The Rolf Institute of Structural Integration created a motion video in order to visually demonstrate the benefits of Rolfing and asked The Ollila Law Group (OLG) to protect their new visual materials.  OLG recommended that the client protect their new materials by filing a U.S. trademark application for registration of the video as a “motion mark” trademark application.

Until recently, this type of trademark was relatively uncommon.  In fact, in 2000, there were only ten applications filed with the USPTO for motion trademarks. Since then, the motion mark has become more prevalent. In the case of the “Little Boy Logo,” OLG, which has experience in protecting non-traditional trademarks, was confident in recommending filing for the motion mark. 

Requirements for Motion Marks vs. Traditional Trademark

Although the filing process required for applications for a traditional trademark application and a motion mark have similarities, there are important differences between these types of applications.   First, there are obvious differences in the specimen requirements because the mark is in motion and the specimen must reflect this.  Therefore, it is important to work with the client to develop a specimen that the PTO will accept. 

Second, in order to file a motion mark, the specimen, showing use of the mark, has specific requirements due to the fact that the mark is in motion. The specimen requirements for a motion mark include a video clip depicting a series of still photos and screen shots. The specimen must also include a video with freeze frames depicting five points of movement (see figure below). These criteria must be met in order for a motion mark to proceed to publication and, eventually, registration. 

 Specimen of still photos for “Little Boy Motion Mark” 

Office Action and Response

Once the Ollila Law Group submitted the application for the “Little Boy Motion Mark,” the USPTO raised no serious substantive issues.  The PTO required a disclaimer of “INSTITUTE OF STRUCTURAL INTEGRATION” apart from the mark as shown. In addition, the USPTO required a specific claim of color and in order for the application to proceed to publication; the USPTO required that OLG amend the application to include a color claim. In response to this office action, the attorneys at OLG were able to make the required amendments; the USPTO accepted the amendments for the “Little Boy Motion Mark.” The mark then proceeded to publication and by August 8, 2017, the “Little Boy Motion Mark” mark was approved for registration. 

Even though a motion mark is non-traditional and more complicated with the respect to what the client must provide and what is required to meet the USPTO requirements, with experience and careful planning, the prosecution can be relatively straightforward with minimal objections from the USPTO.  

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