I Love You, says Gene Simmons

Gene Simmons (of the rock band, "Kiss," fame) recently filed a trademark application for the registration of a variation of the "devil horns" hand gesture, and it has caused some uproar in the music community among fans and fellow metal musicians. Can Gene Simmons trademark a hand gesture that is essentially identical to the "I Love You" gesture in American Sign Language (ASL) and prevent others from using it?

We may never know the answer.

The Kiss bassist, apparently buckling to negative press, abandoned the application 11 days after filing it. Nevertheless, this instance begs the question: What, aside from words and logos, can be trademarked, and what are the bounds of protection of these non-traditional marks?

Even if trademark registration of the gesture were issued, it would have only prohibited the use of the mark by others in commerce as it relates to live musical performances and celebrity appearances. It would not have prevented the use of the gesture in commercial pursuits, outside of musical performances and celebrity appearances, and registration would not have prevented the non-commercial use of the mark. In other words, Simmons’ trademark would not have sent the users of ASL scrambling for another way to tell their loved ones how they feel about them.

When most people think of trademarks, they think of words, phrases and logos. This ill-fated attempt to trademark a gesture demonstrates the potential breadth of trademark protection to be larger. Some of the non-traditional things that can be the subject of a trademark registration include colors, packaging, sounds scents and even potentially tastes. In almost all cases, non-traditional trademark registration is more difficult to obtain than registration on words and logos. In many instances, the applicant must demonstrate that the proposed non-traditional mark is not functional and that it has acquired distinctiveness among relevant consumers of the goods or services associated with the mark. The applicant must demonstrate that the non-traditional trademark itself acts to identify the source of a good or service and is not viewed as an incidental feature of a particular product or service.

Early in the year, Hasbro filed a trademark application for the smell associated with Play Doh®. The Trademark Office issued an initial rejection of the application in May, warning the scent could be a non-distinctive feature of the product's design, and citing the fact that many other modeling compounds are scented to make the products more desirable and do not necessarily identify the source of a modeling compound made by a specific manufacturer. The Trademark Office commented that substantial evidence would be required to demonstrate the scent has acquired distinctiveness. I bet if exposed to the scent with the Play Doh® sight unseen, a significant portion of relevant consumers would be able to identify the source as Play Doh®. This survey would be sufficient evidence to gain registration of the scent trademark on the primary trademark registry.

Harley Davidson tried to protect the unique sound of its engine, caused in large part by the specific design of the engine utilizing a common crankpin, and failed. Trademarks are not intended to be, and are generally prohibited from, being a means to prevent the competition from making a certain product that functions in a certain way. The protection of functionality is covered exclusively under patent law. Registration of the Harley engine sound would likely inhibit or even prevent competitors from making a certain type of engine for their motorcycles, even though the engine's design is relatively old and in the public domain. An example of successfully registered sound trademarks, wherein the sound itself is not a functional byproduct, include the Looney Tunes theme song, the 20th Century Fox fanfare and General Mill's green giant "ho ho ho."

Colors can be trademarked as well. Do you know the name of the company that makes green lawn tractors? For the women, if your significant other gives you a small teal box, can you identify the brand of jewelry you are hoping is in the box? If a brown delivery truck delivery truck stops at your house and a person dressed in brown steps out of it, who is delivering your package?

The take away of all of this is to expect some serious negative push back if you are an aging rocker looking to prevent other rockers from telling their audience that they love them. And perhaps more importantly, if you are going to start a company selling vegetables, you may not want to base your marketing campaign on a driver pulling a cart of vegetables with a green tractor while yelling "ho ho ho."