1202.02(a)(viii)    Functionality and Non-Traditional Marks

In addition to product design and product packaging, the functionality doctrine has been applied to other non-traditional proposed marks, such as sound, color, and flavor, and the same Morton-Norwich analysis, discussed above, applies to these marks. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532, 32 USPQ2d 1120, 1123 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) (finding the color black for outboard motors functional because it provided competitive advantages such as ease of coordination with a variety of boat colors and reduction in the apparent size of the engines); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB 2013) (finding the color black for floral packaging functional because there was a competitive need for others in the industry to use black in connection with floral arrangements and flowers in order to communicate a desired sentiment or occasion such as elegance, bereavement, or Halloween); In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042 (TTAB 2013) (finding the flavor peppermint functional for nitroglycerin lingual spray based on evidence that peppermint oil, which imparts a flavor of peppermint, can improve the effectiveness of sublingual nitroglycerin spray); In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) (affirming the refusal to register an alarm sound emitted by personal security alarms in the normal course of operation without showing of acquired distinctiveness); Saint-Gobain Corp. v. 3M Co ., 90 USPQ2d 1425, 1447 (TTAB 2007) (deep purple shade for coated abrasives held functional, the Board finding that coated abrasive manufacturers have a competitive need to use various shades of purple, including applicant’s shade, and that "[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing."); In re N.V. Organon, 79 USPQ2d 1639, 1645-46 (TTAB 2006) (finding the flavor orange functional for pharmaceuticals where the evidence showed the flavor served to mask the otherwise unpleasant taste of the medicine flavor); see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use "would put competitors at a significant non-reputation-related disadvantage," even where the color was not functional in the utilitarian sense); TMEP §§1202.02(a)(vi) and 1202.05(b) (regarding aesthetic functionality and color marks).

Examining attorneys should also consider the functionality doctrine in relation to other types of non-traditional marks, such as scent. For example, an application to register scent for an air freshener or an application to register the sound of a ring tone for downloadable ring tones must be refused as functional, as the proposed marks are essential to the use or purpose of the goods. Cf. Vertex, 89 USPQ2d at 1703 (finding that the "ability of applicant’s [security alarms] to emit a loud, pulsing sound is essential to their use or purpose" because the evidence showed that use of a loud sound as an alarm is important and that alternating sound pulses and silence is a "more effective way to use sound as an alarm than is a steady sound").