Protecting Nontraditional Trademarks Under Trademark, Copyright and Design Patent Law

Using Conventional and Unconventional Approaches to Establish, Register and Enforce Marks

Recording of a 90-minute CLE webinar with Q&A

Conducted on Tuesday, March 28, 2017
Recorded event now available

This CLE webinar will provide guidance to IP counsel on the challenges and processes involved in trademarking and protecting nontraditional categories. The panel will offer approaches for registering and enforcing marks involving uniquely identifiable packaging, shapes, sounds and other nonconventional aspects.


Trademark protection extends beyond traditional names and logos to other categories, such as shape, sound, touch, colors, motions and more. These nontraditional trademarks are more difficult to register, though they fulfill the essential trademark function of uniquely identifying the commercial origin.

Examples of registered nontraditional trademarks include the NBC “chimes” and the Coca-Cola bottle shape, but Pepto Bismol could not register its pink color. Counsel are also looking to design patent law and copyright law as a means to protect nontraditional trademarks.

Trademark owners doing business in Europe must consider differences vs. U.S. law in how nontraditional marks are governed and the challenges those differences present. Counsel must be aware that graphical representation is required to get protection in Europe.

Counsel to trademark owners must understand the challenges involved in proving, registering and protecting nontraditional trademarks to determine how to overcome hurdles and protect these marks.

Listen as our authoritative panel of trademark practitioners discusses the challenges involved in nontraditional marks, strategies for registering such trademarks and best practices for enforcing rights in nontraditional trademarks.


  1. Nontraditional marks and challenges faced with each
    1. Sight
    2. Sound
    3. Touch
    4. Single colors
    5. Motion
    6. Hologram
    7. Product packaging
    8. Product configurations
  2. Registration of nontraditional marks
    1. Clearing the mark
    2. Functionality test
    3. Acquired distinctiveness
    4. Inherent distinctiveness
  3. Protecting nontraditional marks
    1. Using copyright law
    2. Using design patent law
  4. Protecting nontraditional mark in Europe
  5. Enforcing nontraditional marks
    1. Policing use of marks
    2. Challenge of subjective character of nontraditional mark
    3. Nominative fair use defense
    4. Substantial evidence of non-functionality and secondary meaning
    5. Litigation strategies


The panel will review these and other key issues:

  • What unique challenges arise in the various types of nontraditional trademarks?
  • What approaches should counsel consider to successfully register nontraditional marks?
  • What tactics have proven effective for counsel in nontraditional trademark litigation?


Theodore H. Davis, Jr., Partner
Kilpatrick Townsend & Stockton, Atlanta

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of trademark, copyright, false advertising, and unfair competition law. He has particular experience in trade dress disputes and with large-scale trademark clearance and registration projects. He has served on the Board of Directors of the International Trademark Association.

Robert D. Litowitz, Partner
Kelly IP, Washington, D.C.

Mr. Litowitz has over 30 years of experience in litigating patents, trademarks, and other intellectual property rights before U.S. district courts, the ITC, and the TTAB. He has extensive experience leading and managing a range of litigations on such diverse subjects as pharmaceuticals, healthcare products, designs, product configurations, words, symbols, golf courses, and books.

Linda K. McLeod, Partner
Kelly IP, Washington, D.C.

Ms. McLeod's practice focuses on litigation before the Trademark Trial and Appeal Board and the courts, trademark clearance and prosecution, and client counseling. She gained significant expertise while serving as Administrative Trademark Judge and Interlocutory Attorney with the TTAB. She sat on panels that decided cases involving a variety of marks, including product configurations and color trademarks.


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Gottlieb Rackman & Reisman

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Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Bassam N. Ibrahim


Buchanan Ingersoll & Rooney

Mark P. Wine



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