November 29, 2022

Volume XII, Number 333

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November 28, 2022

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Recent Noise Over Acoustic Trademarks

As I recently noted in an article on trademarks in the U.S. and internationally, Metro-Goldin-Mayer and Pennsylvania State University are two entities in different, yet related, channels of trade (sports and entertainment, which were melded together as ESPN’s original name). But they do have something in common in that each is known for the roar of a lion:

Leo the Lion has been the most regular star of MGM Pictures since it was founded on this day in 1924, and his roar is probably the sound most commonly associated with the studio.
Kat Eschner, The Story of Hollywood’s Most Famous Lion (2017)

There’s no roar quite like a Nittany Lion’s!
Penn State Football @PennStateFball on 12/7/2020

The MGM Lion’s roar and the Nittany Lion’s roar are certainly not identical, but they might be considered confusingly similar, should one ever need to distinguish or compare them. (I am unaware of any reported comparison, but I did find the latter compared to a toilet flushing, and have seen the former’s trademark suffer indignities at times too).

I start with MGM and Penn State, not because MGM’s registered trademark and Penn State’s common law one are at odds, but because they are two well-known acoustic, or sound (or auditory), marks that can help us understand those sounding off recently about such non-traditional trademarks. That noise includes this one, which is “the sound made by a drinks can being opened, followed by a silence of approximately one second and a fizzing sound lasting approximately nine seconds,” according to Ardagh Metal Beverage Holdings Gmbh & Co. Kg v. European Union Intellectual Property Office, T-668/19. The uproar also includes numerous articles by diverse scholars and various bloggers expressing a renewed interest in sound marks in many countries.

The object then is to hear out all sides and offer some thoughts on the recent clamor around acoustic marks and the questions that it presents. Every sound trademark seems not only to signify something, but raises a question or two as well. Hence, the title of this piece and the discussion below.

Looking first at the Ardagh case, we note that the applicant sought a to register that sound file as trademark. Applying traditional standards and definitions of what amounts to a trademark, the Ardargh court rejected that registration, holding that such a sound pattern “cannot be registered as a trade mark in respect of various drinks and for metal containers for storage or transport, in so far as it is not distinctive.” General Court of the European Union PRESS RELEASE No 120/21 Luxembourg, 7 July 2021 entitled “The Court gives a ruling for the first time on the registration of a sound mark submitted in audio format.”; see also ILN Today, July 15, 2021.  The Court also noted that sound “to be a purely technical and functional element,” PRESS RELEASE No 120/21 Luxembourg, 7 July 2021see also Ardagh at par. 36-41.

But the court also “noted that the criteria for assessing distinctiveness are the same for all categories of trade mark, and that [applicable law] draws no distinction between the various categories. The criteria for assessing the distinctiveness of sound marks are therefore no different from those applicable to the other categories of mark.” Ardagh at par. 23.  Though reemphasizing that “case-law does not establish new criteria for assessing the distinctive character of a trade mark,” the court did concede “that, in the context of the application of those criteria, the perception of the relevant public is likely to be influenced by the nature of the sign for which registration is sought.” Ardagh at par. 31.  Some wonder what that all means.

Ardagh itself seems to suggest that it means sound can be a trademark under the same rules as other trademarks, but that the unique issues endemic to sound trademarks will nonetheless influence any final decisions on registration and enforceability. The Ardagh analysis echoes the analysis found in American courts and registration controversies, such as in the case of Ride The Ducks, LLC v. Duck Boat Tours, Inc., where a federal district court noted that “a sound mark’s level of protection will depend on whether it is inherently distinctive or more common-place and nondistinctive.”  As the Ducks court noted, in order to register a common place sound, “a proponent must ‘show that purchasers, prospective purchasers and listeners do recognize and associate the sound with services offered . . . exclusively with a single, albeit anonymous, source.’” (quoting In re General Electric Broadcasting Company, Inc., 199 U.S.P.Q. 560, 563 (Tr. Tr. & App. Bd., Apr. 12, 1978)).  That, essentially, sounds like the Ardagh approach.

Certainly, the reaction to Harley-Davidson’s efforts to register a sound mark prompted a reaction like that seen in Ardagh:

Harley-Davidson was famously unsuccessful in attempting to trademark the sound produced by its V-Twin engines. In 1994 Harley-Davidson sought to register the “exhaust sound of applicant’s motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use” (Trademark Serial No 74485223). Several competitors opposed the application, arguing that the sound was not unique (e.g., compared to other engines, see Michael Saperstein “The Trademark Registrability of the Harley-Davidson Roar: A Multimedia Analysis”, Boston College Intellectual Property & Technology Forum, (1998) at page 3). Harley-Davidson also faced potential challenges that the V-Twin engine sound is functional and that, unlike many other trademarked sounds, the V-Twin sound is not always the same. Rather, it varies based on which motorcycle model it is used in, and also how much the throttle is revved (Id. pages 4 and 5). Eventually, Harley-Davidson abandoned the application six years later (see Trademark Serial No 74485223). [G Warren Bleeker and Mike Koplow, Can you trademark sounds, smells, colours, motions and flavours? (2019)]

The sound of the engine, like that of the pull top, just did not impress the examiners and others as distinctive.

Though the Ducks court thought that “the trademarking of a particular noise or sound appears to be a relatively rare phenomenon,” it really is not as rare, at least in the United States, as one might think.  As one commentator noted, “[t]he USPTO’s regulatory guidelines for the examination and registration of sound marks are set forth in Section 1202.15 of the Trademark Manual of Examining Procedure,” and:

Specifically, the TMEP states that, in order to function as a source indicator, a sound mark must “assume a definitive shape or arrangement” and “create in the hearer’s mind an association of the sound” with the underlying goods or services. The TMEP lists “a series of tones or musical notes” and “wording accompanied by music” as two examples of potentially registrable forms of sound marks. This same TMEP provision establishes that, like other types of trademarks and service marks, sound marks must be “arbitrary, unique or distinctive” in connection with the goods or services with which they are associated. The TMEP then elaborates that “commonplace” sounds, such as sounds which are frequently heard in the “normal course of operation” of products or to which listeners have been exposed under different circumstances, can only be registered as sound marks upon a showing of “acquired distinctiveness”.

[John S. Miranda, Behind the Jingles: Legal Strategies to Protect Sound Trademarks (2021)]

Because a number of registrants have met those criteria and more are interested in doing so, the USPTO itself publishes a list of trademark sound mark examples that is over 100 marks long, most with linked audio files. (Other lists exist as well, for example herehere and here.)

In addition to MGM’s Roaring Lion, the USPTO’s list includes Homer Simpson’s short D’Oh! (an exclamation I did not find on this literary inventory), the earlier mentioned ESPN’s well-known, slightly longer  DaDaDa, DaDaDa, the Green Giant’s Ho-Ho-Ho, the minute-long Lone Ranger intro featuring a piece of Rossini’s Willian Tell Overture, and the five-minute-thirty-nine-second Sweet Georgia Brown song as a mark for the Harlem Globe Trotters—one presumably echoing in the nightmares of the Washington Generals.  (While the lion’s roar, Homer’s exclamation and ESPN’s six simple notes sound like trademarks to me, I am dreading the Christmas dinner infringement suit between the Green Giant and Santa Claus, and wondering whether Lone Ranger and Globetrotter length trademarks will have us on a Stairway To Heaven type descent into a fair-use type analysis).

In the U.S., other sound marks include Law & Order’s ca-chung chung (as Reg. No. 3137680), the lightsaber sound from Star Wars (as Reg. No. 3618321), and “[t]he NBC chimes sequence[, which] actually became the first ‘purely audible’ service mark to register with the USPTO in 1950,” as that early quoted  commentator also noted. (As noted (at 498, fn. 44) of Iyanu Lipede’s  “Let’s Hear it For Sound Marks: Trademark Protection in Copyrighted Songs,” 16 Liberty University Law Review 493 (2022), “[t]he mark comprises the musical notes G, E, C played on chimes, Registration No. 523,616. NBC did not renew this mark, and the mark expired in 1992. NBC filed a new trademark application for the same sound in 1970, and the new mark was registered the following year. The mark comprises a sequence of chime-like musical notes which are in the key of C and sound the noted G, E, C, the ‘G’ being the one just below middle C, the ‘E’ the one just above middle C, and the ‘C’ being middle C, thereby to identify applicant’s broadcasting service, Registration No. 916,522”)  Thus, sound marks are not as new a phenomenon in the US as they are in Europe, though they remain somewhat rare even in the States.

There are also concerns that reverberate from acoustic trademarks to some of the questions asked in copyright and related cases like those involving the Blurred Lines controversaries over use of limited musical notes.  Unsurprisingly, one recent article goes directly to this question, and proposes layering trademark protections atop copyrighted song rights and calling for both the clarifying of Supreme Court precedent and the amending of the Lanham Act so that, in the author’s words (at 527), “plaintiffs may bring concurrent claims arising under the Lanham Act and Copyright Act when overlapping protection of the subject matter is available” and that “[m]usician-sound-mark-owners would be able to bring trademark claims against copiers regardless of whether an adequate remedy lies in the Copyright Act.”

This post, then, is really just a recognition that the crack of the starter’s pistol has been heard, and sound marks are off to the races.  Of course, sounds, like symbols and words, can be confused with one another, so challenges remain even if we sort through the legal issues.  But, as Nick March has said,  there is no turning back as “the power of sound to build emotional connections between consumers to brands has become evident. … The equity of an instantly recognizable – ideally catchy – sound that creates subconscious connections with a brand is immense. An aural identity can be used in myriad ways across TV, radio, and internet media. … While sound marks are still quite rare, we are likely to see – and hear – much more of them as the future unfolds.”

Listen up, as they say.

©2022 Epstein Becker & Green, P.C. All rights reserved.National Law Review, Volume XII, Number 276
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About this Author

James P. Flynn, Epstein Becker Green, Corporate Counseling Lawyer, complex commercial matters attorney,
General Counsel

JAMES P. FLYNN is a Member of the Firm in the Litigation and Labor and Employment practices. He serves as the General Counsel of Epstein Becker Green and the Managing Shareholder of the firm's Newark office, where he is based. His practice focuses on civil litigation and corporate counseling, including trial and appellate work in the area of intellectual property, complex commercial matters, and employment law. Mr. Flynn represents businesses in a broad spectrum of industries, including health care, pharmaceuticals, and financial services.

973-639-8285
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