What do you think of when you hear this lion’s roar?
How about these five notes?
Or these words?
Trademarks are not limited to words and designs, but can include “sensory” marks such as colors, smells and sounds. All of the above sounds are examples of trademarks: the lion’s roar is a registered trademark owned by Metro-Goldwyn-Mayer Lion Corp. for motion pictures and entertainment services, and heard at the start of MGM movies; the five notes are a registered trademark owned by Intel Corporation for computer hardware and operating system software; and the spoken words “You’ve Got Mail” is AOL’s registered trademark for providing access to a computer network.
The United States Patent and Trademark Office (USPTO) recognizes sounds as trademarks if the sounds “function as source indicators” and “create in the hearer’s mind an association of the sound with a good or service.” TMEP § 1202.15, citing In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978). Therefore, if a sound makes you think of a company’s product or service, it is eligible for trademark registration with the United States and other countries. The first registration for a sound mark in the United States was issued in 1947 to the National Broadcasting Company (NBC) for the musical notes G, E, C played on chimes for radio broadcast services. Subsequently, NBC obtained a registration for the familiar “3 chime like notes” for broadcasting services in 1971.
As demonstrated by the examples above, almost any sound can function as a trademark – a series of musical notes, animal sounds or spoken words with or without music. THX LTD. registered a sound mark that is played in movie theaters when its logo is displayed, which is described as “30 voices over seven measures”
The music artist Pitbull recently registered his signature yell used in his music, described in the registration as “a man yelling ‘EEEEEEEYOOOOOO’ in falsetto with ‘E’ drawn out followed by a ‘U’ sound.”
Common place sounds, however, can be registered only on a showing of acquired distinctiveness. For example, the USPTO refused to register marks comprising “five short electronic chirps” for battery chargers.
The USPTO found that the electronic chirps were not inherently distinctive, and therefore they failed to function as a trademark. In re Powermat Inc., 105 USPQ2d 1789 (TTAB 2013). Likewise, sounds made by alarm clocks, appliances that include audible alarms or signals, telephones, and personal security alarms are all considered to be common place sounds by the USPTO. TMEP § 1202.15. In contrast, the USPTO found that Zippo Manufacturing Company proved its familiar sound of a Zippo lighter opening, igniting, and closing had acquired distinctiveness.
Zippo proved its sound mark had acquired distinctiveness through evidence regarding its extensive advertising and sales of lighters, including unit sales numbers, sales revenue, and amount spent on advertising. Furthermore, the USPTO will not register a sound mark that is “functional,” defined as when the sound (1) is essential to the use or purpose of the goods or services; or (2) affects the cost or quality of the goods or services, such that the exclusive right to use the sound would put competitors at a disadvantage. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1702-03 (TTAB 2009). A trademark examiner’s refusal to register a sound mark comprising “a series of three, regularly spaced, repeated clicks, wherein the clicks resemble the sound of a small object striking another metal object” for eye glasses was reversed because the clicks made by the eyeglass hinges were not “essential” to making a resistance hinge, and therefore were not functional. The sound mark was therefore allowed to register on the Supplemental register. Registration No. 4401841: Sound Marks