TTAB ENDS FENDER’S BID TO REGISTER TRADEMARKS FOR ITS GUITAR SHAPES

In a recent decision, the Trademark Trial and Appeal Board (TTAB) ended Fender’s five-year fight to obtain federal trademark registrations for the shape of its Stratocaster, Telecaster, and Precision Bass guitars (pictured below). The TTAB determined that Fender did not show that the two-dimensional outlines of its guitars, standing alone, served to indicate source.



This case illustrates the importance more and more companies are placing on so-called “nonconventional” trademarks, and also the difficulty associated with obtaining a federal registration for such marks.

Most people are familiar with “traditional” trademarks, such as words, logos, or symbols. However, trademarks can take just about any form. Increasingly, providers of goods and services are claiming protection for nonconventional trademarks. Nonconventional trademarks can include sounds, shapes, textures, smells, movements, and even tastes.

Specific examples of nonconventional trademarks registered with the United States Patent and Trademark Office (USPTO) include the following:

O The sound of a roaring lion for use in connection with motion pictures (Metro-Goldwyn Meyer Lion Corp., U.S. Reg. No. 1,395,550).

O The scent of an apple for use in connection with office supplies (The Smead Manufacturing Company, U.S. Reg. No. 3,140,701).

O Velvet textured covering on the surface of a bottle of wine (American Wholesale Wine & Spirits, Inc., U.S. Reg. No. 3,155,702).

O The shape of an eight-sided competition mat for use in connection with multi-disciplined fighting competitions (Zuffa, Inc., U.S. Reg. No. 2,098,577).

O The motion in which the door of a vehicle is opened (Lamborghini, U.S. Reg. No. 2793439, “The doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position”).

The key to obtaining trademark rights to a nonconventional mark is establishing that the mark is capable of functioning as a source indicator, meaning that consumers are able to identify the mark as being associated with the maker or provider of a product or service.

Demonstrating this source-identifying function tends to be more difficult with non-traditional marks, and many have tried, but failed, to register a nonconventional mark with the USPTO. In addition to Fender, other notable failures include Harley-Davidson’s attempt to obtain federal trademark rights to the exhaust sound of its motorcycles and drug manufacturer Organon’s attempt to register an orange flavor for its anti-depressant medication.

As competition for customers becomes more and more fierce, and as marketers become more and more creative, providers of goods and services are likely to continue their efforts to establish brand recognition through nonconventional marks.



- Tucker Barr



Tucker Barr is an associate in the Litigation Group and Intellectual Property Team at Arnall Golden Gregory LLP (tucker.barr@agg.com). Our firm serves the business needs of growing public and private companies, helping clients turn legal challenges into business opportunities. We don't just tell you if something is possible, we show you how to make it happen. Please visit our website for more information, http://www.agg.com/.