This week, the fastest man in history has applied to have his signature victory stance approved as a registered trade mark. The eight-time Olympic gold medallist, Usain Bolt, has filed an application with the United States Patent and Trademark Office (USPTO) to register a trade mark depicting a silhouette of a man displaying his distinctive pose of leaning back and pointing to the sky. He intends to use the image as a logo on a range of products, including clothing, sunglasses, jewellery and bags, as well as in restaurants and retail stores.
What forms of branding can be protected by trade marks?
Trade marks are traditionally associated with logos or names, with famous brands such as McDonald's, Starbucks, Audi and Gucci all being renowned for their signature marks. In the last few decades, celebrities have also made increasing use of trade marks as a means of protecting their merchandise. In fact, recently Kim Kardashian even filed to have her children's names registered as trade marks to protect any future business ventures they may wish to pursue. However, Usain Bolt's move to protect his famous pose serves as a reminder that trade mark protection does not just apply to names and logos and can actually help protect a whole range of brand features.
Although distinguishable words or logos are often used to identify companies or products, a person or company may have other distinct features which resonate with consumers and thus, warrant legal protection. For example, The Hershey Company successfully applied to register a trade mark in respect of the unique shade of orange used on the packaging of Reese's peanut butter cups. In fact, there is a whole host of other forms of branding that can make a product or service unique - for example, sounds, textures, or even smells, as well as the shape of product packaging.
In the UK and in the US, scents, tastes, and sound marks are ordinarily referred to as 'non-traditional marks' and, whilst not granted as readily as traditional trade marks for logos or words, they are often still approved. For instance, in 2018 the USPTO registered a trade mark for the scent of Play-Doh and the signature clicking sound on all of Zippo's lighters is also protected.
These components may seem less obvious forms of intellectual property but often these are the characteristics of products which resonate most with consumers and, therefore, hold considerable commercial value. For that reason, it is vital that organisations adopt a brand protection strategy which is all-encompassing and extends to every aspect of their business. Heineken serves as a prime example of a brand which has adopted this approach. The company has established an extensive portfolio of trade marks designed to protect every aspect of its business, including the brand name, and the names of various sub-products such as Heineken 0.0, as well as the bottle design, including the shape and recognised colour combination.
However, it is important to bear in mind that seeking protection of scents, sounds and tastes can be tricky as the inherent nature of these features make it more difficult to prove their distinctiveness, which is a necessary requirement for any trade mark application. Well-known brand, Red Bull, attempted to register the combination of its signature colours, blue and silver, used on its infamous energy drinks. The European Court of Justice held in that case that simply providing the ratio of the two colours being used still allowed for the arrangement of the colours in numerous different combinations and, therefore, it was not sufficiently precise to constitute a registered mark.
How to go for gold - don't leave anything behind!
Athletes such as Usain Bolt and well-known retail and food and drinks organisations invest heavily in creating and promoting their brand worldwide. For this reason, it is important that brands consider all elements of their products and services to identify any unique aspects which may qualify for IP protection, even if it may be more difficult to register these components as marks. In order to ensure that no stone is left unturned, brands should explore the full extent of the options available to them for protection and seek legal advice to implement a robust and fully inclusive brand protection strategy.
If you would like to speak to one of our experts about your organisation's brand protection strategy, please get in touch with a member of the IP, Technology & Data team or your usual contact at Brodies.