I Second that e-Motion: Protecting Motion Marks

Grabbing and keeping the consumer’s attention can be difficult, especially in the online marketplace where advertisements and surveys obscure content on the screen and distract the viewer. Most marketers know that animation or motion captivates the consumer because it is interesting and easy to consume, but they often forget that this same motion can be protected as a trademark if used to identify source. Such “motion marks” may also serve as an effective anti-counterfeiting measure.

Although U.S. trademark law has long acknowledged the registrability of motion marks, only a handful of such marks are actually on the Register. Like any other mark, to be federally registered, a motion mark must be distinctive, non-functional, and serve as an identifier of source for goods or services in commerce (15 U.S.C. § 1052). Because motion marks are typically composed of detailed graphic images, meeting the first two requirements is often less problematic than showing that it actually serves as an identifier of source. The key element for demonstrating the source-identifying function of a motion mark is the “specimen of use,” which is governed by Section 904.03(l) of the Trademark Manual of Examining Procedure. This section provides that an acceptable 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).” Of course, this same specimen must also show the motion mark in association with the goods or services of the application, and not simply in a video clip, which is sometimes easier said than done.

Examples of currently registered motion marks include (1) the zoom-in view of a female statue at the beginning of every Columbia Pictures’ movie (Reg. No. 1,975,999), (2) the “duck march” associated with PEABODY hotels (Reg. No. 2,710,415) and (3) the lighting effects that rotate around the microphone of Apple’s SIRI personal assistant and knowledge navigator (Reg. No. 4,471,608). More recently, Seagate Technology filed U.S. Application No. 86484383 to protect its “living” logo, which Seagate describes as a demonstration of its “belief that data is alive and ever-changing, ever-growing.” The logo is made up of a changeable set of real-time image pixels pulled from the open APIs of various big-brand platforms that use Seagate’s storage solutions. As a result, the information and images that form the logo are constantly changing.

Given the requirements for demonstrating use as an identifier of source, it is not surprising that the majority of motion marks are registered for services, where the mark appears in advertising, or for electronic consumer goods or software, where the mark is conveyed to the consumer via a display screen. For this reason, a carefully crafted motion mark may be particularly useful in fighting counterfeit electronic products. A motion mark can be used to signal to the consumer that they have just purchased an authentic product, rather than a counterfeit that lacks the code or programming necessary to execute the motion mark. And, like any other trademark registration, a registration for a motion mark may be registered with the U.S. Customs Office to block the importation of products bearing the mark depicted in the drawing(s) of the registration.

Perhaps you have a product or service that could be enhanced through the use and protection of a motion mark?

This article appeared in the April 2015 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.