Protectable Trademark Subject Matter in Common Law Countries and the Problem with Flexibility

Words, names, and logos used as trademarks can provide consumers with useful information about a product’s source or qualities. Examples are BILLABONG for clothing, SINGAPORE AIRLINES for airline travel services, WHITTAKER’S for chocolate, and Starbucks’ mermaid logo for coffee. Today some companies are also claiming trademark rights in other subject matter that is non-verbal or non-visual, including the exterior and interior design of buildings, the three-dimensional shape of packaging and products, colors, sounds, scents, textures, and flavors. Examples of such “non-traditional” marks registered in the United States are the design and layout of Apple’s retail store; a skull-shaped bottle for alcoholic beverages sold by Globefill, Inc. under the Crystal Head Vodka brand; LEGO’s Minifigure shape for toy figures; the color magenta used in advertising for T-Mobile’s wireless telecommunication services; the sound of a Zippo cigarette lighter opening, igniting, and closing; the scent of Play-Doh for Hasbro Inc.’s toy modeling compound; and the texture of leather wrapping around the middle surface of a bottle of wine sold by the David Family Group. This chapter evaluates how Australia, New Zealand, Singapore, and the United States determine what subject matter or “signs” are eligible for trademark registration and protection. One important feature of the trademark laws in these common law jurisdictions is flexibility in what types of signs can qualify as a trademark. The broadness of the definition of a “sign” or “trademark” in the laws of these four countries and other World Trade Organization (WTO) members is due, in part, to international obligations to protect trademarks in the Trade-Related Aspects of Intellectual Property (TRIPS) Agreement. TRIPS Article 15(1) provides that “any sign” can qualify as a trademark if it is capable of distinguishing one trader’s goods or services from those of others. Article 15(1) also states that “[s]uch 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.” Allowing flexibility in what can be registered as a trademark can benefit companies seeking to distinguish their brands in new ways. Yet such flexibility may also stifle fair competition and non-misleading expression. Competitors and others accused of trademark violations may be unable to determine early in a trademark dispute whether certain subject matter claimed as a common law trademark is actually protectable, distinctive, and otherwise valid under trademark law. The lack of certainty in what can qualify as a mark may chill the use of certain communicative symbols or product features that were intrinsically expressive, useful, or desirable before they were claimed as trademarks. The protectable trademark subject matter requirement can serve a critical “gatekeeping” function by encouraging the adoption, use, and registration of the types of marks which are more effective at communicating source-identifying product information and which better promote competition and trademark law’s other important goals. Legislators should use this requirement to decide as a matter of public policy exactly what types of signs should be registered and protected, and consider categorically leaving certain types of subject matter in the public domain free for use by everyone in the marketplace.