accompanying text.M. as follow[s]. No. supra note 56. beginning with one ring at approximately a first half hour and increasing in number by one ring at approximately each half hour thereafter. registration of a sound mark in the United States does 172 not require a drawing but rather a detailed description of the mark. Note the ease of understanding the mark for those who have seen the movie Tarzan. 2203470 ("The mark consists of the sounds of thunder and rain. required evidence of acquired distinctiveness. 172 See 37 C.. or distinctive and. 9) a short sound up a Major 3rd from the preceding sound..

such as an audio cassette or a musical score.. Institut pour la Protection des Fragrances' Application.56 (2003).E." Metro-Goldwyn Mayer. § 1202. § 1202.g.. but it unfortunately stopped short of requiring one. not everyone is able to read musical notes and very few are able to read sonograms. Bainbridge. the United States should require a sonogram or detailed musical notation.E. apart from being entirely subjective. infra notes 18486 and accompanying text. however.g.. 34. The Development of Cognition in Music. 2600195 ("The mark is the sound of a wild loon provided in one or more short bursts . 31. depending on the type of mark. but they lack certainty and comprehension. supra note 55. 2524758 ("The mark consists of the sound of a kiss made when. but each cognizes it differently. The Board of Appeals in Metro-Goldwyn-MayerLion Corp's Application noted that the applicant could submit a description of the mark in addition to the sonogram to facilitate further understanding of the mark. 2004 E.M. Reg.177 Neither the European Union's nor the United States' registration procedures for sound marks is ideal. 2158156 ("The mark consists of the sound of a cat's meow.. 70 MUSICAL Q. T. No. State Lottery Agency. . the specimen should contain a sufficient portion of the audio content to indicate the nature of the services.2005] A NEW TRADITION 487 mark. ").. But see Case R 186/2000-4. Minn. 42. even if it does not always know how to decipher this"). at 228 ("[Ilt is likely that less than half of those interested in trade marks can. Another mind 'hears' differently an identical artwork. Reg. "[tlo show that the sound mark actually identifies and distinguishes the services and indicates their source. and stating that "each listener hears the same piece [of music] . makes it extremely difficult both to ascertain Windows. e. EasyTel Corp. Hidaka. See Case R-781/1999-4.P. The European Union's registration procedures provide specificity. The European Union should also require a digital sound sample. 179 Nonetheless. 27. 2005 E. ." T.T... the applicant must submit a specimen of the sound being used in commerce. while training and practice are prerequisites to conceptualizing a sonogram as the sound or noise depicted. Similarly. supra note 56. . 180 See. While unintelligible to the average user of the registry. 218. No. supra note 21.R.").. ). Metro-Goldwyn Mayer Lion Corp.P."). by looking at a piece of music so expressed.. the same is true for a musical notation. See Bainbridge. 177 See 37 C. 221-24 (1984) (discussing how recognition of a sound differs from person to person and may depend on differences in prior experience or familiarity with the sound and notes... § 2. 179 The Board of Appeals recognized this objection in Metro-Goldwyn-Mayer and noted that. 34.M. which 0 8 cannot be done aurally. MTM Enters. No. as the standard and universally known code for representing a melody. the United States' reliance on a description.. for example.M."). have a real and accurate perception of the nature and character of the mark. No. Application. 2004 E.").M. they enable quick comparison between sounds.R.M.R. one is 'blowing a kiss' to another person .. 18 (rejecting argument that musical notes on a stave are not comprehensible and noting that "the relevant public usually perceives the score.. at 1128 (noting that the average member of the public does not find notes on a musical stave comprehensible). Reg.15 notes. 178 The use of musical notations on a stave and sonograms facilitates reproduction and systematic identification of the sounds registered. 178 See e.F.15. at 231 (advocating the digital registration of sound marks in the European Union).T. Mary Louise Serafine.T. and "nobody seriously disputes the fact that musical notation is a suitable way of representing sound marks graphically. 2685338 ("The mark is the sound of a ringing cash register. supra note 21. The European Union could improve its registry by following the United States' lead in requiring a detailed description of the sound in addition to a formal notation.R. containing the conventional indications needed to interpret this. Reg.

Q. Is a man. The rhythmic pattern is eight 16th notes and a quarter note. 2802893. VISA has registered [a] mark consist[ing] of three main audio and musical elements. 185 See Bainbridge.S. 43 U. F5. struck nine times at a brisk tempo. supra note 21. Reg. G5[. Boston Duck Tours registered "the sound of a human voice making quacking noises like a duck.. is just over 3 seconds. 186 See Hidaka. at 230 (using an example of a dog barking to raise objections to sound marks)." the Board probably would not have understood the description in the same manner without having listened to the mark. This is followed by rising orchestral choir vocals in the key of D major. it begins with a 'whoosh' sound similar to a quick passing jet.S.O. the total duration. but with an overtone of D-sharp." Reg. the United States should require the specimen. 2741129.1 181 See supra notes 175-76. with the final tone allowed to ring until the sound decays naturally. or child making the sound? How long does the quacking last? Does the sound consist of a noise actually imitating a duck or is the human voice just speaking the word "quack"? Interpretation of the mark will largely depend on the searcher's unique. 2308503. subjective interpretation. Other examples illustrating the imprecision and unintelligibility of a description are: Reg. C6.. Inc.T. at 230. at 231 (suggesting making sound samples available over the internet to enable anyone to access and play the mark). which the U.S. In addition.] A#5. much less how broad its scope of protection should be. The sound is then concluded with a very quick ascending five-note scale played in the voice of high pitched bells: D5.O. Can you identify the sound or the source of this mark? It is the closing bell for the New York Stock Exchange. In Kawasaki Motors Corp. v. 27:1 the sound for which registration is sought 181 and to prove infringement of the mark.S. as it better facilitates understanding of 83 the mark.2d 1521 (1997). 183 For example. at 1129 (noting that. Utilizing the specimen in such a manner would 86enable a clear and precise understanding of the scope of the mark. see Bainbridge.P. For support of this argument. supra note 21.. see also supra note 180.A. supra note 21.T. woman. 182 It is difficult to determine what comprises the mark. 184 See supra note 177 and accompanying text. the Board used the sound recordings submitted as a specimen in addition to the description.CARDOZO LAW REVIEW [Vol. raising many more questions than it answers. the U. new methods for registering sounds will make marks more accessible online at national registries). could later make available on TESS. While the Board noted that the aural perception on the tape could "fairly be characterized as an aural presentation of the literal description. with the advent of technology.' 84 to be made available to all searchers and users of the trademark registry.' 85 Alternatively. which is usually an audio cassette or compact disc recording of the sound mark. it is insufficient standing alone. H-D Mich. However. . which registers the sound of a brass bell tuned to the pitch D. The Trademark Trial and Appeal Board has acknowledged that it is difficult to ascertain the nature of a sound mark from the description alone. from the striking of the first tone to the end of the decay on the final one. No. See Bainbridge. No. 182 A description should be used merely to supplement the sonogram or musical notation. No.P. This description lacks precision and clarity. This may be accomplished by requiring applicants to electronically file sound marks by uploading digital sound files during the registration process. could upload the sound files upon receipt of the paper applications. Underlying the last scale is a bass note of D2.P. supra note 55. U.

192 Id. Case R 156/1998-2. precision and objectivity. 2003 E. Interestingly. intelligible. Sound. [Trademark Office] of the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester). 37. represents the actual sound. 1999 E. and scientific services. however.T. and a sample of the scent. whose structural formula is set out below. 000428870). C6H5-CH = CHCOOCH3. precise and objective"). at 28. or a Bit Fishy. the European Union's strict graphic Sieckmann v. Id.M. the European Union permits registration of olfactory marks.'s Application. the Board accepted an application to register the "smell of fresh cut grass" for tennis balls. The E. The application included representation of the scent by a chemical formula. at 28. see also Sound.R. (Yellow Pages) of Deutsche Telekom AG or. 13.C. 37. graphic representation requires a "clear. the Third Board of Appeals also accepted that a written description of an olfactory mark satisfied the graphic representation . self-contained. 429 (CTM No. if not impossible.C.M. the E.M. As aforementioned.. Specifically. 92 A sample 187 Case C-273/00. 70 (finding the description was "not sufficiently clear. a scent 187 representation requirement essentially precludes their registration. However. at 191 ("This [Sieckmann] decision makes it very difficult.R.T.. Sieckmann v. 163-64. and very few people would recognize the scent by looking at a 0 chemical formula. 37.R. Olfactory Scent Marks Theoretically.. rejected the use of a chemical formula because it represented the substance of a scent rather than the scent itself. to register a smell as a mark.M. 11.J addressed the requirements for olfactory mark registration in sample. It is unclear whether this registration will be revoked as a result of the E.T."). See supra text accompanying notes 153..'s decision in Sieckmann. 1 69. durable and objective" representation "by means of images. precise..J. It is interesting to compare the rejection of a chemical formula as unintelligible with the adoption of a sonogram or musical composition as sufficient graphic representation. agricultural. 2003 E. the two methods can be reconciled by the fact that the latter. for example. insufficient because users of the registry would not perceive the description of the scent uniformly. Deutsches Patent-undMarkenamt 88 and held that neither representation by a chemical formula. in practice. at 191.J. supra note 55. 191 although graphic in form. Merck in Darmstadt.C.2005] A NEW TRADITION C. 9 69-73.. while the former when deciphered still does not represent the fragrance the formula creates. a description of the scent. The Second Board of Appeals previously found a written description constituted sufficient graphical representation of a scent.R. prior to Sieckmann. 2003 E. Vennootschap Onder Firma Senta Aromatic Mktg.T. Deutsches Patent. Sieckmann. 189 Case C-273/00. nor a combination of these methods satisfied the graphic 89 representation requirement. 191 The description stated: 'Trade mark protection is sought for the olfactory mark deposited with the. once deciphered. 178-80. lines or characters .T.M.. easily accessible. supra note 65. or a Bit Fishy. 10. In Vennootschap Onder Firma Senta Aromatic Marketing's Application. Id. supra note 55. a written description. Id. 188 Case C-273/00.und Markenamt. 37. Order 2. Chaudri. 11-13. 19 The Court deemed the description of the scent. Samples of this olfactory mark can also be obtained via local laboratories listed in the . 2003 E. supra note 65. Sieckmann involved the registration of a 'balsamically fruity [smell] with a slight hint of cinnamon"' for services ranging from advertising and education to medical. See Chaudri. at least until such time as it can be demonstrated that technology exists which can identify smells with sufficient clarity.R. via the firm E. 190 Id.

R. 42. clearly. The Board rejected the argument that the image could be deciphered by reference to outside information.C. The E. was such an exception. Something Stinks in the Lanham Act. and the concern in general with permitting the registration of a scent: There is no conceivable way of describing a smell with precision such that it can stand on its own without reference to some other information. Scents. 11. Id. there remains the doubt as to whether they should be registered in principle as smells are not generally recognised by the public as performing a trade mark function. PUB. 13. Hosford. Id.M.T. and arguably 95 illustrates its opposition to the registration of scent marks altogether. However. Sense or Cents?.. supra note 21. Case R 711/1999-3.M. 193 nor stable nor durable as it was likely to fade or change over time.490 CARDOZO LA W REVIEW [Vol.U. The Board explained: [The] relevant public is not generally accustomed to the nature of the representation code used by professionals in the perfume industry. 37. like the smell of fresh cut grass before it. requirement. it rejected the application for "the scent or smell of raspberries" for motor fuel. although not noted by the Court. The Board recognized the difficulty with regard to graphical representation of olfactory marks but considered it was not impossible that. in an exceptional case. stimuli or material or without inviting an unacceptably wide range of subjective perceptions of what the mark really is. 27:1 of the scent also failed to satisfy the graphic representation requirement because the sample was neither a graphic representation in the strict sense of the word. the scent sample was surprisingly accessible because the applicant had offered to make it available for inspection at various laboratories throughout the Union. 2003 E. Further illustrating the barriers to scent mark registration in the E. They considered that the scent or smell of raspberries. however. or characters.. as well as the E. Bainbridge. a scent can be represented completely. The Board reasoned as follows: [T]he coloured matrix filed does not comply with the graphic representation requirements . Louis U. The [sign] must also be perceived as such by users of the register and it must enable them to obtain the necessary indications in order to be able to interpret this. Institut pour la Protection des Fragrances' Application. 2005 E." Id 67. a statement "that the scent was usually described as 'balsamically fruity with a slight hint of cinnamon' accompanied the sample. see Douglas D. 293 (2001). Interestingly. did not elaborate on why a scent sample was insufficient.R. See Case R 186/2000-4.. on the ground that it was not distinctive. 56. L.R. For an argument against the registration of scent marks. supra note 36. 18.'s arguable opposition to scent mark registrations. Sieckmann. 195 One commentator accurately summarized many of the European Union's concerns. Myles Ltd. 17. 194 The Court's reasoning reveals the European Union's hesitancy to grant property rights in a scent. Id.T. 193 It was not represented graphically by means of images. It is not sufficient for the sign to be technically capable of reproduction.U. precisely and objectively. REv. 20 ST. However. as it does not allow the relevant public to perceive the identity of the sign or to determine the extent of its protection. Churovich. 194 Id.M.. 71.J. at 29. 2003 E. See supra note 56 and accompanying text. the Fourth Board of Appeals recently rejected a scent mark application with a graphic representation consisting of a rectangle with various bands of color resulting from digitized electronic signals emitted from the sense itself. at 227.T. lines. the opinion noted the concerns of the Austrian Government that "an odour changes over time because of volatilisation or other phenomena and that a deposit can therefore not produce a lasting olfactory impression capable of constituting a graphic representation. as well as the argument comparing the graphic representation to the "undecipherable" use of a stave and musical score for sound mark registrations. Even if smells can be completely and precisely represented graphically.'s App. As the technique of graphically representing olfactory nuances by a set of coloured points or stripes positioned .

supra note 56." 198 Mike Mantel d/b/a Manhattan Oil.. The Board correctly noted that there was no way to perceive what the description meant to convey. see also T.S. 17 U. The Board distinguished between the registrability of scents supplied by the applicant and "scents or fragrances of products which are noted for those features..P.13. fresh.) wide by 11. For example.M.Q. the application in In re Clarke included a sealed kit containing a sample of the scented yam. such as perfumes. colognes or scented household products. ' according to two axes is not known outside the circle of initiated professionals. supra note 56..E.E.03.g.asp?pf id=207 (Apr. If the product sample exceeds these measurements.03.2d at 1240.Q.brandchannel. the application does not require a drawing..2d 1238. Clarke had established a prima facie case of distinctiveness and.R.. Id. hyacinth) musky .E. at 133 (noting process used by the .S.A. Id. 196 In fact. which the Board found to be a sufficient specimen. Rather. ' Id. 2560618 ("The mark is a scent mark having the scent of bubble gum.09. The description stated the mark was "' [a] lawn green note. supra note 56.M.. to the registration of scents. Ms. pink floral (orange blossom. For example.F. such as the scent of perfume.199 Like a sound. see infra text following note 216. 201 If the product is small enough. 1990).. the U. The application described the mark as "a high impact.. the applicant may submit the actual product.Q.. § 1202. 199 T. No. Trademarking: Senses and Sensibility.S.B.O. will accept a substitute specimen. Reg.. See T. as only a sophisticated nose would recognize a "lawn green note. would be functional and not registrable. Randall Frost. 2956156 (strawberry scent). see. 1239 (T. such as the scent of apples or fresh baked bread.P.M.R. 17 U.13 ("Scents that serve a utilitarian purpose.P. the relevant public cannot perceive the reproduced image as a code. supra note 32.P. as long as the scent is distinctive and not an inherent attribute or natural characteristic of the goods. 26. but a strong mark if applied to computers or cars).2005] A NEW TRADITION In stark contrast to the European Union's approach.. 197 Celia Clarke d/b/a Clarke's Osewez.T.O.P. § 2.P. 18. as such. 200 T.E.T. and customers recognized her company as the source of scented yam. citrus (bergamot. Reg.P. No." Id. such as a sample of the scent itself.F. her advertisements promoted the scent of her product.P.2d at 1239. the U. supra note 56.E. supra note featureseffect.56(d)(1) (2003). which rendered the description useless.7 cm. the Board found that Ms.T. Reg. Nos.. T. 198 Registration of a scent in the United States requires a large quantum of evidence to prove that the scent functions as a trademark. § 2.. The Board also rejected the use of a description to aid in the representation of the scent. floral fragrance reminiscent of plumeria blossoms. T.M. 17 U.E. lemon). Id. 2004) (smell of fresh-baked bread would be functional as applied to baked goods.P. http://www." 37 C.52(e) (2003). theoretical nor practical.2 00 Submitting a sample of the scent satisfies the 0 2 specimen requirement.T.S.69 inches (29. the applicant must provide a detailed written description of the mark explaining the scent. and not larger than 8 1/2 inches (21.M. the U. While this Note advocates the use of a description to facilitate immediate understanding and recognition of a scent mark.. In re Clarke. Midwest Biologicals. at 1239 n. the parameters and values to be attributed to the axes. in In re Clarke." 196 See In re Clarke.6 cm. C. Hammersley. has registered the scent of plumeria blossoms for sewing thread' 97 and various fruit fragrances for lubricants and motor fuels. e.4. However. requires the specimen to "be flat. 1639128. the United States trademark system poses no bar.O. § 904."). the scent functioned as a trademark for embroidery yam and thread."). supra note 56.P.S. § 1202. § 807. Clarke presented evidence that her product was the only scented yam on the market. 2568512 (grape scent).M.. 2.S.P. § 904. § 904.) long. It also does not have any key with which to read this image. 2463044 (cherry scent). such that even the nature of the code to be applied is unknown . I agree that the description itself must be readily comprehensible to the senses. containing indications relating to.

supra note 195. Fragrancesas Trademarks.492 CARDOZO LA W REVIEW [Vol. "[a]pplicants soak blotter paper in the fragrance. 202 See. Hence. 17 U. at 224 (noting that describing a scent presents two problems: accuracy and subjectivity).S. 203 In re Clarke.P. but commented that the "era of '203 scratch and sniff registrations is not yet upon us. First. since the claimant will undoubtedly seek to register a description as vague as possible to attain the broadest possible protection while the Examiner will look for a narrow and specific description for ease in administration. 27:1 The United States' registration procedures are unsatisfactory.O. supra note 21. . supra note 195. 205 Such descriptions presuppose that the person reading the description immediately knows what a "balsamically fruity" scent or a plumeria blossom smells like. All of the personal perceptions. at 306. notify those competitors of the scope of the mark holder's rights. or effectively enforce the trademarks against 206 infringement. 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 in communicating that information to another individual. e. Accordingly. the European Union's treatment of olfactory marks reflects many of the problems associated with the current registration procedures for scent marks in the United States. at 131 ("Description of a fragrance mark is problematic because there is no unambiguous way to define a scent by graphical and instrumentation techniques.P. Churovich. several questions immediately present themselves.6. Churovich. Hammersley. 204 Mr. supra note 32. the applicant hermetically seals the paper holding the scent to ensure the applicant preserves the fragrance. Upon what basis does one describe an olfactory impression to another? How can one be sure that the other individual has had similar or sufficient experiences upon which to compare the description communicated and arrive at the desired or correct understanding? ." Id. this approach will unduly burden the system with unmanageable strife during the processing of each scent claim. Then. and physical limitations would frustrate any such attempt. fragrance industry to present product samples satisfies specimen requirement). 134 (1989). at 293..S. But see Hammersley.. 20 2 In fact. biases. See Bainbridge. 79 TRADEMARK REP.. Churovich further notes the problem with relying on a description: [A]ccurate scent descriptions cannot effectively be communicated through language. According to Ms. the description of the scent illustrates a problem of perception because scents are very 2 4 If 0 subjective and it is very difficult to unambiguously define a scent. creating an administrative burden on the U. this is not necessarily a problem for fragrance marks because Congress has allowed imprecise definitions of marks for some time. Interestingly.Q. Hawes. the Board in In re Clarke arguably recognized the possible problems with the current registration procedures of allowing a description to represent a scent mark. 20 5 then the mark does not identify source for those consumers. 312-14. James E. at 225.g. However. supra note 21.T. 206 Mr. for registration purposes.2d at 1240 n. consumers or searchers of the registry do not know what a "balsamically fruity smell with a slight hint of cinnamon" or the "scent of plumeria blossoms" smells like. it would be dubious indeed to claim that any two individuals ever had the same true understanding of any given scent. see also Bainbridge."). Furthermore. and legal obstacles to trademark enforcement and determinations of infringement.

' . or even destroy the proposed communication? Perhaps the second individual is suffering from a mild headcold. distinguish between two 0 scents when each smells different to each individual? 2 1 Neither the 21 1 description nor the specimen resolves this problem. Ideally. Hawes. 208 More importantly. at 313-14. much less speak to the subjective perceptive scent memories of each juror and the judge. Courts ascertain the existence of consumer confusion by applying a multifactor test. difficulties arise in infringement actions. 207 See id. Do Scents Signify Source?-An Argument Against Trademark Protectionfor Fragrances. recent advances in Churovich.U. such as determining whether there is consumer confusion.2005] A NEW TRADITION 0 Second. which includes comparing the similarity of the marks. and therefore a court's attempt to objectively apply trademark law to possible scent mark registration is impossible. at 1125 (recognizing that until there is a "properly recognised and thorough smell classification system" in the E.. See supranote 26. how will infringement be regulated and enforced? Is there any effective testing procedure that can be feasibly administered in an infringement suit? If a jury is seated. let alone judges. will each be required to ascertain the similarities between competing scents? How can either party in such a suit possibly hope to recognize. at 154-55 (discussing infringement of fragrances). particularly when the judge and jury are unable articulate [sic] the memories themselves? What types of criteria must be met before an individual is qualified to sit on such a jury? While such questions are daunting.. is there any guarantee the second individual will sense and remember the odor in the same way as the first? What could influence. how similar is too similar? A quick cross-reference to the discussion of registration above will highlight the extremely nebulous nature of such questions. What if the second individual was in a different city? An unlimited list of distortion inducing factors can be imagined that would directly influence or even preclude the line of communication sought by the two individuals. 210 Churovich raises several questions concerning infringement: [Wihat would constitute infringement of a scent mark? That is. "smells will not be registrable"). 82 TRADEMARK REP.. 209 Id. or just drank a cup of herb tea. Even if a recordation standard is ultimately established. the implementation of a smell classification system would facilitate olfactory mark registration. [S]cent interpretation is inherently subjective. it is perhaps even more disturbing that the answers are as evasive and insubstantial as the scent memories that are causing them to be asked. supra note 202. The subjective and keenly personal nature of scents guarantees that confusion would always be present in varying degrees as between two or more individuals. 2 12 Until then. at 306-07. 475.20 9 How will jurors. 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 to them). at 312. at 302-04 (discussing the subjective nature of the olfactory sense). 211 Churovich.. supra note 195. at 306. supra note 195. some type of objective standard is called for. 2 7 This makes it difficult to determine whether a fragrance is indicative of source or whether the consumer would be able to distinguish goods based on their respective scents. 212 See Hidaka.. 491 (1992) ("Given this potential lack of uniformity in the administration of a fragrance mark system. .") (citations omitted). Bettina Elias. Id. olfactory perception is unique to the individual. Id. supra note 55. supra note 32. [T]he court will need experts to testify on the interpretations of certain scents. see also Hammersley. Churovich explains: Even if a sample of the odor was available and presented.. at 150 ("[S]cent mark infringement is 'more difficult to detect and quantify with precision. 208 Id.

. 2 16 While enabling access to such technology may be costly.S. such representations alone would not educate a new entrant in the marketplace about possible infringement.O could provide its federal depository libraries with computers equipped with this technology..P. though inadequate by itself. Web users upon accessing the file could smell the scent through a speaker attached to the computer that plays smells rather than music. See Charles Platt. remains necessary for immediate. WIRED MAG.S. INDUSTRIAL PHYSICIST. and the specimen. at 26. Electronic Noses Snuff Out New Markets.T. However. See John Lewis of Hungerford Ltd. http://www. 1999. For example. Nov. supra note 195. 27:1 technology may improve registration procedures.goviheadlines/y2004/ 06oct enose. immediate access to a graphic drawing. opportunity to smell the mark would provide insight as to the nature of the mark. Limin Zhu et Quality Control of Flavours in the PharmaceuticalIndustry Using Electronic Noses.. at 299-303 (discussing the use of vibrational theory to depict the energy of scents). and personal preferences. mood. As such. however. allergies.presearch. 104. The company has since gone out of business for lack of consumer interest.nasa. unlike the color context.. 6. Electronic Nose. Ideally. there does not exist any comparable system of fragrance classification or 'odor dictionary' upon which a fact finder might rely. although subjective. The use of an electronic nose has been suggested in the European Union. a description. at 27 ("Human experts are subject to such variables as fatigue. a user of the 2 15 registry would be able to obtain a sample of the scent upon request. see also Dr. 6. Oct.pdf. 51. 21 3 Alternatively. 1999. but was rejected by the court because of "the inability of the.M. spectrograms could be utilized to visually 2 14 depict scents. Jan. a new process could encode scents as digital data and upload them on the World Wide Web. 7. Interestingly. health. 2005)."') (citation omitted). at 256. Feb. This technology would greatly aid courts in ascertaining infringement. However. would further this goal. "electronic nose" analysis of an olfactory scent imitates the human sense of smell. 120/Merck%/2OEnose%/2OPublication. albeit imprecise. 216 This technology was invented in 1999 by DigiScents. 2001. 213 See Jennifer Ouellette. You've Got Smell!. 258 (explaining the author's first-hand experience with the technology and his ability to smell oranges online). While the above-mentioned representations of olfactory marks would assist courts in assessing infringement. Further.P."). 218 This Author recognizes the costs associated with these recommendations. 217 The U. [electronic nose] sensory analysis and graphic profile to provide a graphic representation which could properly be regarded as unique to the" smell sought to be registered. http://science. which affect the reliability of the sensory evaluation. creating a digital file of the scent that can be pictorially displayed. See id. Alternatively.htm?list1055652 (last visited Sept. information on the mark. 'What the electronic nose now offers is the ability to put down a descriptor for an odor or flavor in terms of hard figures. NASA is currently developing an electronic nose to detect smells and other odors during space exploration.R.T. 215 As opposed to visiting the U.'s Application. a full discussion of costs is beyond the scope of this Note.O. 214 See Churovich. facilitating enforcement of trademark rights. the description. SCIENCE @ NASA. See Karen Miller.494 CARDOZO LA W REVIEW [Vol. 2001 E. . 2 17 the expense should be worth the ultimate 8 21 privilege of possessing a scent.

Providing opportunities to sample the scent in conjunction with immediate access to a graphic depiction and a precise description would provide further clarity as to the nature and scope of the mark. create legal certainty. by utilizing current registration procedures to their fullest potential. and differentiation among. While these new methods may be costly. enabling the consumer to correctly identify and purchase its preferred goods and services. Increased specificity in color. Sound mark registration should include pictorial representation by detailed musical notation or a sonogram to enable quick comparison of sounds.2005] A NEW TRADITION CONCLUSION The registration of color. they would aid in administration of the trademark system. and further the policies of United States trademark law. and the marketplace. requiring that a description must supplement the representation would improve comprehension of the mark. trademark registrations would more clearly define nontraditional marks and would better protect registrants' rights. and scent nontraditional trademarks necessitates increased specificity and precision. Further. and scent registrations would benefit United States trademark law by protecting the interests of the consumer. sound. The trademark registry would more effectively provide notice to a prospective user of an identical or confusingly similar mark before that user expends large sums developing and promoting a new brand. Olfactory scent mark registration would benefit from implementing a smell classification system or adopting other technologies such as an electronic nose or spectrogram. Additionally. increased specificity would minimize consumer confusion as to source. As a result. color mark registrations would provide precision and enable clear identification of unique colors. Publishing a color drawing and a facsimile of the specimen in the Official Gazette would provide increased clarity and notice to the marketplace. Availability of the sound to searchers of the registry in a digital audio format would also enable a clear and precise understanding of the scope of the mark. United States trademark law would provide the specificity and certainty needed to create and protect rights in nontraditional trademarks. United States trademark law would be stronger and more effective if it incorporated several of the European Union's registration requirements. By requiring the use of an international color code. scent marks. Additionally. . sound. the trademark owner. enabling quick identification of.