Shape of Things to Come

On Jan. 8, the U.S. Patent and Trademark Office granted Apple Inc. a trademark for the three-dimensional shape of its iPod media player.

This was more than a recognition of an innovative product design. It also was Apple's capping piece in a multiyear marketing and legal campaign that pushed intellectual-property rights to new competitive advantage for the company.

In many ways, Apple is benefiting from an expansion of U.S. trademark rights, beyond the traditional names, images, logos and two-dimensional symbols trademarks usually secure. In recent years, trademarks have been granted for such things as product shapes, colors and scents that companies can claim are linked exclusively to the source company in consumers' minds.

These nontraditional marks are difficult to obtain. But unlike more commonly used utility and design patents, which exist to cover functions and the ornamental look and feel of products and expire after a set number of years, trademarks can remain in force potentially forever.

The iPod shape trademark gives Apple a new weapon in the fiercely competitive market for media players. While competitors may eventually appropriate the iPod's inner workings, as utility patents expire, they will risk litigation if their products come too close to the trademarked shape of the iPod, including its popular circular-touchpad interface. Moreover, trademark law allows the holder to sue not only manufacturers but also distributors of competing products whose attributes so resemble those of the protected mark that they create the likelihood of confusion in the marketplace.

The Apple strategy is particularly important because companies typically don't give enough attention to the management and potential value of trademarks—especially when it comes to the nontraditional variety. This is partly because trademarks, like other intellectual properties, are complex assets. But they can make a significant difference. Yamaha Motor Corp., for instance, has a nontraditional trademark for the arcing water spray produced by its personal watercraft. Market research has shown that such trademarkeable design cues can promote brand recall and spur sales.

The key to obtaining nontraditional trademarks is to convince an examiner in the U.S. Patent and Trademark Office that the average consumer associates the design attribute in question exclusively with the company seeking the trademark; in Apple's case, this meant proving that the average shopper for a media player identifies the shape of an iPod with Apple.

Building such associations—and securing the nontraditional trademark—is a process that usually takes years and requires support across a company's various departments. Apple's campaign, for example, involved its marketing, product-development and legal departments. Such an effort also assumes that the product design attributes in question are unique. But the iPod's continued domination of the media-player market—and the fact that Apple now has applied to register the iPhone's shape—suggest the potential rewards of trademark management.

We based our research on public documents in the database of the Patent and Trademark Office, including Apple's trademark applications and correspondence between an attorney representing Apple and the examiner assigned to the case by the Patent and Trademark Office. We did not interview anyone from Apple, and Apple declined to comment on this article.

We believe that companies can learn from Apple's example and implement similar strategies of their own. What follows is a summary of that strategy in five steps. Note that depending on context, the first two steps may be reordered.

1. For branding purposes, give the product a unique name and obtain a traditional trademark.

This is an important first step in securing the brands and trademarks of any product or service.

In October 2001, Apple filed at the Patent and Trademark Office its application for the traditional trademark for the unique product name iPod.

When Apple launched the iPod the same year, the product was immediately hailed as a pioneering innovation and an example of harmonious design.

2. Secure utility and design patents to start building a fence against competitors—and a bridge to nontraditional trademarks.

Utility and design patents prevent close copying of successful products. Under current law, design patents also can be used as a bridge to securing nontraditional trademarks.

Nontraditional-trademark laws favor applicants that can show a history of unique product designs. Providing evidence that a design was chosen for its departure from existing designs can help make the case that consumers identify the unique design exclusively with the company.

Apple has a tradition of unique design. Of the original iPod's standout features, the round touchpad interface was perhaps the most noticeable. Meanwhile, as subsequent iPod models were released, Apple piled up some 19 design patents.

When Apple eventually filed for the nontraditional trademark, it had the opportunity to present as evidence a list detailing the existing iPod design patents to help argue that the shape was uniquely Apple's.

3. Create ads that spotlight the attribute—shape, scent, motion, etc.—that forms the basis of the association with the company.

Advertising can help build the desired association in consumers' minds by highlighting the product attribute, the company name, and little or nothing else.

This is important not only to nurture the association, but to present as evidence to the Patent and Trademark Office. Creating such ads can show that the company itself considered the design feature in question to be unique and strongly identified with the company.

Apple included in its evidence presented to the Patent and Trademark Office references to commercials, including iPod Nano television ads in which the device is displayed prominently throughout and identified by name only at the end, with the words "IPOD NANO" and the Apple logo.

4. Apply for additional traditional trademarks that help leverage the product and strengthen the association.

Typically, advertising does the heavy lifting when it comes to building the association, as it did for Apple. But the company gave its effort an extra boost by seeking two additional trademarks: one for a two-dimensional symbol representing the device, and another for a trademark to be used on co-branded products.

In June 2005, Apple filed a traditional trademark application at the Patent and Trademark Office for a simple symbol representing an iPod (see illustration). This symbol is a simple line drawing of an iPod seen straight on. It depicts the iPod's outline, rectangular viewing screen and circular control panel.

This registration secured the iPod's two-dimensional geometry and created a symbol that could be further used to reinforce consumer associations between the iPod and Apple.