The effects of powerfully sensual encounters with brands on consumers are not to be dismissed lightly, however. Says Alexander Isley, art director of the corporate-identity design firm Alexander Isley Inc., “I've always been a fan of the old Giorgio perfume emporium on 57th street in New York City that had a nozzle that would periodically spray their scent out on to the street. They owned the air.” Isley also likes the Intel chime and the Microsoft Windows startup sound. “And don't forget the shouting of SEGA,” he says, “It's interesting to see how you can even own how a voice is modulated.”
Trademarks can be traced to antiquity, where they served to identify the origins of pottery. During the Middle Ages, a law in England required bakers to mark their loaves so that any underweight goods could be traced to their sources. But it wasn’t until the nineteenth century, when individually packaged goods began to replace merchandise sold in bulk, that manufacturers began labeling wrappers and boxes with brand names. By then, many American companies were adding picture symbols — trademarks, to their packaging.
Many of the early American trademarks appealed to the public’s fascination with cowboys, Native Americans and the founding fathers, as well as with a wide range of creatures from American fauna including buffaloes, bears and bald eagles. These folksy trademarks offered consumers a personal connection to distant factories where the goods they purchased were produced or packaged. In addition, they established an emotional bond with the consumer, while offering the assurance of product consistency.
By the end of the nineteenth century, most Americans had become accustomed to purchasing branded food items. And a couple of decades later, they were buying branded products from the shelves of grocery stores, without the assistance of the grocer. Companies, meanwhile, discovered that trademarks were valuable assets capable of retaining customers. If customers liked the trademark, the manufacturers could expect a steady stream of business and have a solid basis for extending their businesses. (Hal Morgan, Symbols of America, Penguin 1986)
After World War II, pictorial trademark images began to give way to more abstract designs. The Prudential Insurance Company’s Rock of Gibraltar, for example, evolved into an abstract wedge. Trademark designers sought to create distinctive and memorable symbols that provided positive images of companies and their products. Trademarks promoted an identifiable individuality and quality with an image that was easy for the consumer to identify and recall.
When the US established its first federal trademark law in 1870, registrants were required to provide a clear drawing of the design with a description of the type of goods that it would cover. The requirement that a trademark be capable of being represented graphically posed a substantial barrier to the registration of non-visual marks such as sounds and scents because there were no simple ways to represent them on paper.
The representation of nontraditional marks remains a problem to this day. According to Allan Poulter, a partner in the British law firm of Field Fisher Waterhouse, “There have been a number of decisions of the European Court of Justice over the past year or so that have considered the registrability of non-visual marks. Generally, these decisions have accepted that, in principle, these types of mark can be registered — in that they may be capable of distinguishing the goods and services of one undertaking from those of another. However, where the applications have faltered is in the attempt to satisfy the requirement of the graphic representation of the mark.”
Many nontraditional trademarks end up being adopted or accepted by the public well before the laws of the country concerned are amended to give specific protection to the new forms. For example, Coca-Cola, which first bottled its soft drink in 1894, began using its distinctive fluted-and-bulging bottle design in 1915. But it was not until 1960 that the company succeeded in registering the design as a trademark with the US Patent and Trademark Office.
There have, however, been relaxations in the requirements for registering nontraditional marks. In the US, applications for sound and scent marks no longer need to be accompanied by a drawing. In the United Kingdom trademarks have now been granted for “a floral fragrance/smell reminiscent of roses applied to tyres,” and to “the strong smell of bitter beer applied to flights for darts.” (David Bainbridge, “Smell, Sound, Colour and Shape Trade Marks: An unhappy flirtation?” Journal of Business Law March 2004.)
Owens-Corning was initially unsuccessful in its attempt to obtain a trademark for the color pink in association with its fibrous glass insulation, despite the fact that the company had licensed the Pink Panther character, invested millions of dollars to promote the color of its product, and demonstrated that residential customers associated the color pink with its product. However, Owens-Corning appealed the decision and was eventually successful in registering the color as a trademark.
Although the US Supreme Court recognized definitively that colors could properly serve as trademarks in 1995, not all questions about color registration have been resolved. The Court of Justice of the European Communities noted last year, for example, that although there may be some media on which it is possible to record a color in permanent form, there are others such as paper, where the shade of the color cannot be protected from the effects of time.
In the US, scents may be trademarked if they do not serve a functional purpose, and in 1990, it was held that a scent served as a trademark for “sewing thread and embroidery yarn.” However, fragrances such as the scent of a perfume are considered functional and cannot be registered. Says attorney Schloss, “Although the scent of fresh-baked bread would probably have very limited protection as applied to baked goods — and the Trademark Office would likely hesitate to grant such a registration, it could be a strong mark if applied to, say, cars or computers.”
Sound marks pose still other problems. In Britain, trademarks must be represented in the trademark register in such a way that people consulting the register can see what the mark is. But many people cannot read musical notation, so it has been argued that not everyone will have a clear perception of the mark by examining a piece of music.
In the US, meanwhile, sound marks can be represented by a series of musical notes or tones, with or without words, and words accompanied by music. Audio cassettes and compact disks have been used to show that the mark actually distinguishes services and their source. The trademark registered by the New York Stock Exchange for the sound of its closing bell, cited earlier, was actually issued for “a brass bell tuned to the pitch D... struck nine times at a brisk tempo.”
Trademark attorney David Bainbridge writing in the Journal of Business Law has suggested that computer technology might be used to facilitate the registration of sound and color marks. One of his proposals is that sounds be deposited in the form of compact disks or in digital code capable of being played on a computer. But there are other ways that computer technology might impact nontraditional trademarks. There have been suggestions, for example, that cell phones and the Internet might provide platforms for new sound marks.
Associate Professor Larry D. Compeau of Clarkson University School of Business in Potsdam, NY, believes that companies will have to have compelling reasons to justify seeking protection for a nontraditional trademark. “There has to be value to the firm. For Coca-Cola with their bottle or Owens-Corning with their insulation, that represents what I would consider to be a very special connection with the consumer. They want to protect that in the long-term so that what they have built over many years can’t be partially eroded.… I can’t imagine a firm going after a trademark of this nature where they don’t feel that that connection exists because otherwise it’s just a lot of money spent for nothing.”
According to Schloss, “Nontraditional marks have the potential to serve as powerful tools in conveying the emotions and ideas underlying the most compelling brands.” He adds, “As technology continues to improve, I would expect to see an increase in the use of non-traditional marks. However, with occasional exceptions for break-through entrepreneurs, I think the leaders in adopting such marks will continue to be well-established companies with larger advertising budgets.”