The Shape of the Season: Holiday Insights on Nontraditional Trademarks

The holiday season puts brands on full display—storefronts glow, packaging pops, and signature sounds and scents fill the air. 

It is also a great time to consider how nontraditional trademarks might advance your brand’s business goals. Here are a few practical takeaways to help your team leverage the season.

From tinsel to trademark. Most trademarks are words or logos, but that’s just the tip of the iceberg. Sounds, scents, colors, and even product design or store layouts can be protected as trademarks if they identify your brand and are not functional.

We see nontraditional marks every day—from the shape of a Coca-Cola bottle or the layout of Apple’s retail store design to the “sweet, slightly musky, vanilla” smell of Play-Doh or the sound of Netflix’s “tu-dum” when you curl up to watch your favorite holiday rom-com. If you’re very lucky, you might even unwrap something in the robin’s-egg blue packaging used by Tiffany & Co. this holiday season.

Unwrapping distinctiveness. Not every color, shape, or jingle is eligible for trademark protection. In fact, a single color on a product or the shape of the product itself usually isn’t. The difference: it functions as a source identifier, meaning that when when people see, hear, or smell that feature, they think “that’s you.” So basic colors and designs that everyone uses—like red and green décor or a heart-shaped box—are viewed by consumers as decoration rather than branding. If your competitors reasonably need the feature, you can’t use trademark law to fence it off, and neither can they.

Form over function. Similarly, features that make your product work better generally cannot be protected as trademarks. (If you have new ideas about making a product work better, our stellar Patent Prosecution & Portfolio Counseling team can help you out.) This functionality limitation applies to both utilitarian features, such as a grip pattern that prevents slipping, and decorative features, such as red and green holiday colors, that would seriously harm competition if other brands could not use them. Functionality even limits the trademark protection of scents for products such as perfumes or cleaning products, where the scent is inherently a functional feature of the product itself. 

Nontraditional Takeaways

1. Don’t claim the holiday. Remember, common seasonal elements don’t point to any one brand and can’t be registered as trademarks. Functionality can be a significant barrier, too.
2. Make your list and check it twice. Review your brand and look for distinctive features (product packaging and design, store layouts, colors, sounds, shapes, and even smells) that point to you. Even if your brand already has an extensive IP portfolio, have you thought to register your nontraditional trademarks?
3. New year, new protection. Protect those features and your brand by seeking legal advice to assess whether those features are protectable as nontraditional trademarks. Register those marks and, whether new or old, remember to enforce your trademark rights.