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By: Belinda J. Scrimenti, Pattishall, Mcauliffe, Newbury, Hilliard & Geraldson LLP
Digital technology has led to innovative advertising and marketing. Brand owners are increasingly using the technology to create and protect new forms of trademarks, consisting of motion, holograms, and other multimedia features.
WHILE U.S. TRADEMARK LAW HAS PROTECTED THESE types of marks for many years, much of the international trademark community had trailed behind. But that is changing as modernized intellectual property laws now allow trademark holders in much of Europe, Asia, and North America to embrace and protect the motion mark movement.
Now one of the oldest motion marks still on the U.S. trademark register, Columbia Pictures registered in 1996 its iconic multimedia logo featuring a woman carrying a torch and wearing a drape, known as “Columbia, a personification of the United States.”1
In 2003, the author registered on the U.S. Register a mark unique in format—covering live motion—for the famous March of the Ducks held twice daily at the Peabody Hotel in Memphis.2 The March has delighted hotel guests and fans for over 80 years. The registration covers actions of the “Duckmaster” rolling out a red carpet and five trained ducks marching down the carpet, up steps, and into the ornate hotel fountain. The ducks swim all day in the fountain and then march back at night.
Motion mark registrations in the United States span many formats. Many consist of animated computer sequences and short videos, ranging from an animated Microsoft Windows® logo,3 to the United Airlines “Big Metal Bird®,”4 the opening Lamborghini wing door,5 and the launching of the Quicken Loans’ Rocket Mortgage rocket.6
A U.S. applicant must describe the motion mark and provide a drawing that either shows a single point in the movement or “up to five freeze frames showing various points in the movement.” The specimen must show the “entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g., a video clip, a series of still photos, or a series of screen shots).”7
The European Union Intellectual Property Office (EUIPO) updated its regulations in October 2017 to permit easier registration of non-traditional marks, by eliminating the requirement of a mark’s “graphical representation.” In 2019, most EU countries harmonized their laws with the EUIPO directive. Now, a mark needs only to be represented in a manner “which enables the competent authorities and the public to determine the clear and precise subject matter of the protection.”8 The representation must be “self-contained, easily accessible, intelligible, durable and objective.” The motion mark must be represented by either a video file or a series of still sequential images showing the movements or position changes.
Prior to the new regulations, as in the United States, Microsoft had successfully registered a motion mark for its logo sequence.9 Exemplary EUIPO registrations under the new directive include a mark owned by a Danish pump manufacturer, Grundfos Holding A/S, featuring an animated logo,10 and Google’s registered hologram of its iconic “G.”11
After the U.K.’s January 2019 amendments brought the U.K. in line with the EUIPO,12 Toshiba registered the first U.K. motion mark, featuring origami-style folding colored triangles.13 St. Modwen Properties PLC, a real estate developer, also registered a complex animation of its swan logo followed by the motion of drawing of an urban skyline.14
Germany implemented the EU directive in January 2019, and the French government published February 2019 amendments to conform with the directive15 that are expected to come into force soon.
European counsel caution that there is little legal certainty regarding such non-traditional marks. Many are likely to be refused as non-distinctive, and proving acquired distinctiveness is difficult and held to strict standards. Appeals have had limited success. However, a Turkish applicant was partially successful on appeal to the EUIPO Board of Appeal (Board) in registering a video of a chef “salting meat” in an unusual (and allegedly distinctive) movement. The Board ruled the mark lacked distinctiveness for food-providing services but allowed registration for goods and other Class 43 services.16
Some Asian jurisdictions have also been forerunners in protecting motion marks. Korea requires proof of acquired distinctiveness, typically through extensive evidence of use in Korea over a long period. Nevertheless, motion marks and holograms were registered there years ago, including Sony’s nearly decade-old animated “Make Believe” logo17 and a Korean product certification hologram.18
Since 2015, Japan has permitted registration of “dynamic design” marks, as long as distinctiveness is proven. Numerous motion marks have since registered, including United’s “Big Metal Bird” mark, based on an International Registration under the Madrid System.19
Canada’s and Mexico’s recently amended trademark laws now officially allow such registrations. Canada’s new law, effective June 17, 2019,20 specifically authorizes “moving image” marks and an array of other non-traditional marks. Even before implementation, the Canadian Trademark Office granted a very few moving image registrations, including the famed James Bond gun barrel sequence.21
A Canadian application must include an electronic representation of the trademark in the form of a moving image (animation) clip that shows the full range of the moving image and must include “a clear and concise description of the whole visual effect of the animation from start to end.”22 However, Canadian counsel warn that allowance will require extensive evidentiary proof of acquired distinctiveness in Canada as of the date of filing, probably three to five years of use across Canada, and possibly even survey evidence.
Mexico’s new 2018 law deleted the bar against registering “animated or changing shapes.” The law now recognizes that a registrable mark requires only that the “sign” (the term for a notyet registered mark) need only be “perceptible to the senses and susceptible to representation in a manner that clearly and precisely allows the subject matter of protection to be determined.”23 Draft regulations are still pending, and further legislative amendments are possible.
Nevertheless, protection for motion marks is far from universally accepted. Progress is slow in much of Latin America and several Asian countries, where many non-traditional marks are still prohibited. But the most glaring exception to protection is China, where such marks are still expressly barred from registration. Until that changes, workarounds include copyright protection of works analogous to films, and filing for a series of trademarks reflecting static images of steps in a mark’s animation.
Overall, the good news is that global trademark laws are making progress in keeping up with the realities and demands of advertising and marketing. Animated motion marks—once somewhat rare—are becoming more important and valuable to brand owners. The current trend shows they are also becoming more protectable under the trademark laws. So brand owners should be bold in adopting and registering these creative new types of trade identifiers.
Ms. Scrimenti thanks her foreign colleagues for their assistance with updates on their respective jurisdictions: Canada – Marijo Coates, Deeth Williams Wall LLP; China – Spring Chang and Laura Li, Chang Tsi & Partners; France and EU – Pascal Lefort, Duclos, Thorne, Mollet-Viéville & Associés; Germany and EU – Claus Eckhartt and Christine Fluhme, Bardehle Pagenberg; Korea – Young - June (Jay) Yang, Alex Hyon Cho, and Hyun-Joo Hong, Kim & Chang; Mexico – John Murphy, Arochi & Lindner; and United Kingdom – Edmund Harrison, Mewburn Ellis. Other information is sourced from International Trademark Association Non-Traditional Marks Committee summaries and data.
Belinda J. Scrimenti is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP. She has over 30 years of experience practicing in trademark, copyright, unfair competition, and trade dress law counseling; domestic and international trademark prosecution; and litigation in all these areas. Her national litigation experience has encompassed cases in these areas in more than 40 federal court districts and divisions and before the Trademark Trial and Appeal Board. She also has unique experience in counseling on and protecting internationally non-traditional marks, such as single-color, sound, and motion marks. She has been recognized by the World Trademark Review in its WTR 1000 list of top-ranked trademark attorneys internationally and selected repeatedly by “Super Lawyers” for Intellectual Property Litigation and by “Who’s Who Legal: Trademarks” as a leading trademark lawyer. She has written and spoken frequently on trademark and related topics. She is admitted to practice in the District of Columbia, Virginia, Illinois, and Ohio, as well as numerous federal courts. She currently is Co-Chair of the Steering Committee of the D.C. Bar’s Intellectual Property Community.
To find this article in Lexis Practice Advisor, follow this research path:
RESEARCH PATH: Intellectual Property & Technology > Trademarks > International Trademark Considerations > Articles
For an overview of key trademark law principles, see
> TRADEMARK FUNDAMENTALS
RESEARCH PATH: Intellectual Property & Technology > Trademarks > Trademark Counseling & Transactions > Practice Notes
For more information on trademark protection of images and characters, see
> MARKETING IMAGES, CHARACTERS, AND SLOGANS: COPYRIGHT VS. TRADEMARK PROTECTION
For an extensive list of international guides addressing essential aspects of trademark law and policy, see
> TRADEMARKS IN INTERNATIONAL JURISDICTIONS
RESEARCH PATH: Intellectual Property & Technology > Trademarks > International Trademark Considerations > Practice Notes
For a discussion on the absolute and relative grounds for refusal that may bar the registration of a United Kingdom or European Union trademark, see
> ABSOLUTE AND RELATIVE GROUNDS FOR REFUSAL TO REGISTER A TRADEMARK (UK AND EU)
For a detailed analysis on trademark protection of nontraditional trademarks such as motion trademarks, see
> NONTRADITIONAL TRADEMARKS: BEYOND WORDS AND LOGOS, 1 GILSON ON TRADEMARKS § 2.11
RESEARCH PATH: Intellectual Property & Technology > Trademarks > Trademark Counseling & Transactions > Secondary Materials
1. U.S. Reg. No. 1,975,999. A video of the mark is viewed at http://bit.ly/2lZJbdm. 2. U.S. Reg. No. 2,710,415. A video of the mark is viewed at http://bit.ly/2krMlpF. 3. U.S. Reg. No. 3,926,321 (now cancelled). 4. U.S. Reg. No. 5,187,557. A video incorporating the animated bird logo is viewed at http://bit.ly/2mlhZFV. 5. U.S. Reg. No. 2,793,439. 6. U.S. Reg. No. 5,040,974. A video of the mark is viewed at http://bit.ly/2lXqqqR. 7. 37 C.F.R. §2.52(b)(3). See 8 Trademark Manual of Examining Procedure § 807.11; 8 Trademark Manual of Examining Procedure § 904.03(1). 8. Article 4 of EUTM Regulation (Regulation No. 2017/1001). 9. EUIPO Reg. No. 008553133. 10. EUIPO Reg. No. 018020711. A video of the mark is viewed at http://bit.ly/2lXqFSN. 11. EUIPO Reg. No. 017993401; Also registered in the UK, Reg. No. UK00003375918. A video of the mark is viewed at http://bit.ly/2kxtWYM. 12. Section 1(1) of the UK Trade Mark Act 1994 (as amended). 13. UK Reg. No. UK00003375593. A video of the mark is viewed at http://bit.ly/2lYu2cj. 14. UK Reg. No. UK00003395854. A video of the mark is viewed at http://bit.ly/2krN6z1. 15. Article L.711-1 of the French Intellectual Property Code. 16. D Et Ve Et Ürünleri Gida Pazarlama Ticaret Anonim Sirketi, EUIPO Board of Appeal, Case R 2661/2017-5 (June 8, 2018). 17. Korea Reg. No. 45-0033542. In Korea, the registration certificates bear a series of images reflecting the animation. 18. Korea Reg. No. 41-0354050. 19. International Register, Reg. No. 1290466. 20. Section 30(2)(c) and (d) of the Trademarks Act and paragraph 31(e) of the Regulations. 21. Canada Reg. No. TMA980395. See also Reg. No. TMA969658 (United “Big Metal Bird” motion mark). 22. See June 17, 2019 Practice Notice for Non-Traditional Trademarks. 23. Mexico Industrial Property Law, Articles 88-89.