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SOMETHING OLD, SOMETHING NEW, SOMETHING BORROWED, SOMETHING BLUE: A NEW TRADITION IN NONTRADITIONAL TRADEMARK REGISTRATIONS
Melissa E. Roth*

INTRODUCTION

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 ... ").

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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
MARKS: TRADEMARK RIGHTS IN SOUNDS, SCENTS, COLORS, MOTIONS AND PRODUCT DESIGN IN

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 http://legalmediagroup.com/mip/default.asp?Page=1&SID=2363&mgName=brandman04.gif &=F=F; see also Posting of Jeremy Phillips, There's Got to Be a Better Name?, IPKat, http://ipkitten.blogspot.com/2005 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, http://www.martinlindstrom.com/index.php?id= 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

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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

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

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mitigate consumer confusion. Color, sound, and scent marks also cannot be identified with great precision in the registration process. 24 As a result, 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. 26 Additionally, the degree of recognition of nontraditional marks varies among individuals, rendering the evaluation, registration, and enforcement of nontraditional marks inconsistent and unpredictable. 27 Both the United States Patent and
24 ARDEN, supra note 10, at 35. The current registration practices make it difficult for trademark owners to identify their nontraditional marks with the desired precision. While precision is arguably not a goal of the current registration practices, the registration practices are not fatally flawed and can be remedied by adopting several additional practices. See discussion infra notes 137-45, 178-86, 212-18 and accompanying text. 25 Conducting a search of the trademark registry prior to adopting a trademark is important for several reasons. First, under the Lanham Act, a subsequent user of a trademark is deemed to have constructive notice of the registrant's claim of ownership. Lanham Act 22, 15 U.S.C. 1072 (2000). From a business standpoint, 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. See, e.g., Paul W. Reidl, UnderstandingBasic Trademark Law: A Primer on Global Trademark Protection, in UNDERSTANDING BASIC TRADEMARK LAW 2004, at 266 (PLI Patent, Copyrights, Trademarks, & Literary Prop. Course Handbook Series, 2004). From a legal standpoint, failure to conduct a search can lead to a finding of bad faith or willfulness, subjecting the infringer to payment of damages or profits. Lanham Act 35(a), i5 U.S.C. 1117 (2004); Reidl, supra. 26 Additionally, a trademark owner may not have the requisite notice that its mark is being infringed. Section 32(1) of the Lanham Act, 15 U.S.C. 1114 (2005), addresses infringement of registered marks. The statute states in relevant part: Any person who shall, without the consent of the registrant.., use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be held liable in a civil action by the registrant .... Id. In order to succeed in an action for trademark infringement, the owner must prove that he owns the mark, the mark is legally protectable, and the infringer used the mark in commerce in a manner causing confusion. Id. In assessing confusion, courts consider the degree of similarity between the registered mark and the allegedly infringing mark. See, e.g., In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003); Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir. 2002); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992); Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989); Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Other factors courts consider include: similarity of the goods, evidence of actual confusion, and the defendant's intent. See, e.g., Smith Fiberglass Prods. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993); Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992); Merchant & Evans, Inc. v. Roosevelt Bldg. Prods. Co., 963 F.2d 628, 637 (3d Cir. 1992); Dieter v. B & H Indus. of S.W. Fla., Inc., 880 F.2d 322, 326 (1lth Cir. 1989); Sno-Wizard Mfg. v. Eisenmann Prods. Co., 791 F.2d 423, 428 (5th Cir. 1986). 27 Bainbridge, supra note 21, at 222. Similarly, what one consumer may perceive as a source identifier, another may perceive as simply a sound, scent, or color. This individualized perception not only complicates consumers' purchasing decisions in the marketplace, but also causes problems in the United States Patent & Trademark Office (U.S.P.T.O.). Trademark examiners may have trouble differentiating between two competing marks, and one may view the

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

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entrepreneurs, by searching the trademark registry, to discover possible competition in the marketplace and safeguard against possible infringement claims before expending large sums developing and promoting new marks. 34 Additionally, increased specificity would minimize consumer confusion as to source, enabling consumers to 35 correctly identify and purchase their preferred goods and services. Recently in the European Union, 36 the European Court of Justice (E.C.J.) 37 addressed nontraditional trademark registration and established procedures that tackle many of the concerns raised by nontraditional trademarks in the United States. 38 Notably, the European Union's strict graphic representation requirement for nontraditional trademark registrations 39 provides legal certainty and accessibility 4 rights and oppose the registration. Id. Further, with regard to nontraditional trademarks, it becomes increasingly difficult for courts to ascertain what the applicant seeks to register and the mark's scope of protection. See, e.g., Minn. Mining, 82 F. Supp. 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). In fact, as David Keeling, a member of the Board of Appeals of the OHIM (see infra notes 51, 161) correctly notes, many of the problems that nontraditional trademarks face in the registration process mirror underlying issues in trademark law, such as: "(1) what a trademark truly is, (2) how do you know what the applicant has registered, and (3) how can you determine the scope of protection which registration confers." Posting of Jeremy Phillips & Ilanah Simon, Keeling Registers a Note of Caution on Unusual Trade Marks in Europe, IPKat, http://www.ipkitten.blogspot.com/2003_10 01_ipkittenarchive.html (Oct. 23, 2003, 17:37 EST). 34 Bainbridge, supra note 21, 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. The success and effectiveness of marketing effort depends on this."). 35 It follows that precise definition of marks informs competitors and trademark owners of possible infringement, mitigating and possibly preempting consumer confusion. See In re Int'l Flavors & Fragrances, 183 F.3d 1361 (Fed. Cir. 1999). 36 European Union trademark law is an exciting and developing area of law. In the past five years, the European Union has been developing its trademark law and addressing many fundamental issues for the first time, such as the registrability of nontraditional, descriptive, and geographical marks, as well as slogans and retail services. See Pen Hosford, Trade Marks in Europe-A ClearerHorizon?, MANAGING INTELL. PROP., Oct. 2003, at 27. 37 The E.C.J. is the highest court in the European Union. It was established in 1952 pursuant to the Treaty of Paris. The E.C.J. is made up of twenty-five judges, one judge from each Member State. The E.C.J. ensures that European Union legislation is applied and interpreted uniformly throughout the Member States. See Europa, European Union Institutions and Other Bodies: The Court of Justice, http://europa.eu.int/institutions/court/index en.htm (last visited Sept. 5, 2005). 38 Recently, the Court discussed the registrability of nontraditional marks, specifically sounds, colors, and scents. See, e.g., Case C-447/02 P, KWS Saat AG v. OHIM, 2004 WL 59751 (Oct. 21, 2004); Case C-283/01, Shield Mark BV v. Joost Kist H.O.D.N., 2004 E.T.M.R. 33; Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37. 39 The Court has noted that "[t]he registration system for trade marks constitutes an essential element of their protection, which contributes ... to legal certainty and sound administration." Sieckmann, 2003 E.T.M.R. 33, 37. The E.C.J. in Sieckmann outlined many of the policies the graphic representation requirement seeks to achieve, such as precise identification of the subject matter, accessibility to the public and authorities, and precise and complete information to other businesses in the marketplace. See id. 48-52. 40 Legal certainty is the most important criteria sought in trademark registries, according to a

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policies the United States hopes to promote through its registration process. 4' While the procedures adopted by the European Union do not completely resolve the problems inherent in nontraditional trademark registration, they represent positive advances for the European Union and, if adopted in the United States, would greatly benefit United States

trademark law. 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. This Note further argues that by efficiently utilizing some of its current registration procedures to their fullest potential, the United States would provide trademark owners and competitors with the specificity and definiteness necessary to create, protect, and guarantee rights in nontraditional marks. Part I of this Note introduces European Union trademark law and its registration procedures. Part II delineates United States trademark law and its trademark registration practices. Part II also highlights deficiencies in United States nontraditional trademark registration in light of the policies underlying the Lanham Act. Part III discusses the European Union and United States' treatment of nontraditional trademarks, detailing their respective registration procedures for color, sound, and scent marks. Part III also suggests possible changes to the United States' treatment of nontraditional marks, which would better effectuate the goals of trademark law.

I.

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). 44 The Directive requires
survey conducted by ManagingIntellectualProperty. The Truth About Trade Marks, MANAGING INTELL. PROP., May 2004, at 32. Nearly eighty percent of in-house counsel surveyed stated that legal certainty was a very important aspect of the registration process. Id. Other important factors included accuracy of examination procedures and availability of extensive searches. Id. 41 See infra Part II and notes 72-81 and accompanying text.
42 See infra Part III.

43 The European Union was established to create a uniform internal market among its Member States. It sought to promote social and economic harmony through the free and unhinged movement of goods, services, and capital. See TREATY ESTABLISHING THE EUROPEAN COMMUNITY art. 3(c) and pmbl., Nov. 10, 1997, O.J. (C 340) 3 (1997); see, e.g., First Council Directive 89/104/EEC of 21 Dec. 1988 to Approximate to the Laws of the Member States Relating to Trade Marks, recitation 9, 1989 O.J. (L 40/1) [hereinafter Directive]. However, the trademark laws of its Member States contained disparities, which impeded, rather than furthered, economic cohesion. See id. recitation 1; Council Regulation (EC) No 40/94 of 20 Dec. 1993 on the Community Trade Mark, 1994 O.J. (L 11/1) [hereinafter Regulation]. 44 See supra note 43. The European Union adopted the Regulation and Directive in an

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European Union Member States 45 to adapt or "harmonize"

46 respective trademark laws to comply with the Directive's provisions. The Directive defines what may be registered as a trademark, 47 the grounds for refusing or invalidating a trademark, 48 and the rights

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

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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. 51 Theoretically, in the European Union, any mark, including a sound, scent, or color mark, is registrable, 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.5 2 While the

European Union treads cautiously as to whether nontraditional marks should be registrable, its decisions open the door to the possibility of such registration, and its registration requirements fashion a body of
trademark law that furthers policies the United States seeks to 53 promote.

Graphic representation is not merely a technical requirement for registration in the European Union; it embodies the "principle of precision. ' '54 Vitally important in nontraditional trademark registration,
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. 55
49 The Directive also limits the rights and use of a trademark, such as cancellation for lack of use, licensing, abandonment, and exhaustion of trademark rights. Directive, supra note 43; Duran, supra note 44, at 490. For a detailed analysis of the Directive's provisions, see Horwitz, supra note 44, at 262-67. 50 To avoid confusion, this Note will use the term "trademark" as used in the United States, rather than "trade mark," which is the European Union's preferred term. 51 See, e.g., Vincent O'Reilly, The Community Trademark System: A Brief Introduction and Overview, 8 MARQ. INTELL. PROP. L. REv. 93, 93 (2004). While the unitary system simplifies trademark registration, enabling a mark holder to maintain the mark throughout the European Union through use in a single country, 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. See SWEET & MAXWELL'S EUROPEAN TRADE MARK LITIGATION HANDBOOK 34-35 (Isabel M. Davies ed., 1998) [hereinafter SWEET &
MAXWELL'S].

In order to register for a Community Trade Mark, 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. O'Reilly, supra, at 93. The application must contain (a) a request for registration of the trademark, (b) identification of the applicant, (c) a list of goods or services to be registered, and (d) a representation of the mark. See Regulation, supra note 43, art. 26. OHIM examines trademark applications for compliance with registration requirements, publishes marks for registration, examines opposition to registration, registers valid marks, and determines whether registration should be revoked. Regulation, supra note 43, arts. 36-38, 40, 43, 45, 55. 52 See supra note 47; Case C-283/01, Shield Mark BV v. Joost Kist H.O.D.N., 2004 E.T.M.R. 33, 34-41. 53 See supra note 40. While the United States has recognized the benefits registration brings to the marketplace, see In re Int'l Flavors & Fragrances, 183 F.3d 1361, 1367 (Fed. Cir. 1999), its current procedures, while competent in their treatment of traditional marks, create more ambiguities in trademark law than they fix with regard to nontraditional marks. 54 Case C-49/02, Heidelberger Bauchemie GmbH, 2004 E.T.M.R. 99, 13. 55 Sieko Hidaka et al., 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

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The E.C.J. requires graphic representation by "means of images, lines or characters, so that [the mark] can be precisely identified. '56 The representation must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective.157 According to the E.C.J., the graphic representation requirement enables precise definition of the mark so that the trademark holder, consumers, and competitors can ascertain the scope of trademark protection. 58 Graphic representation also assists authorities in properly examining, publishing, and 59 eventually protecting the mark from unfair use by competitors. Further, the E.C.J. stipulates that the representation must be durable so that the marketplace perceives the mark in a uniform and systematic manner, guaranteeing that the mark remains an invariable indication of source. 60 Lastly, the E.C.J. requires that a graphic representation must be unambiguous and objective, ensuring that registration, protection, and enforcement of trademark rights is 61 homogeneous. The European Union's second requirement for trademark protection, the distinctiveness requirement, 62 ensures that a trademark

EU, 94 TRADEMARK REP. 1105, 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."); see also Abida Chaudri, Graphically Speaking: Registering Smell, Colour and Sound Marks in the UK and Europe, 157 TRADEMARK WORLD 26, 26 (May 2003) ("[Graphic representation] ensure[s] that infringement rights can be determined and third parties can understand, from the graphical representation, the nature of the mark."). 56 Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37, T 46. The trademark itself must be depicted; a description is insufficient. SWEET & MAXWELL'S, supra note 51, at 35. This contradicts the United States' system, which does not require a graphic representation, but rather a succinct description, for smell and sound marks. TRADEMARK MANUAL OF EXAMINING PROCEDURE 807.09 (4th ed. 2005) [hereinafter T.M.E.P.]. 57 Shield Mark, 2004 E.T.M.R. 33, T 55. The graphic representation must be self-contained, easily accessible, and intelligible so that users of the registry can determine the precise nature of the mark. Id. 52. The E.C.J. has commented that such interpretation is not only essential to "the sound operation of the trade mark registration system," but it also furthers the functions and policies of trademark law. Id. T 47. 58 Sieckmann, 2003 E.T.M.R. 37, 91 48-49, 51. Ascertaining the scope of protection is important to each of these groups for different reasons. Trademark holders must be able to determine whether a new mark will infringe its rights, a competitor needs to know what it can or cannot do without triggering an infringement action, and consumers need to know how far they can extend their reliance on the source. 59 Id. 1 49-50 60 The E.C.J. 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." Id. 53. Because registration is renewable, this requirement further guarantees that the mark will be perceived uniformly throughout its entire period of registration, bringing legal certainty and predictability to the registration process. 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"). 62 The Directive's distinctiveness requirement appears to be two-fold. The mark, to function as a trademark, must be capable of distinguishing goods and must have distinctive character. Directive, supra note 43, arts. 2, 3(1)(b)-(d); Hidaka, supra note 55, at 1106.

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designates source and enables consumers to distinguish one producer's goods from another's without confusion. 63 Distinctiveness can be

inherent, in which case consumers immediately recognize the mark as distinguishing goods, or it can be acquired through consumer recognition, i.e., secondary meaning. 64 European Union trademark law acknowledges that while consumers often recognize traditional marks such as words and logos as readily indicating source, this may not be
the case with colors, sounds, and scents. 65 As such, nontraditional trademarks are unlikely to be regarded as inherently distinctive and

generally will need substantial acquired distinctiveness, i.e., consumer recognition, for registration. 66
63 Hidaka, supra note 55, at 1106, 1116. The distinctiveness requirement serves the primary function of a trademark, which is "'to guarantee the identity of the origin of the trade-marked product to the consumer or ultimate user, by enabling him without any possibility of confusion to distinguish that product from products which have another origin."' Id. (internal citation omitted). 64 Directive, supra note 43, arts. 3(1)(b), 3(3); Hidaka, supra note 55, at 1117. 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. Id. 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. Id. The consumer recognition must be substantial. "[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.. . [and] the mark ... [has] 'become part of everyday language and has acquired its own meaning ... ' Id. (quoting Joined Cases C-108/97 and C-109/97, Windsurfing Chiemsee Produktions und Vertriebs GmbH v. Boots und Segelzubehor Walter Huber, 1999 E.C.R. 1-2779). 65 See, e.g., Case C-104/01, Libertel Groep BV v. Benelux-Merkenbureau, 2003 E.T.M.R. 63, 40-4 1. The E.C.J. noted: [W]hilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message.... [However], [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. 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 .... Id; see, e.g., Hidaka, supra note 55, at 1121; Sound and Smell Trade Mark Registrations: Sound, or a Bit Fishy?, 25 Bus. L. REV. 190, 191 (2004) [hereinafter Sound, or a Bit Fishy] ("Smell and sound marks may face particular obstacles ... since they are, invariably, used alongside other marks, such as words and logos, and it may be difficult to demonstrate that customers recognise the sound or smell as indicating origin."); see also Case C-136/02, Mag Instrument Inc. v. OHIM, 2005 E.T.M.R. 46, 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. 66 Hidaka, supra note 55, at 1121 (noting that "[i]t is, therefore, generally accepted that nonstandard marks will rarely be considered inherently distinctive" since "such signs require larger amounts of use to render them distinctive"); see, e.g., Case C-49/02, Heidelberger Bauchemie GmbH, 2004 E.T.M.R. 99, 39 ("Save in exceptional cases, colours do not initially have a distinctive character, 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.").

2005]
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A NEW TRADITION requirements arguably restrict the registration

469 of

nontraditional marks such as sounds, scents, and colors in the European Union. 67 However, as noted, sounds and scents are not visually perceptible, making clear and precise definition of sound and scent marks difficult to achieve. 68 Further, consumers may not recognize sounds, scents, or colors as indicating source. 69 As such, these strict
requirements actually promote the underlying policies of trademark law. II. TRADEMARK LAW IN THE UNITED

STATES

In the United States, the Lanham Act codifies United States trademark law. 70 It grants national protection for trademarks, securing for a trademark's owner the profits of his good reputation, encouraging the production of high-quality goods and services, and reducing 71 customers' search costs.
Federal registration does not establish trademark rights; 72 rather,
67 Bainbridge, supra note 21, at 243-44; Sound, or a Bit Fishy, supra note 65, at 190. 68 See supra notes 21-23 and accompanying text. 69 See, e.g., Bainbridge, supra note 21, 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). 70 15 U.S.C. 1051-1127 (2000). The Lanham Act places all United States trademark law in a single statute. Its purpose is "to eliminate judicial obscurity, to simplify registration and to make it stronger and more liberal, to dispense with mere technical prohibitions and arbitrary provisions, to make procedure simple, and relief against infringement prompt and effective." S. REP. No. 79-1333 (1946), reprintedin 1946 U.S.C.C.A.N. 1274, 1274. In the United States, there is a dual system of trademark law. Trademark rights can be granted at the state and federal levels. Federal registration under the Lanham Act provides national protection, whereas state registration provides rights and protection only within the geographic territory of the state. See Anne Hiaring, Basic Principles of Trademark Law, in UNDERSTANDING BASIC TRADEMARK LAW 2004, at 11-12 (PLI Patent, Copyrights, Trademarks, & Literary Prop. Course Handbook Series, 2004). For a detailed explanation of trademark law in the United States at the state level, see MCCARTHY, supra note 8, 22:1-22:11. 71 See Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985) (discussing how incontestability provisions further the purposes of trademark law); S. REP. No. 79-1333, reprinted in 1946 U.S.C.C.A.N. 1274, 1274-75. Trademarks require national protection because: Trade-marks, indeed, are the essence of competition, because they make possible a choice between competing articles by enabling the buyer to distinguish one from the other. Trade-marks encourage the maintenance of quality by securing to the producer the benefit of the good reputation which excellence creates. To protect trade-marks, therefore, is to protect the public from deceit, to foster fair competition, 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. Id. at 1275. 72 See, e.g., In re Int'l Flavors & Fragrances, 183 F.3d 1361, 1366 (Fed. Cir. 1999) (noting "federal registration of a trademark does not create an exclusive property right in the mark. The owner of the mark already has the property right established by prior use."). Lanham Act 43(a), 15 U.S.C. 1125 (2000), provides protection for unregistered trademarks. The provision states: (a) Civil action (1) Any person who, on or in connection with any goods or services, or any container

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actual or constructive use of the mark in commerce triggers federal Registration, however, grants national trademark protection. 73 protection, 74 provides many statutory benefits 75 to the trademark holder, 76 and plays an important role in implementing the Lanham Act's objectives. 77 It not only protects the registrant's interests by providing

for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, 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. Id. 73 Lanham Act 1, 15 U.S.C. 1051 (2000). The use requirement guarantees that trademark law falls within Congress's commerce power, see, e.g., Trade-Mark Cases, 100 U.S. 82 (1879), and determines who owns trademark rights in a given mark. GRAEME B. DfNWOODIE & MARK
D. JANIS, TRADEMARKS AND UNFAIR COMPETITION: LAW AND POLICY 225 (2004).

74 Federal registration gives nationwide priority and protection to registered trademarks, as opposed to common law protection limited to the geographical area of use. See Lanham Act 7(c), 15 U.S.C. 1057(c) (2000); Allard Enters. v. Advanced Programming Res., Inc., 249 F.3d 564 (6th Cir. 2001) (finding junior user of registered trademark had national protection except in the senior non-registered user's limited geographic area); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512 (C.C.P.A. 1980) (limiting senior user's rights to small geographical area at time ofjunior user's federal registration). 75 Registration protects against possible confusion in the marketplace. See Lanham Act 45(a), 15 U.S.C. 1127(a) (2000). Registration grants the trademark holder standing to sue infringers in the federal courts, see Lanham Act 39, 15 U.S.C. 1121 (1998), provides prima facie evidence of the registered mark's validity, see Lanham Act 7(b), 15 U.S.C. 1057(b) (2000), establishes incontestability of the right to use the mark, see Lanham Act 15, 15 U.S.C. 1065 (2000), and provides constructive notice of ownership, see Lanham Act 22, 15 U.S.C. 1072 (1946). For an excellent overview of the registration process, requirements, and benefits, see Hiaring, supra note 70. 76 See, e.g., In re Int'l Flavors, 183 F.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."' (quoting Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3d Cir. 1984)); James E. Carlson, 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, 8 J. INTELL. PROP. L. 53, 58 (2000) ("While registration of a mark affords a variety of benefits and protections to the owner, it also provide a service to entrepreneurs and existing businesses who may wish to register their own marks, by allowing them to rely on a search of the records of the Trademark Office .... ). 77 Two purposes underlie the Lanham Act: One is to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get. Secondly, where the owner of a trade-mark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats. S. REP. NO. 79-1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274, 1274.

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constructive notice of trademark rights, 78 but also promotes the purposes

of trademark law by providing notice to prospective users of potentially infringing marks. 79 Further, federal registration benefits entrepreneurs
8 8 0 or new entrants in the marketplace as well as the public. '

In the United States, color, sound, and scent marks may be registered if they are used in commerce, 82 indicative of source, and
78 "Registration serves as constructive notice to the public of the registrant's ownership of the mark, see 15 U.S.C. 1072 (1946), and thus prevents another user of the mark from claiming innocent misappropriation as a trademark infringement defense." In re Int'l Flavors, 183 F.3d at 1367. 79 Id. In passing the Lanham Act, Congress sought to encourage the presence of as many trademarks as possible on the register so that they would be available for search purposes. Id. (quoting Bongrain Int'l Corp. v. Delice de France, Inc., 811 F.2d 1479, 1485 (Fed. Cir. 1987)). 80 See id. (quoting NaturalFootwear,760 F.2d at 1395): Entrepreneurs, for example, who plan to promote and to sell a new product under a fanciful mark, 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. See also Carlson, supra note 76, 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, avoiding confusion, and protecting the benefits that owners enjoy from federal registration."). 81 In re Int'7 Flavors, 183 F.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."); Carlson, supra note 76, at 58 ("This public benefit extends to all consumers of established products, as it allows these consumers to rely on the marks as a symbol of the quality they expect from certain producers, prevents confusion among competing products, and prevents other producers from passing off inferior products .... "). 82 Lanham Act 1, 15 U.S.C. 1051(a)(1) (2002) ("The owner of a trademark used in commerce may request registration of its trademark .. "). Lanham Act 45, 15 U.S.C. 1127 (2000), defines "'use in commerce"' as: [T]he bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, 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, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, 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. Congress passed the Lanham Act under its Commerce Clause powers; as such, the Lanham Act only protects trademarks that are used in commerce. See, e.g., Trade-Mark Cases, 100 U.S. 82 (1879). However, courts interpret the "use in commerce" requirement very liberally, and intrastate use that directly affects a type of commerce that Congress may regulate satisfies the requirement. See, e.g., Wickard v. Filbum, 317 U.S. 111 (1942) (finding farmer's production of wheat for personal consumption fell within Congress' Commerce power); Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662 (Fed. Cir. 1991) (finding trademark of restaurant, which did less than 15% of its business with interstate travelers, to be used in interstate commerce); Midge M. Hyman & Sandra Covington, Important Trademark Use Issues and the

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distinctive.8 3 As in the European Union, a trademark's distinctiveness may be either inherent or acquired (registrable after a showing of secondary meaning). 84 In the United States, however, sound and scent nontraditional trademarks may be inherently distinctive, while color 85 marks require a showing of secondary meaning for registration. In addition to these substantive requirements, a drawing of the 86 mark and a specimen must accompany the application for registration. The drawing and the specimen must accurately depict the mark, as used in commerce, so the mark can be easily located and identified upon a search of the trademark registry. 87 By providing proper notice, registration "maintains the market stability effected by certainty of '88 registry and ownership of existing trademarks. The drawing requirement provides notice of the nature of the mark and must detail what the applicant seeks to register. 89 Traditional
Risk of Fraudon the Trademark Office, in ADVANCED SEMINAR ON TRADEMARK LAW 2004, at 252 (PLI Patent, Copyrights, Trademarks, & Literary Prop. Course Handbook Series, 2004) (citing examples). 83 It is not the subject matter of the mark, but its source-identifying status, that largely enables these colors, sounds, and scents to be registered as trademarks. Qualitex Co. v. Jacobson Prods. Co. 514 U.S. 159, 164 (1995) (citing William Landes & Richard Posner, Trademark Law: An Economic Perspective, 30 J. LAW & ECON. 265, 290 (1987)); see also In re Gen. Elec. Broad. Co., 199 U.S.P.Q. 560, 562 (T.T.A.B. 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 ....). 84 See supra notes 62-66 and accompanying text. In the United States, distinctiveness refers not only to the ability to distinguish one's goods, but also to the particular commercial and conceptual strength of the mark. See, e.g., Brennan's, Inc. v. Brennan's Rest., 360 F.3d 125, 128 (2d Cir. 2004); Checkpoint Sys. v. Check Point Software Techs., 269 F.3d 270 (3d Cir. 2001). For example, while "Apple" is a strong source identifier for computers, with a large amount of consumer recognition and commercial strength, it is also an arbitrary mark, which is inherently distinctive and entitled to great protection. See, e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (outlining the "Abercrombie Spectrum," in which arbitrary, fanciful and suggestive marks are inherently distinctive, descriptive marks may be protected upon a showing of acquired distinctiveness, and generic marks never can be protected). 85 See Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000) (noting color marks require a finding of secondary meaning or acquired distinctiveness because color is never inherently distinctive); In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) (accepting applicant's argument that fragrance applied to yam may be registered if it is inherently distinctive or has secondary meaning); In re Gen. Elec., 199 U.S.P.Q. at 563 (stating that a sound may be "unique, different, or distinctive," i.e. inherently distinctive, or commonplace, requiring secondary meaning for registration). 86 See Lanham Act l(a)()-(2), 15 U.S.C. 1051 (2002); 37 C.F.R. 2.51, 2.56 (2003); T.M.E.P., supra note 56, 807, 904, 1604.12. 87 In re Int'l Flavors & Fragrances, 183 F.3d 1361, 1368 (Fed. Cir. 1999) (unambiguous registration needed to make constructive notice meaningful). 88 Carlson, supra note 76, at 63; see In re Int'l Flavors,183 F.3d at 1367. 89 37 C.F.R. 2.51, 2.52 (2003); T.M.E.P., supranote 56, 807, 1202.05(d). The drawing should depict the mark the applicant seeks to register. 37 C.F.R. 2.51, 2.52; T.M.E.P., supra note 56, 807; see also U.S.P.T.O. Trademark FAQ, What is the Drawing?, http://www.uspto.gov/web/offices/tac/tmfaq.htm#Application006 (last visited Sept. 5, 2005). The drawing must illustrate the mark as used in commerce, and must only depict one mark. See 37 C.F.R. 2.52. The U.S.P.T.O. publishes the drawing as a depiction of the mark in the Official

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trademark applications require submission of a black and white standard

mark. 9 1

character or typed drawing,9 0 whereas an application to register a color

requires a color drawing supplemented by a detailed description of the Registration of sound, scent, and other non-visual marks do not require a drawing; rather, the applicant must submit a detailed
description explaining the mark. 92 The description of a nontraditional

trademark assists trademark examiners in determining what the

applicant seeks to register, because visual inspection of the mark often fails to provide certainty. 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. 95

apparent from the drawing alone. 94 The U.S.P.T.O. publishes the drawings and descriptions in the Official Gazette, making them
commerce and the public's perception the mark. 96 The specimen is a
Gazette. T.M.E.P., supra note 56, 807; see infra note 95. 90 See 37 C.F.R. 2.52(a) (2003); 1 JAMES E. HAWES & AMANDA V. DWIGHT, TRADEMARK REGISTRATION PRACTICE 3:31 (2004).

The specimen shows in a precise manner the mark's use in

91 37 C.F.R 2.52(b)(1) (2003) ("If the mark includes color, the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark."); HAWES & DWIGHT, supra note 90, 3.20 ("An acceptable color description would be: The colors(s) (specify color) appear in (specify areas of mark on which color(s) appear). If the color(s) claim is inconsistent with the color(s) in the drawing, the color(s) shown in the drawing will control."). 92 37 C.F.R. 2.52(e) (2003); T.M.E.P., supra note 56, 807.09, 1202.13, 1202.15. The T.M.E.P. directs that the description should accurately and precisely explain what the mark comprises and should not create a misleading impression of the mark. T.M.E.P., supra note 56, 808.02. The T.M.E.P comments "[a] mark's meaning is based on the impression actually created by the mark in the minds of consumers, not on the impression that the applicant states the mark is intended to convey." Id.
93 See HAWES & DWIGHT, supra note 90, 3.20 ("The primary purpose of the description is

to assist the PTO in properly filing and referencing the mark in its records.... 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.").
94 See JAMES HAWES & AMANDA DWIGHT, PRACTITIONER'S TRADEMARK MANUAL OF EXAMINING PROCEDURE 808.01 (2004). 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. 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. [A description is desirable] [t]o make sure that others are aware of the nature and salient features of a mark ....
Id

95 The Official Gazette is the official journal of the U.S.P.T.O. It is published weekly and contains illustrations of trademarks published for opposition, a list of registered trademarks, an index of registrants, and a list of cancelled and renewed registrations. 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. See T.M.E.P., supra note 56, 904; ARDEN, supra note 10, at 31; Deborah L. Benson & Amy B. Spagnole, Trademark Registration 6.1.3(a), in
INTELLECTUAL PROPERTY PRACTICE, IPPRAC MA-CLE 6-1 (Mass. Continuing Legal Educ.,

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duplicate or sample of the mark as viewed in connection with the goods, such as a label, tag, container, display, or photograph. 97 As an integral part of the examination process, trademark examiners inspect the specimen to ascertain whether the mark functions as a trademark, whether competing companies are using the same mark, and whether 9 8 the mark can be accurately represented in a drawing. 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. 99 The description generates subjective, individualized impressions, 00 and the drawing, which is not required for sound marks, not feasible for scent marks, and applicable only to color marks, fails its purpose because the Official Gazette is not published in color. 0 1 The specimen appears to resolve the ambiguities created by the drawing and description requirements. However, only the drawing and the description inform consumers and competitors of what constitutes the mark because the specimen is neither published in the register, nor available on the Trademark Electronic Search System 0 website (TESS). 1 2 It is available for examination only at the U.S.P.T.O. office in Washington D.C. 0 3 As a result, registration of

Inc. 2004); see also U.S.P.T.O. Trademark FAQ, What is a Specimen?, http://www.uspto.gov/web/offices/tac/tmfaq.htm#Application006 (last visited Sept. 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."). 97 37 C.F.R. 2.56(b)(1), 2.56(c) (2003); T.M.E.P., supra note 56, 904.04; HAWES & DWIGHT, supra note 90, 3.26. Advertising materials, informational charts, marketing materials, internal business materials, and bags or other packaging material not directly associated with the product are not acceptable specimens. Id. However, for the registration of a nontraditional service mark, a trademark used to distinguish services, 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 service marks customarily are used in other ways than by attachment to some physical article." Id. For detailed information on materials acceptable as specimens, see T.M.E.P., supra note 56, 904.04 - 904.08. 98 HAWES & DWIGHT, supra note 90, 3.26. The specimen is also examined to determine "whether or not the applicant is actually using the mark ... and the goods or services on or in connection with which the mark is being used." Id. 99 See ARDEN, supra note 10, at 19: The drawing requirements for nontraditional marks... most often fail to provide flexible methods for pinpointing what, in fact, the applicant seeks to register. Although verbal descriptions may be used to supplement the drawing, current USPTO practice often creates a somewhat artificial and imprecise registration system for nontraditional marks. 100 See infra notes 135-36, 181-83, 204-06 and accompanying text. 101 See infra Part III and notes 133, 141-45 and accompanying text. 102 TESS is the U.S.P.T.O.'s online database for searching pending, registered, and cancelled federal trademarks. See U.S.P.T.O. Glossary, http://www.uspto.gov/main/glossary/index.html# tess (last visited Sept. 5, 2005). 103 See HAWES & DWIGHT, supra note 90, 3.26 ("[Tjhese specimens are maintained in the file of the application and the resulting registration. They may be inspected by members of the public and even withdrawn by any member of the public for that person's use."). This is incredibly inconvenient for the small business owner who relies on a trademark search to protect

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nontraditional marks in the United States is an ambiguous and illdefined process that reduces trademark owners' security, blurs the lines of infringement, and largely fails in its attempt to create legal
certainty.
10 4

III.

TREATMENT OF NONTRADITIONAL TRADEMARKS IN THE EUROPEAN UNION AND THE UNITED STATES

Neither United States nor European Union trademark law expressly recognizes colors, sounds, or scents as trademarks. For example, in the United States, "any word, name, symbol, or device, or any combination thereof' that identifies and distinguishes goods and services can be a trademark. 0 5 Similarly, the definition of the Community Trade Mark omits colors and non-visual "signs" such as sounds or scents, defining a trademark as any "sign" that is capable of 06 graphic representation and that distinguishes goods and services. However, in application, United States and European Union courts interpret both definitions with sufficient elasticity' 07 to allow
his investment and who must travel to Washington D.C. to examine the specimen. 104 Registration of ambiguous or ill-defined marks "does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration." In re Int'l Flavors & Fragrances, 183 F.3d 1361, 1368 (Fed. Cir. 1999). It makes it "impossible for the public to determine precisely what was covered by the marks. This would give inadequate notice of unavailable trademarks to the public, when adequate notice is a primary objective of trademark registration .. " Carlson, supra note 76, at 61 (discussing the T.T.A.B.'s reasoning behind denying registration of ambiguous or "phantom" marks). 105 Lanham Act 45, 15 U.S.C. 1127 (2000). The Lanham Act defines a trademark as any word, name, symbol, or device, or any combination thereof-[which is] used by a person, or which a person has a bona fide intention to use in commerce and applies to register.., to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Id.

106 European Union legislation defines a trademark as any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Directive, supra note 43, art. 2; see also Regulation, supranote 43, art. 4. 107 The E.C.J has noted that it "is clear from the language of both Art. 2 of the Directive and the seventh recital in the preamble thereto, which refers to a 'list [of] examples' of signs which may constitute a trade mark, that list is not exhaustive." Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37, 44 (alteration in original). The E.C.J. also noted that the definition does not expressly exclude such marks. Id. Similarly, 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." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995); see Trademark Law Revision Act of 1988, reprinted in 1988 U.S.C.C.A.N. 5577, 5607 (stating

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registration of nontraditional trademarks such as sounds, colors, and scents. 108 A. Color Marks

Both the European Union and the United States allow registration 0 of color marks; 1 9 however, only the European Union's registration requirements guarantee specificity and uniformity in the perception of such marks. The E.C.J. first addressed the requirements for registration of a color mark in Libertel Groep B V v. Benelux-Merkenbureau.I0 There,
broad definition of a trademark reflects "contemporary marketing practices" and, as such, colors, shapes, sounds, or configurations should be registered when they function as trademarks); In re Paramount Pictures Corp., 213 U.S.P.Q. 1111, 1113 (T.T.A.B. 1982) (noting U.S. "trademark law is very liberal-perhaps the most liberal in the world-as to what is registrable subject matter"); In re Gen. Elec. Broad. Co., 199 U.S.P.Q. 560, 563 (T.T.A.B. 1978): [F]lexibility... 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, services, and concepts unheard of in the past .... [As such], the Patent and Trademark Office has recognized that a mark need not be confined to a graphic form. 108 See, e.g., Qualitex, 514 U.S. 159 (green-gold color of dry cleaning press pads); In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) (scent of plumeria blossoms for sewing and embroidery thread); In re Gen. Elec., 199 U.S.P.Q. 560 (sound of a ship's bell clock for radio broadcasting services); Case C-49/02, Heidelberger Bauchemie GmbH, 2004 E.T.M.R. 99 (recognizing colors blue and yellow may be a trademark if colors are represented in a systematic arrangement); Case C-283/01, Shield Mark BV v. Joost Kist H.O.D.N., 2004 E.T.M.R. 33 (jingles and animal noises may be registered provided proper graphic representation); Case C273/00, Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37, 44 (recognizing that scent may operate as a trademark); 1 JEROME GILSON & ANNE GILSON LALONDE, TRADEMARK PROTECTION AND PRACTICE 2.12 (2005). 109 The T.M.E.P. defines color marks as "marks that consist solely of one or more colors used on particular objects." T.M.E.P., supra note 56, 1202.05. The European Union has also permitted the registration of a color per se or a color combination as a trademark. "Colour per se" has been defined as a catch-all for all signs which consist solely of color, as opposed to those signs which use color as an element of a word or design mark. David Stone & Nicholas Bolter, Tips On Protecting Colour Combinations in the EU, MANAGING INTELL. PROP, Sept. 2004, at 54. There have been seventy-two successful color mark registrations in the E.U., and more than four hundred applications submitted. See Office for Harmonization of the Internal Market, Statistics on Community Trade Marks, http://oami.eu.int/en/mark/stats.htm (last visited Sept.5, 2005). This is not surprising, especially in light of the TRIPS Agreement, to which the United States and the European Union are signatories, and which expressly sanctions the registration of color trademarks. See supra note 18; WTO, Understanding the WTO: The Organization: Members and Observers, http://www.wto.org/english/thewto e/whatis e/tif e/ org6_e.htm (last visited Sept. 5, 2005). Further, the North American Free Trade Agreement (NAFTA), and other international agreements to which the United States is a signatory, provides trademark protection for color. Linda Greenhouse, High Court Ruling Upholds Trademarkingof a Color, N.Y. TIMES, Mar. 29, 1995, at D2. 110 Case C-104/01, 2003 E.T.M.R. 63. Libertel concerned the registration of a color per se. Specifically, an applicant filed the color orange as a trademark for its telecommunications goods and services. Its graphic representation of the mark consisted of an orange rectangle and the word

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the E.C.J. held that to graphically represent a color mark, an applicant must submit a sample or swatch of the color and designate the color using an internationally recognized identification code."' The E.C.J. approved the use of an internationally recognized color code as an 12 acceptable graphic representation because it is precise and stable." The Court found a color sample alone insufficient, 13 and a verbal description of the color, while a form of graphic representation, failed to satisfy the requirements of clarity, precision, self-containment, easy 1 4 accessibility, intelligibility, and objectivity." In Heidelberger Bauchemie GmbH,115 the E.C.J. 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.'' 117 The E.C.J. warned that if applicants could register color combinations in an arbitrary or indeterminate manner, 1 8 consumers would be unable to recognize a particular combination as indicating source, 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. 1 9 This reasoning suggests that a color combination not presented in a systematic arrangement cannot

"orange." Id. 111 Id. For example, 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, such as a Pantone Color Code, RGB Color Code or RAL Color Code. 112 Id. 37; see Mark Pearce, The Future's Bright, The Future's EasyMobile, 171 TRADEMARK WORLD 10, 12, Oct. 2004 (noting that the use of a Pantone color code adequately satisfies the graphic representation requirement, enabling "a reader of the register [to] understand[] what the mark is that a proprietor has a... right to"). 113 A sample or swatch of the color "may deteriorate over time.., and does not possess the durability requirement of Article 2 of the Directive." Libertel, 2003 E.T.M.R. 63, TT 31, 33. 114 Id. 77 28, 29, 31. 115 Case C-49/02, Heidelberger Bauchemie GmbH, 2004 E.T.M.R. 99. The applicant sought The to register the color combination of blue and yellow in "every conceivable form." representation of the claimed mark consisted of a rectangle with the top half blue and the bottom half yellow. The application also provided color codes. Id. 110. 116 The E.C.J. considers a color combination to be "two or more colours, designated in the abstract and without contours." Id. 33. 117 Id. 42. 118 Id. 35. The E.C.J. noted that "[t]he mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours 'in every conceivable form', ... does not Id. 34. exhibit the qualities of precision and uniformity required by Art. 2 of the Directive .... 119 Id 35. The E.C.J. stated: Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, 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. Id.; see also Stone & Bolter, supra note 109, at 55 (discussing case).

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constitute a trademark under Article 2 of the Trade Mark Directive. 120 The United States Supreme Court holds that color marks are registrable provided they have acquired distinctiveness and are not functional. 12 1 The application for registration must contain a drawing of the mark, usually consisting of a representation of the mark on the goods. 122 The drawing should depict in broken lines the product that the color will identify. 123 The drawing must be in color and show the viewer where and how the color functions as a mark for the product. 124 It should also show the viewer that the applicant claims the color, rather 125 than the product shape, as the mark. A description or written explanation must supplement the drawing. 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, generic language. 127 It must identify the mark as consisting of a particular color as applied to the goods or services. 128 For example, Black & Decker Corporation has registered the color yellow for its saw blades. 129 The description accompanying the drawing states "[t]he mark consists of the color yellow applied to

120 Stone & Bolter, supra note 109, 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). 121 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 (1995) (noting "color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function."). Functionality is a per se bar to trademark registration. Id. at 165. "The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature." Id. at 164. As the Court noted, while color sometimes serves a function in making a product more desirable, this is not always the case. Id.at 165. When "color is not essential to a product's use or purpose and does not affect cost or quality... the doctrine of 'functionality' does not create an absolute bar to the use of color alone as a mark." Id. 122 T.M.E.P., supra note 56, 1202.05(d)(i); 37 C.F.R. 2.51, 2.52(b)(1) (2003). 123 T.M.E.P., supra note 56, 1202.05(d)(i). If the object is not depicted with broken lines, the U.S.P.T.O. will assume that the applicant seeks to register a composite mark, i.e., the particular color applied to a particular shape, rather than the color itself. Id. 124 37 C.F.R. 2.52(b)(1) (2003); T.M.E.P., supra note 56, 1202.05(d)(i). Until November of 2003, applications for color marks were not accepted in color, but now submission in color is required. See HAWES & DWIGHT, supra note 90, 3.26. While the recent change to color applications is a positive step in the direction toward providing legal certainty, the problem remains that thousands of trademark registrations claiming rights in colors are still made available to searchers only in black and white. Perhaps the U.S.P.T.O. 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, infra. 125 HAWES & DWIGHT, supra note 90, 3.26. 126 T.M.E.P., supra note 56, 1202.05(e). The written description must explain what colors comprise the mark and where they appear on the mark. Id. 127 Id. Examples include "'maroon,' 'turquoise,' 'navy blue,' [and] 'reddish orange."' Id. 128 Id. 129 Black & Decker Corp., Reg. No. 2831672.

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the perimeter of the saw blade so as to form a yellow rim on the saw blade. The dotted outline of the goods is intended to show the position of the mark and is not part of the mark shown."1 30 A commercial color code may supplement a written description. 131 The application must also include a specimen that shows the actual or intended use of the 32 color mark depicted in the drawing.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, yet it lacks the requisite specificity to facilitate protection of trademark rights and provide notice to the marketplace. Because the Official Gazette is not published in color 133 and includes only the generic description of the mark, 134 competitors cannot determine by conducting a search of the registry whether their chosen color may infringe on a federally registered trademark. 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, a consumer may have a problem distinguishing between the two, and a new entrant in the marketplace might have difficulty determining whether its lemon yellow paper products would infringe on either mark.135 Further, an individual's
130 Id.; see also Hoodman Corp., Reg. No. 2746231 ("The mark consists of the color charcoal juniper green as applied to the goods. The dotted outline of the goods is intended to show the position of the mark and is not a part of the mark."). 131For example, see Thrifty, Inc.'s registration of the color light blue for its rental car transportation services. Reg. No. 2608363. 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. 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. Id. The T.M.E.P. expressly refuses to endorse or recommend a particular color code. T.M.E.P., supra note 56, 807.07(a)(ii); ARDEN, supra note 10, at 26 (noting that "the U. S. Patent & Trademark Office has not yet adopted a requirement for more precise identifications of color, such as the Pantone Matching System used for matching colors"). The Pantone Matching System is an internationally recognized color code. Each of Pantone's more that 1000 colors corresponds to a number code, which enables uniform matching and specification of colors worldwide. See generally Pantone, http://www.pantone.com (last visited Sept. 5, 2005), for more information on the Pantone Matching System. 132 T.M.E.P., supra note 56, 1202.05(f). 133 The five most recent issues of the Official Gazette are available online at the U.S.P.T.O. website and appear in color. See U.S.P.T.O., Trademark Official Gazette, http://www.uspto.gov/ web/trademarks/tmog/ (last visited Sept. 5, 2005). However, this does not facilitate clarity in a search of trademarks registered more than five weeks prior to the search. 134 See, e.g., Manhasset Specialty Co., Reg. No. 2722766 ("The mark consists of the color red"). 135 3M has registered the color canary yellow for adhesive stationary. Reg. No. 2390667. Western Union has registered the color golden yellow for correspondence paper. Reg. No. 2696986. A search of TESS reveals that 2,167 registrations claim a shade of yellow in their design or as a trademark applied to a product. Some examples include: Nintendo of Am. Inc.,

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perception of a color may vary depending on the background, the 36 lighting, or the individual's knowledge of color.1 The United States should adopt the European Union's requirement of an internationally recognized color code in its registration process. As mentioned above, the United States currently permits the use of a commercial color code, but it does not require or recommend one. 137 An international color code provides precision, which is desirable to identify unique colors and to distinguish a claimed color mark from other colors used in the marketplace. 3 8 Such a requirement would provide an accurate method for selecting, specifying, and matching colors. 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. No. 2554181 (the color "orange yellow" applied to handheld electronic games); Kirby Morgan Dive Sys., Reg. No. 2803929, and Diving Sys. Int'l, Reg. No. 2634033 ("bright canary yellow" color for diving helmets); Stego Indus., Reg. No. 2790352 (the color "yellow" applied to plastic sheeting); Kransco Mfg., Reg. No. 1432069 (the color "yellow" for plastic water slide toys). There have been registrations claiming the colors "light yellow" and "dark yellow," Just Desserts, Inc., Reg. No. 2878653, and "bright yellow," see, e.g., Pressure Cleaning Serv., Reg. No. 2855644. Interestingly, the color "lemon yellow" is registered for trucks and moving vehicles, Ryder Sys., Reg. No. 2131635, the color "yellow" is registered for vehicles, ServiceMaster Co., Reg. No. 2085318, and the color "hot yellow green II" for forklift trucks, Clark Material Handling Co., Reg. No. 2085234. 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." Some registrations do provide some guidance to the trademark searcher. For example, CEP Holdings, Reg. No. 2503351, registered the color "bright lemon yellow" for mouthwash and stated that the color is the same as Pantone Process 2C. Kirby Morgan Dive Systems, Reg. No. 2842804, claims use of the "yellow color buttercup" and directs the searcher to Pantone Number 116C. Lastly, Minnesota Mining and Manufacturing Co., Reg. No. 2619345, claims a "distinctive yellow shade" for telephone maintenance instruments and provides reference to Pantone 123C. 136 The possible variances of shades, depending on backgrounds, lighting, etc., will further confuse consumers and give rise to actions for trademark infringement. For a thorough discussion of the variances in human perception of color depending on the environment, and the difficulty of taking these variances into account in trademark infringement actions, see Lawrence B. Ebert, TrademarkProtection in Color: Do It by the Numbers!, 84 TRADEMARK REP. 379, 40506(1994). 137 See supra note 131 and accompanying text. 138 See ARDEN, supra note 10, at 27; Ebert, supra note 136, at 402-06 (discussing how precision would prevent shade confusion and bring more objectivity to trademark law). Prior to the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 167 (1995), many courts argued against the use of color as a trademark on the theory of shade confusion. See NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1027 (7th Cir. 1990); In re Owens-Coming Fiberglas Corp., 774 F.2d 1116, 1131 (Fed. Cir. 1985) (Bissel, J., dissenting). 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. See Qualitex, 514 U.S. at 167; Ebert, supra note 136, at 403. While the Court in Qualitex expressly rejected shade confusion as a basis for denying the registration of color marks, the theory is still relevant, not to bar such registration, but to improve upon it. Qualitex, 514 U.S. at 167; see Ebert, supra note 136, at 403 (noting that concerns about shade confusion are misplaced, because "the human eye is physically capable of distinguishing thousands, if not millions, of colors... [and] a straightforward algorithm is available for keeping track of these numerous shades"). 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.

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whether the applicant's registration infringes on another's mark. 140 Requiring use of a color code alone is not enough. While its use would provide the United States' registration system with needed specificity, it would preclude immediate identification of the mark

without reference to an outside source. 141 As such, the drawing should

consist of the color swatch that corresponds to the color code. The

specimen of the color being used in commerce should consist of a color

photograph of the actual product. Further, publishing the specimen in

the Official Gazette and making it available for search in the electronic
registry, TESS, 142 would provide increased clarity and notice to the

marketplace. Registrants should also utilize the U.S.P.T.O.'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. See, e.g., Olay Co. v. Cococare Prods., 218 U.S.P.Q. 1028, 1045 (S.D.N.Y. 1983) (issuing injunction requiring defendant to use "a discernibly different pink, at least 40% different in terms of PMS [Pantone Matching System] tones"). While Ebert believes that a numeric approach is the best way to identify color marks, he also suggests alternative approaches to the use of a commercial color code, such as the use of a spectrophotometer and a three-variable approach, to distinguish confusingly similar shades in infringement actions. Ebert, supra note 136, at 404-05. Ebert suggests: Under standard conditions of incident radiation, perform spectrophotometry in the visible range upon the sample to be trademarked to establish the intensity of reflected radiation as a function of wavelength. Convert the spectrum into absorption coefficients for the three cones of the human eye. Establish error bars based on the known wavelength discrimination of the human eye. Any shade of color is converted into three numbers, with objectively established error bars. Infringement of a prior shade is established when the second shade matches all three numbers within the limits of error... [T]his approach can be used to address the use of shades which, though inequivalent, are confusingly similar. If machines are not desired, in the alternative, one may utilize humans in a scientifically objective manner.... [A] human can match a given shade to a mixture of light of three different wavelengths. The relative proportions of the three sources would identify the color of the trademark, again converting a shade of color into three numbers. If the second color falls within the error bars for each of the three coefficients, infringement exists. Id. While, as Ebert notes, this approach would be viable as applied to trademarks, see id. at 405 n.127 and sources cited therein, it would also be incredibly costly to the average trademark owner. While this Note urges the adoption of expensive procedures to register scent marks, see infra text accompanying notes 215-18, color, in this author's opinion, is more "entitled" to trademark protection and capable of source identification than scent. As such, it is arguable that there should be "free access" to the use of colors as trademarks, which an expensive approach such as spectrophotometry would inhibit. 141 The use of a color code is not a self-contained solution. See Bainbridge, supra note 21, at 236 ("[The] precise colour should be available online without the need to consult anything further. The same sentiment holds with all marks-they should be seen for what they are."). 142 See supranote 102. 143 The U.S.P.T.O. has instituted a Trademark Electronic Application System (TEAS), which enables applicants to fill out applications online and submit them directly to the U.S.P.T.O. See Trademark Electronic Application System (TEAS), http://www.uspto.gov/teas/index.html (last visited Sept. 5, 2005). The advent of electronic filing will help implement these proposals for specificity. For more information on TEAS, the benefits of electronic filing, and the U.S.P.T.O.'s preference for electronic applications, see HAWES & DWIGHT, supra note 90, 3.65.

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registration process. 144 While the photographs may not be in color when published in the Official Gazette,145 the black and white picture, combined with a description of the color and the international color code specification, will provide searchers with the specificity and clarity they need. B.

Sound Marks

The E.C.J. in Shield Mark BV v. Joost Kist146 confirmed the registrability of sound marks in the European Union, 14 7 provided the sound is distinctive and able to be represented graphically. 4 8 Shield Mark concerned the registration of fourteen sound marks, 149 which were submitted for registration in various formats including a written
144 This process could be completed in several ways. If the photograph is taken with a digital camera, the files are compressed into JPEG imaging formats, which may be easily uploaded into the system. If a digital camera is unavailable, many film developers or processors provide the option of receiving pictures on a "Picture CD," which, according to advertisements, enables users to take digital pictures without a digital camera. See Kodak, http://www.kodak.com (last visited Sept. 5, 2005). Lastly, if the applicant is not applying electronically, the U.S.P.T.O. could scan a photograph submitted in hard copy when it updates the registration database with the applicant's information. While using a digital imaging format may be more costly to the applicant, the reduced filing fee for electronic filing will subsidize any additional costs. See 37 C.F.R. 2.6 (2005) (stating trademark application fees are $375 per class for paper applications, and $325 per class for electronic applications). Further, these changes for color mark registration will not increase costs for the U.S.P.T.O. TEAS currently accepts JPEG files and the U.S.P.T.O. is looking into accepting files in other formats. See Waiver of Pixel Requirements for Drawings Filed Electronically, 69 Fed. Reg. 59811 (Oct. 6, 2004) (codified at 37 C.F.R. 2.22 (2005)); Trademark Electronic Application System (TEAS), Up-Coming TEAS Enhancements, http://www.uspto.gov/teas/ eTEASupcoming.html (last visited Jan. 29, 2005). Electronic filing saves the U.S.P.T.O time by enabling faster review of trademark applications, and eliminates the U.S.P.T.O having to enter the information manually into the system. HAWES & DWIGHT, supra note 90, 3.65. Further, images in and of the applications are automatically made available on TESS. Id. One commentator has advocated similar measures for improvement of the UK Patent Office. Bainbridge, supra note 21, at 236. 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. Id. 145 Although they should be. 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. See supra note 10. 146 Case C-283/01, 2004 E.T.M.R. 33. 147 Forty-four sound marks have been registered in the European Union. See Office for Harmonization of the Internal Market, Statistics Community Trade Marks (Dec. 31, 2004), http://oami.eu.int/pdf/office/Stats%20CTM%202004.pdf. 148 In doing so, the Court reaffirmed that graphic representation of a sound mark must be depicted visually by images, lines, or characters and must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective." Shield Mark, 2004 E.T.M.R. 33, 41; see, e.g., Sound, or a Bit Fishy, supra note 65, at 191. 149 Eleven marks registered the first nine notes of FurElise by Beethoven. Three marks were for the sound of a cockcrow crowing. Shield Mark, 2004 E.T.M.R. 33, 15-19.

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

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

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The U.S.P.T.O. recognized the registrability of sound marks more than fifty years ago. 165 For example, the National Broadcasting Company registered the NBC chimes in 1950 for its radio broadcast services, 166 and Metro-Goldwyn-Mayer registered the sound of a lion roaring in 1986.167 In 1995, Harley Davidson applied to register the 68 sound of its motorcycles. 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. 169 General Electric applied to register
165 United States trademark law recognizes that "sounds may... 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." In re Gen. Elec. Broad. Co., 199 U.S.P.Q. 560, 563 (T.T.A.B. 1978). Trademark Rule of Examining Procedure 1202.15 defines a sound mark as "identiflying] and distinguish[ing] a product or service through audio rather than visual means." T.M.E.P., supra note 56, 1202.15. It provides examples of "series of tones or musical notes, with or without words, and... wording accompanied by music." Id; see also Candida J. Hinton, In Your Ear! Trademarkinga Sound Mark Requires More Than a Good Ear for Music, INTA BULLETIN ARCHIVE (April 2002), http://www.inta.org/articles/inyourear.html. 166 Reg. No. 0523616. This registration expired, and in 1971, NBC registered three "chimelike musical notes" to denote its broadcasting services. Reg. No. 0916522 ("The mark 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, thereby to identify applicant's broadcasting service."). See Hinton, supra note 165. 167 Reg. No. 1395550. In contrast to the strict requirement of a sonogram in the European Union, Metro-Goldwyn-Mayer was able to register its sound mark in the U.S. by filing the following description: "The mark comprises a lion roaring." Cf infra text accompanying notes 160-64. 168 Serial No. 74485223 ("The mark consists of the exhaust sound of applicant's motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use."). The company spokesman said in support of its registration, "[w]e do know that the sound is one of the two main reasons why people buy our cycle-the look and the sound .... Competitors have begun copying our sound, and we are concerned about possible confusion." Harley-Davidson Wants to Register a Roar, N.Y. TIMES, Oct. 8, 1995, 1, p. 26. Harley-Davidson eventually abandoned the application. Cf Kawasaki Motors Corp., U.S.A. v. H-D Michigan, Inc., 43 U.S.P.Q.2d 1521 (T.T.A.B. 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). For an in-depth discussion of the Harley-Davidson trademark application, see Michael B. Sapherstein, The Trademark Registrability of the HarleyDavidson Roar: A Multimedia Analysis, 1998 B.C. INTELL. PROP. & TECH. F. 101101 (Oct. 11, 1998), http://infoeagle.bc.edu/bc-org/avp/law/st-org/iptf/articles/index.html. 169 199 U.S.P.Q 560, 563 (T.T.A.B. 1978). 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, a sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless, of course, 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. Id. 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. For a discussion of distinctiveness in European Union and United States trademark law,

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the sound of a ship's bell clock for radio broadcast services. 170 In assessing the distinctiveness of the sound mark, the Board distinguished between those sounds that resemble "commonplace" sounds and those that are arbitrary, unique, or distinctive and, finding the sound of ship bells to be the former, required evidence of acquired distinctiveness.'17 In contrast to the strict graphic representation requirement in the European Union, registration of a sound mark in the United States does 172 not require a drawing but rather a detailed description of the mark. For example, the Edgar Rice Burrow company registered "the sound of the famous Tarzan yell" in 1998.173 The mark was described as a yell consisting of a series of approximately ten sounds, alternating between the chest and falsetto registers of the voice, as follow[s]- 1) a semi-long sound in the chest register, 2) a short sound up an interval of one octave plus a fifth from the preceding sound, 3) a short sound down a Major 3rd from the preceding sound, 4) a short sound up a Major 3rd from the preceding sound, 5) a long sound down one octave plus a Major 3rd from the preceding sound, 6) a short sound up one octave from the preceding sound, 7) a short sound up a Major 3rd from the preceding sound, 8) a short sound down a Major 3rd from the preceding sound, 9) a short sound up a Major 3rd from the preceding sound, 10) a long sound down an 174 octave plus a fifth from the preceding sound. However, not all marks are described in such detail, and yet are still registered under the flexible United States system. 7 5 In fact, many are vague and ambiguous, providing a brief description or utilizing onomatopoeia, making it difficult to transfer the written description into an aural impression. 176 In addition to providing a description of the
see Eric E. Bowman, TrademarkDistinctiveness in a Multilingual Context: Harmonizationof the Treatment of Marks in the European Union and the United States, 4 SAN DIEGO INT'L L.J. 513 (2003). 170 In re Gen. Elec., 199 U.S.P.Q. at 561. The mark was described in the application as "a series of bells tolled during four, hour sequences, beginning with one ring at approximately a first half hour and increasing in number by one ring at approximately each half hour thereafter." Id. The application was submitted with an audio tape recording of the sound. Id.at 562. 171Id. at 563. The Board did not reject the possibility that the sound of a ship's bell could be indicative of broadcasting services, 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." Id. 172 See 37 C.F.R. 2.52(e) (2003); T.M.E.P., supra note 56, 807.09. 173 Edgar Rice Burroughs, Inc., Reg. No. 2210506. 174 Id. Note the ease of understanding the mark for those who have seen the movie Tarzan. However, for others such as this author, the description, while detailed and specific, renders no aural recognition of the sound. See Hinton, supra note 165. For an in-depth discussion of the problems with registration by description, see infra notes 181-83 and accompanying text. 175 See e.g., Kes Irrigation Sys., Inc., Reg. No. 2203470 ("The mark consists of the sounds of thunder and rain."); AWS Convergence Techs., Reg. No. 2827972 ("The mark consists of a series of five chirps similar to the chirping sound of a cricket."); Ginsburg Enters., Reg. No. 2000963 ("The mark consists of the sound, 'Ooh it's so good'."). 176 See e.g., Netbytel, Inc., Reg. No. 2788028 ("The mark consists of a xylophone tone, playing a series of 16th notes, beginning at middle 'C': CECDCFDG."); Heritage Siding &

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mark, the applicant must submit a specimen of the sound being used in commerce, such as an audio cassette or a musical score.177 Neither the European Union's nor the United States' registration procedures for sound marks is ideal. The European Union's registration procedures provide specificity, but they lack certainty and comprehension. 178 The use of musical notations on a stave and sonograms facilitates reproduction and systematic identification of the sounds registered; however, not everyone is able to read musical notes and very few are able to read sonograms. 179 Nonetheless, the United States should require a sonogram or detailed musical notation, depending on the type of mark. While unintelligible to the average user of the registry, they enable quick comparison between sounds, which 0 8 cannot be done aurally. Similarly, the United States' reliance on a description, apart from being entirely subjective, makes it extremely difficult both to ascertain

Windows, Reg. No. 2524758 ("The mark consists of the sound of a kiss made when, for example, one is 'blowing a kiss' to another person .... ); EasyTel Corp., Reg. No. 2685338 ("The mark is the sound of a ringing cash register."); Minn. State Lottery Agency, Reg. No. 2600195 ("The mark is the sound of a wild loon provided in one or more short bursts .... "); MTM Enters., Reg. No. 2158156 ("The mark consists of the sound of a cat's meow."). 177 See 37 C.F.R. 2.56 (2003). T.M.E.P. 1202.15 notes, "[tlo show that the sound mark actually identifies and distinguishes the services and indicates their source, the specimen should contain a sufficient portion of the audio content to indicate the nature of the services." T.M.E.P., supra note 56, 1202.15. 178 See e.g., Hidaka, supra note 55, at 1128 (noting that the average member of the public does not find notes on a musical stave comprehensible); Bainbridge, supra note 21, at 228 ("[Ilt is likely that less than half of those interested in trade marks can, by looking at a piece of music so expressed, have a real and accurate perception of the nature and character of the mark."). But see Case R 186/2000-4, Institut pour la Protection des Fragrances' Application, 2005 E.T.M.R. 42, 18 (rejecting argument that musical notes on a stave are not comprehensible and noting that "the relevant public usually perceives the score, containing the conventional indications needed to interpret this, as the standard and universally known code for representing a melody, even if it does not always know how to decipher this"). 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. 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, but it unfortunately stopped short of requiring one. See Case R-781/1999-4, Metro-Goldwyn Mayer Lion Corp. Application, 2004 E.T.M.R. 34, 31. The European Union should also require a digital sound sample. See Bainbridge, supra note 21, at 231 (advocating the digital registration of sound marks in the European Union); infra notes 18486 and accompanying text. 179 The Board of Appeals recognized this objection in Metro-Goldwyn-Mayer and noted that, while training and practice are prerequisites to conceptualizing a sonogram as the sound or noise depicted, the same is true for a musical notation, and "nobody seriously disputes the fact that musical notation is a suitable way of representing sound marks graphically." Metro-Goldwyn Mayer, 2004 E.T.M.R. 34, 27. 180 See, e.g., Mary Louise Serafine, The Development of Cognition in Music, 70 MUSICAL Q. 218, 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, and stating that "each listener hears the same piece [of music] . . . but each cognizes it differently.... Another mind 'hears' differently an identical artwork.").

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the sound for which registration is sought 181 and to prove infringement of the mark. 182 A description should be used merely to supplement the sonogram or musical notation, as it better facilitates understanding of 83
the mark. However, it is insufficient standing alone.

In addition, the United States should require the specimen, which is usually an audio cassette or compact disc recording of the sound mark,' 84 to be made available to all searchers and users of the trademark registry. This may be accomplished by requiring applicants to
electronically file sound marks by uploading digital sound files during the registration process, which the U.S.P.T.O. could later make available on TESS.' 85 Alternatively, the U.S.P.T.O. could upload the sound files upon receipt of the paper applications. Utilizing the

specimen in such a manner would 86enable a clear and precise understanding of the scope of the mark.1

181 See supra notes 175-76. Other examples illustrating the imprecision and unintelligibility of a description are: Reg. No. 2741129, which registers the sound of a brass bell tuned to the pitch D, but with an overtone of D-sharp, struck nine times at a brisk tempo, with the final tone allowed to ring until the sound decays naturally. The rhythmic pattern is eight 16th notes and a quarter note; the total duration, from the striking of the first tone to the end of the decay on the final one, is just over 3 seconds. Can you identify the sound or the source of this mark? It is the closing bell for the New York Stock Exchange. VISA has registered [a] mark consist[ing] of three main audio and musical elements; it begins with a 'whoosh' sound similar to a quick passing jet. This is followed by rising orchestral choir vocals in the key of D major. The sound is then concluded with a very quick ascending five-note scale played in the voice of high pitched bells: D5, F5, G5[,] A#5, C6. Underlying the last scale is a bass note of D2. Reg. No. 2802893. 182 It is difficult to determine what comprises the mark, much less how broad its scope of protection should be. For support of this argument, see Bainbridge, supra note 21, at 230. The Trademark Trial and Appeal Board has acknowledged that it is difficult to ascertain the nature of a sound mark from the description alone. In Kawasaki Motors Corp., U.S.A. v. H-D Mich., Inc., 43 U.S.P.Q.2d 1521 (1997), the Board used the sound recordings submitted as a specimen in addition to the description. While the Board noted that the aural perception on the tape could "fairly be characterized as an aural presentation of the literal description," the Board probably would not have understood the description in the same manner without having listened to the mark. 183 For example, Boston Duck Tours registered "the sound of a human voice making quacking noises like a duck." Reg. No. 2308503. This description lacks precision and clarity, raising many more questions than it answers. Is a man, woman, 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, subjective interpretation. See Bainbridge, supra note 21, at 230 (using an example of a dog barking to raise objections to sound marks). 184 See supra note 177 and accompanying text. 185 See Bainbridge, supra note 21, at 231 (suggesting making sound samples available over the internet to enable anyone to access and play the mark). 186 See Hidaka, supra note 55, at 1129 (noting that, with the advent of technology, new methods for registering sounds will make marks more accessible online at national registries); see also supra note 180.

2005]

A NEW TRADITION C. Olfactory Scent Marks

Theoretically, the European Union permits registration of olfactory marks; however, in practice, the European Union's strict graphic
Sieckmann v. Deutsches Patent-undMarkenamt 88 and held that neither representation by a chemical formula, a written description, a scent

187 representation requirement essentially precludes their registration.

The E.C.J addressed the requirements for olfactory mark registration in sample, nor a combination of these methods satisfied the graphic 89 representation requirement.
Specifically, the E.C.J. rejected the use of a chemical formula because it represented the substance of a scent rather than the scent

itself, and very few people would recognize the scent by looking at a 0 chemical formula. 19 The Court deemed the description of the scent, 191 although graphic in form, insufficient because users of the registry
would not perceive the description of the scent uniformly.
92

A sample

187 Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37; see also Sound, or a Bit Fishy, supra note 65, at 191 ("This [Sieckmann] decision makes it very difficult, if not impossible, to register a smell as a mark, at least until such time as it can be demonstrated that technology exists which can identify smells with sufficient clarity, precision and objectivity."). 188 Case C-273/00, 2003 E.T.M.R. 37. Sieckmann involved the registration of a 'balsamically fruity [smell] with a slight hint of cinnamon"' for services ranging from advertising and education to medical, agricultural, and scientific services. Id. 10, 13; Chaudri, supra note 55, at 28. The application included representation of the scent by a chemical formula, a description of the scent, and a sample of the scent. Sieckmann, 2003 E.T.M.R. 37, 11-13. 189 Case C-273/00, 2003 E.T.M.R. 37, 9 69-73. As aforementioned, graphic representation requires a "clear, precise, self-contained, easily accessible, intelligible, durable and objective" representation "by means of images, lines or characters .... Id. Order 2. 190 Id. 1 69. 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. See supra text accompanying notes 153, 163-64, 178-80. However, the two methods can be reconciled by the fact that the latter, once deciphered, represents the actual sound, while the former when deciphered still does not represent the fragrance the formula creates. 191 The description stated: 'Trade mark protection is sought for the olfactory mark deposited with the... [Trademark Office] of the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the ... (Yellow Pages) of Deutsche Telekom AG or, for example, via the firm E. Merck in Darmstadt. C6H5-CH = CHCOOCH3. Id. 11. 192 Id. 70 (finding the description was "not sufficiently clear, precise and objective"). The Second Board of Appeals previously found a written description constituted sufficient

graphical representation of a scent. In Vennootschap Onder Firma Senta Aromatic Marketing's

Application, the Board accepted an application to register the "smell of fresh cut grass" for tennis balls. Case R 156/1998-2, Vennootschap Onder Firma Senta Aromatic Mktg.'s Application, 1999 E.T.M.R. 429 (CTM No. 000428870). It is unclear whether this registration will be revoked as a result of the E.C.J.'s decision in Sieckmann. See Chaudri, supra note 55, at 28; Sound, or a Bit Fishy, supra note 65, at 191. Interestingly, prior to Sieckmann, the Third Board of Appeals also accepted that a written description of an olfactory mark satisfied the graphic representation

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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, 193 nor stable nor durable as it was likely to fade or change over time. 194 The Court's reasoning reveals the European Union's hesitancy to grant property rights in a scent, and arguably 95 illustrates its opposition to the registration of scent marks altogether.
requirement; it rejected the application for "the scent or smell of raspberries" for motor fuel, however, on the ground that it was not distinctive. Case R 711/1999-3, Myles Ltd.'s App., 2003 E.T.M.R. 56. The Board recognized the difficulty with regard to graphical representation of olfactory marks but considered it was not impossible that, in an exceptional case, a scent can be represented completely, clearly, precisely and objectively. They considered that the scent or smell of raspberries, like the smell of fresh cut grass before it, was such an exception. Hosford, supra note 36, at 29. 193 It was not represented graphically by means of images, lines, or characters. See supra note 56 and accompanying text. However, a statement "that the scent was usually described as 'balsamically fruity with a slight hint of cinnamon' accompanied the sample. Sieckmann, 2003 E.T.M.R. 37, 13. Interestingly, although not noted by the Court, the scent sample was surprisingly accessible because the applicant had offered to make it available for inspection at various laboratories throughout the Union. Id. 11. 194 Id. 71. The E.C.J. did not elaborate on why a scent sample was insufficient. However, 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." Id 67. 195 One commentator accurately summarized many of the European Union's concerns, 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, stimuli or material or without inviting an unacceptably wide range of subjective perceptions of what the mark really is. Even if smells can be completely and precisely represented graphically, 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. Bainbridge, supra note 21, at 227. For an argument against the registration of scent marks, see Douglas D. Churovich, Scents, Sense or Cents?; Something Stinks in the Lanham Act, 20 ST. Louis U. PUB. L. REv. 293 (2001). Further illustrating the barriers to scent mark registration in the E.U., as well as the E.U.'s arguable opposition to scent mark registrations, 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. See Case R 186/2000-4, Institut pour la Protection des Fragrances' Application, 2005 E.T.M.R. 42. The Board reasoned as follows: [T]he coloured matrix filed does not comply with the graphic representation requirements ... as it does not allow the relevant public to perceive the identity of the sign or to determine the extent of its protection. It is not sufficient for the sign to be technically capable of reproduction. 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. Id. 17. The Board rejected the argument that the image could be deciphered by reference to outside information, as well as the argument comparing the graphic representation to the "undecipherable" use of a stave and musical score for sound mark registrations. Id. 18. The Board explained: [The] relevant public is not generally accustomed to the nature of the representation code used by professionals in the perfume industry. As the technique of graphically representing olfactory nuances by a set of coloured points or stripes positioned

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In stark contrast to the European Union's approach, the United States trademark system poses no bar, theoretical nor practical, to the registration of scents, as long as the scent is distinctive and not an inherent attribute or natural characteristic of the goods. 196 In fact, the U.S.P.T.O. has registered the scent of plumeria blossoms for sewing thread' 97 and various fruit fragrances for lubricants and motor fuels. 198 Registration of a scent in the United States requires a large quantum of evidence to prove that the scent functions as a trademark.199 Like a sound, the application does not require a drawing. Rather, the applicant must provide a detailed written description of the mark explaining the scent.2 00 Submitting a sample of the scent satisfies the 0 2 specimen requirement. '
according to two axes is not known outside the circle of initiated professionals, the relevant public cannot perceive the reproduced image as a code. It also does not have any key with which to read this image, containing indications relating to... the parameters and values to be attributed to the axes, such that even the nature of the code to be applied is unknown .... Id. The Board also rejected the use of a description to aid in the representation of the scent. The description stated the mark was "' [a] lawn green note, citrus (bergamot, lemon), pink floral (orange blossom, hyacinth) musky ... ' Id. 2. The Board correctly noted that there was no way to perceive what the description meant to convey, which rendered the description useless. Id. 18. While this Note advocates the use of a description to facilitate immediate understanding and recognition of a scent mark, see infra text following note 216, I agree that the description itself must be readily comprehensible to the senses, such as the scent of apples or fresh baked bread, as only a sophisticated nose would recognize a "lawn green note." 196 See In re Clarke, 17 U.S.P.Q.2d 1238, 1239 (T.T.A.B. 1990). The Board distinguished between the registrability of scents supplied by the applicant and "scents or fragrances of products which are noted for those features, such as perfumes, colognes or scented household products." Id. at 1239 n.4.; see also T.M.E.P., supra note 56, 1202.13 ("Scents that serve a utilitarian purpose, such as the scent of perfume, would be functional and not registrable."); Randall Frost, Trademarking: Senses and Sensibility, http://www.brandchannel.com/ featureseffect.asp?pf id=207 (Apr. 26, 2004) (smell of fresh-baked bread would be functional as applied to baked goods, but a strong mark if applied to computers or cars). 197 Celia Clarke d/b/a Clarke's Osewez, Reg. No. 1639128. The application described the mark as "a high impact, fresh, floral fragrance reminiscent of plumeria blossoms." 198 Mike Mantel d/b/a Manhattan Oil, Reg. Nos. 2463044 (cherry scent), 2568512 (grape scent), 2956156 (strawberry scent). 199 T.M.E.P., supra note 56, 1202.13. For example, in In re Clarke, the Board found that Ms. Clarke had established a prima facie case of distinctiveness and, as such, the scent functioned as a trademark for embroidery yam and thread. In re Clarke, 17 U.S.P.Q.2d at 1240. Ms. Clarke presented evidence that her product was the only scented yam on the market, her advertisements promoted the scent of her product, and customers recognized her company as the source of scented yam. Id. 200 T.M.E.P., supra note 56, 807.09; C.F.R. 2.52(e) (2003); see, e.g., Midwest Biologicals, Reg. No. 2560618 ("The mark is a scent mark having the scent of bubble gum."). 201 If the product is small enough, the applicant may submit the actual product. See T.M.E.P., supra note 56, 904. For example, the application in In re Clarke included a sealed kit containing a sample of the scented yam, which the Board found to be a sufficient specimen. 17 U.S.P.Q.2d at 1239. However, the U.S.P.T.O. requires the specimen to "be flat, and not larger than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long." 37 C.F.R. 2.56(d)(1) (2003); T.M.E.P., supra note 56, 904.03. If the product sample exceeds these measurements, the U.S.P.T.O. will accept a substitute specimen, such as a sample of the scent itself. T.M.E.P., supra note 56, 904.03; Hammersley, supra note 32, at 133 (noting process used by the

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The United States' registration procedures are unsatisfactory, creating an administrative burden on the U.S.P.T.O. and legal obstacles to trademark enforcement and determinations of infringement. 20 2 In fact, 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, but commented that the "era of '203 scratch and sniff registrations is not yet upon us. Interestingly, 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. First, 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. 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, 20 5 then the mark does not identify source for those consumers, notify those competitors of the scope of the mark holder's rights, or effectively enforce the trademarks against 206 infringement.
fragrance industry to present product samples satisfies specimen requirement). According to Ms. Hammersley, "[a]pplicants soak blotter paper in the fragrance. Then, for registration purposes, the applicant hermetically seals the paper holding the scent to ensure the applicant preserves the fragrance." Id. 202 See, e.g., Churovich, supra note 195, at 293, 312-14; James E. Hawes, Fragrancesas Trademarks, 79 TRADEMARK REP. 134 (1989). 203 In re Clarke, 17 U.S.P.Q.2d at 1240 n.6. 204 Mr. 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. Accordingly, several questions immediately present themselves. 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? ... Hence, it would be dubious indeed to claim that any two individuals ever had the same true understanding of any given scent. Churovich, supra note 195, at 306; see also Bainbridge, supra note 21, at 224 (noting that describing a scent presents two problems: accuracy and subjectivity). But see Hammersley, supra note 32, at 131 ("Description of a fragrance mark is problematic because there is no unambiguous way to define a scent by graphical and instrumentation techniques. However, this is not necessarily a problem for fragrance marks because Congress has allowed imprecise definitions of marks for some time."). 205 Such descriptions presuppose that the person reading the description immediately knows what a "balsamically fruity" scent or a plumeria blossom smells like. See Bainbridge, supra note 21, at 225. 206 Mr. Churovich further notes the problem with relying on a description: [A]ccurate scent descriptions cannot effectively be communicated through language. All of the personal perceptions, biases, and physical limitations would frustrate any such attempt. Furthermore, this approach will unduly burden the system with unmanageable strife during the processing of each scent claim, 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.

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0 Second, olfactory perception is unique to the individual. 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. 208 More importantly, difficulties arise in infringement actions, such as determining whether there is consumer confusion.20 9 How will jurors, let alone judges, 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, the implementation of a smell classification system would facilitate olfactory mark registration. 2 12 Until then, recent advances in

Churovich, supra note 195, at 312. 207 See id. at 302-04 (discussing the subjective nature of the olfactory sense). 208 Id. 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). 209 Id. at 306-07. Courts ascertain the existence of consumer confusion by applying a multifactor test, which includes comparing the similarity of the marks. See supranote 26. 210 Churovich raises several questions concerning infringement: [Wihat would constitute infringement of a scent mark? That is, how similar is too similar? A quick cross-reference to the discussion of registration above will highlight the extremely nebulous nature of such questions. Even if a recordation standard is ultimately established, 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, will each be required to ascertain the similarities between competing scents? How can either party in such a suit possibly hope to recognize, much less speak to the subjective perceptive scent memories of each juror and the judge, 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, 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. Id. at 313-14; see also Hammersley, supra note 32, at 150 ("[S]cent mark infringement is 'more difficult to detect and quantify with precision.' ... [T]he court will need experts to testify on the interpretations of certain scents.... [S]cent interpretation is inherently subjective, and therefore a court's attempt to objectively apply trademark law to possible scent mark registration is impossible.") (citations omitted); Hawes, supra note 202, at 154-55 (discussing infringement of fragrances). 211 Churovich, supra note 195, at 306. Churovich explains: Even if a sample of the odor was available and presented, is there any guarantee the second individual will sense and remember the odor in the same way as the first? What could influence, or even destroy the proposed communication? Perhaps the second individual is suffering from a mild headcold, or just drank a cup of herb tea. 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. The subjective and keenly personal nature of scents guarantees that confusion would always be present in varying degrees as between two or more individuals. Id. 212 See Hidaka, supra note 55, at 1125 (recognizing that until there is a "properly recognised and thorough smell classification system" in the E.U., "smells will not be registrable"); Bettina Elias, Do Scents Signify Source?-An Argument Against Trademark Protectionfor Fragrances, 82 TRADEMARK REP. 475, 491 (1992) ("Given this potential lack of uniformity in the administration of a fragrance mark system, some type of objective standard is called for.

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technology may improve registration procedures. For example, "electronic nose" analysis of an olfactory scent imitates the human sense of smell, creating a digital file of the scent that can be pictorially displayed. 21 3 Alternatively, spectrograms could be utilized to visually 2 14 depict scents. While the above-mentioned representations of olfactory marks would assist courts in assessing infringement, facilitating enforcement of trademark rights, such representations alone would not educate a new entrant in the marketplace about possible infringement. However, immediate access to a graphic drawing, a description, and the specimen, would further this goal. As such, the description, though inadequate by itself, remains necessary for immediate, albeit imprecise, information on the mark. Further, although subjective, opportunity to smell the mark would provide insight as to the nature of the mark. Ideally, a user of the 2 15 registry would be able to obtain a sample of the scent upon request. Alternatively, a new process could encode scents as digital data and upload them on the World Wide Web. Web users upon accessing the file could smell the scent through a speaker attached to the computer that plays smells rather than music. 2 16 While enabling access to such technology may be costly, 2 17 the expense should be worth the ultimate 8 21 privilege of possessing a scent.

However, unlike the color context, there does not exist any comparable system of fragrance classification or 'odor dictionary' upon which a fact finder might rely."). 213 See Jennifer Ouellette, Electronic Noses Snuff Out New Markets, INDUSTRIAL PHYSICIST, Feb. 1999, at 26. This technology would greatly aid courts in ascertaining infringement. See id. at 27 ("Human experts are subject to such variables as fatigue, health, allergies, mood, and personal preferences, which affect the reliability of the sensory evaluation. 'What the electronic nose now offers is the ability to put down a descriptor for an odor or flavor in terms of hard figures."') (citation omitted). The use of an electronic nose has been suggested in the European Union, but was rejected by the court because of "the inability of the... [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. See John Lewis of Hungerford Ltd.'s Application, 2001 E.T.M.R. 104, 51. Interestingly, NASA is currently developing an electronic nose to detect smells and other odors during space exploration. See Karen Miller, Electronic Nose, SCIENCE @ NASA, Oct. 6, 2004, http://science.nasa.goviheadlines/y2004/ 06oct enose.htm?list1055652 (last visited Sept. 7, 2005); see also Dr. Limin Zhu et al., Quality Control of Flavours in the PharmaceuticalIndustry Using Electronic Noses, Jan. 6, 2001, http://www.presearch.co.uk/pages/products/brochures/I 120/Merck%/2OEnose%/2OPublication.pdf. 214 See Churovich, supra note 195, at 299-303 (discussing the use of vibrational theory to depict the energy of scents). 215 As opposed to visiting the U.S.P.T.O. 216 This technology was invented in 1999 by DigiScents. See Charles Platt, You've Got Smell!, WIRED MAG., Nov. 1999, at 256, 258 (explaining the author's first-hand experience with the technology and his ability to smell oranges online). The company has since gone out of business for lack of consumer interest. 217 The U.S.P.T.O could provide its federal depository libraries with computers equipped with this technology. 218 This Author recognizes the costs associated with these recommendations; however, a full discussion of costs is beyond the scope of this Note.

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CONCLUSION

The registration of color, sound, and scent nontraditional trademarks necessitates increased specificity and precision. Increased specificity in color, sound, and scent registrations would benefit United States trademark law by protecting the interests of the consumer, the trademark owner, and the marketplace. As a result, trademark registrations would more clearly define nontraditional marks and would better protect registrants' rights. 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. Additionally, increased specificity would minimize consumer confusion as to source, enabling the consumer to correctly identify and purchase its preferred goods and services. By requiring the use of an international color code, 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. Sound mark registration should include pictorial representation by detailed musical notation or a sonogram to enable quick comparison of sounds. Additionally, requiring that a description must supplement the representation would improve comprehension of the mark. 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. Olfactory scent mark registration would benefit from implementing a smell classification system or adopting other technologies such as an electronic nose or spectrogram, enabling quick identification of, and differentiation among, scent marks. 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. United States trademark law would be stronger and more effective if it incorporated several of the European Union's registration requirements. Further, by utilizing current registration procedures to their fullest potential, United States trademark law would provide the specificity and certainty needed to create and protect rights in nontraditional trademarks. While these new methods may be costly, they would aid in administration of the trademark system, create legal certainty, and further the policies of United States trademark law.