July 22, 2019

July 22, 2019

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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.

© 2019 Sterne Kessler

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About this Author

Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist

Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.

202-772-8632
Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy to procure fantastic short and long-term results” (World Trademark Review 1000, 2012 and 2013).

202-772-8688