trademarking holograms

Trademark Law: Practice Tips for Trademarking Holograms

By Eric Misterovich

Trademarking holograms can be very problematic. To date, our research has shown that, so far, the USPTO has refused to register trademarks for any holograms. Holograms, of course, are among what are commonly called nontraditional trademarks. Such include color, sound, taste, scent, three-dimensional shapes, and moving image marks. Registering a nontraditional mark is more difficult for three reasons:

  • An applicant must overcome generalized skepticism from the Examiner,
  • It can be difficult to show how the nontraditional mark serves as a source identifier in the minds of the consumer and
  • Many times the nontraditional mark is functional.

With respect to holograms, there is the additional hurdle that the USPTO erroneously considers moving holograms to be more than one mark.

However, if you are interesting in trying to register a hologram as a trademark, here are some practice tips.

Trademarking Holograms: Current Legal Principles

Most of us have seen 3D movies and images and, thus, have a generalized idea of what a hologram is. That being said, most of us probably do not know what a hologram is technically speaking. In brief explanation, start with a standard photograph: that is an image of an object within a unified field of light captured by a lens. By contrast, a hologram is several images of the light field surrounding the object of the hologram, such as a dog sitting on the floor. The several images are taken at varying spectrum/color lengths and from varying perspectives. Those several images of the light field are then combined in the final product to display — if done correctly — a fully three-dimensional image — exhibiting parallax and perspective — that realistically changes/moves with a change in the position of the viewer. The intent and purpose of a hologram is to present what is seen as a three-dimensional image that “moves.”

Under current thinking of the USPTO, the “moving” aspect of the hologram is problematic. The Examining Attorneys are instructed that the varying form is an attempt to register more than one mark, which is forbidden under §§ 1 and 45 of the Trademark Act, codified at 15 U.S.C. §§1051 and 1127.

The leading case is In re Upper Deck Co., 59 USPQ2d 1688, 1692-93 (TTAB 2001) where a trading card company attempted to register a hologram used on trading cards in varying shapes, sizes, and positions. See here.

Among the many problems with the application was the description which was:

“The mark consists of a hologram device which is applied to the goods, trading cards. The mark is discrete from and does not constitute a part of the subject matter of the trading card. Neither the size nor the shape of the hologram device, nor any content which may be represented within the hologram device, nor the positioning of the hologram device on the trading card are claimed as features of the mark.”

Facially, this description fails. First, this description lays claim to trademark registration to any and every hologram given that no size, placement, or content within the hologram is claimed as features. Indeed, the Examiner stated as much. This is the equivalent of claiming a trademark for “a photograph device” without regard to size, shape, placement or the content of the photograph. The Examiner rightly rejected registration on that ground alone. Second, given the breadth of the description, not surprisingly the Examiner held that this proposed mark did not function as an identifier of source. Because the content of the hologram is empty, any object — whether baseball field, player, flag, team logo or whatever — could be inserted. As such, how could the hologram function as a source identifier. Aside from the breadth, the record also showed that holograms, in general, were used by many trading card companies on cards and other products for authentication and other purposes. As such, the mere existence of hologram-type device on a trading would not cause the public to perceive the hologram as an indicator that Upper Deck, Co., was the commercial source of the trading cards.

The difficulty with the Upper Deck case is that the summaries and synopses of the case confuse and conflate the idea of “two images” with the idea of “one image that moves.” The TMEP states, for example:

“Generally, if a hologram has two or more views, the examining attorney should also refuse registration, on the ground that the application seeks registration of more than one mark. In re Upper Deck, 59 USPQ2d at 1690-91. See TMEP §807.01.”

With due respect to the drafters of the TMEP, that is not the correct understanding of a hologram. The more apt analogy is a moving image mark, also known as a motion mark.

Trademarking Holograms: Apt Analogy is Trademarking Moving Images

Motion marks are rare, but are allowable under federal trademark law. Indeed, TMEP §807.11 has specific guidance for how to draft the description for a motion mark stating:

“If the mark includes motion (i.e., a repetitive motion of short duration) as a feature, the applicant may submit a drawing that depicts a single point in the movement, or the applicant may submit a square drawing that contains up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also submit a detailed written description of the mark.”

For those who watch movies, one of the more famous motion marks is the one for Columbia Pictures — a depiction of “Columbia” as a standing human female holding aloft a lighted torch. See electronic registration here.

The description of the mark is this: “The mark consists of a moving image of a flash of light from which rays of light are emitted against a background of sky and clouds. The scene then pans downward to a torch being held by a lady on a pedestal. The word “COLUMBIA” appears across the top running through the torch and then a circular rainbow appears in the sky encircling the lady. ”

Trademarking Holograms: Practice Tips

From the foregoing example of a motion mark, here are some practice tips if you want to register a hologram as a trademark. Assume for this exercise that the holographic image is of a dog sitting on the floor. Assuming all other criteria are met — acquired distinctiveness, not substantially similar, etc. — the fact that the image is three-dimensional and moves as the viewer changes positions should not preclude registration. Here are the practice tips:

  • Identify your hologram explicitly as a “moving image” — or at least compare your hologram to a moving image
  • Make it clear only ONE image is being proffered
  • In the description, give the same level of detail you would use for a moving image
  • Provide several static photographic images of the hologram from three or more vantage points as described in TMEP §807.11

The description would be something like this: “The mark consists of one moving three-dimensional holographic image of a dog sitting on the floor. As the viewer of the image moves from right to left, the image shifts from a view of the sitting dog as seen from the right, then from the full front, and then finally to the image of the sitting dog as seen from the left side.”

There is no reason to think that holographic images cannot serve as source identifiers in the same manner as static photographic images.

Trademarking Holograms: Contact Revision Legal

If you want more information about trademarks or have other questions about business law, internet law, data breaches and other legal issues related to IP, contact the lawyers at Revision Legal. We can be reached by email or by calling us at 855-473-8474.

 

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