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Feb
01

Is That A Trademark I Hear? TTAB Addresses Issues Raised By Sound Trademarks In Recent Case: In Re Powermat Inc.

While not common, sound trademarks have been registered in the United States on the Principal Register for over fifty years.  The United States Patent and Trademark Office (USPTO) website provides examples of sound trademark registrations at : http://www.uspto.gov/trademarks/soundmarks/index.jsp .  However, as the TTAB points out in the recent case In Re Powermat, (a copy which can be found at   http://e-foia.uspto.gov/Foia/ReterivePdf?system=TTABIS&flNm=77715052-01-17-2013 ) not all sounds can be registered and the successful prosecution of sound trademark applications presents its own challenges.

The Powermat case involves two applications for sound trademarks as applied to battery chargers. The applicant in Powermat described the trademark in application Serial No. 77715011 as “ The mark consists of five short electronic chirps, lasting less than half a second, with each chirp increasing slightly in pitch from the previous chirp,” and the trademark in Serial No. 77715052 as “the mark consists of five short electronic chirps, lasting less than a half second, with each chirp decreasing slightly in pitch from the previous chirp.”

The Applicant argued that its sound trademarks should be entitled to registration on the Principal Register because the sounds are inherently distinctive and function as trademarks. Applicant asserted that it “created the sound to be a unique and fanciful source identifier and not the mere byproduct of the operation or function of the goods. The six (sic) note ascending note pattern in the key of C was developed under contract by a professional composer for Applicant to create a sound pattern that would act as a distinctive source identifier. The composer created over twenty (20) unique sound patterns that were submitted by Applicant for consumer testing and approval prior to adoption by Applicant and was selected as a result of consumer testing.” The TTAB held that regardless of the fact that Applicant specifically developed the sound to be distinctive, the case falls within previous precedent set by In re Vertex LLC, 89 USPQ2d 1694 (TTAB 2009) holding that “sounds emitted in the course of a product’s ordinary function can never be inherently distinctive and can only be registered on a showing of secondary meaning.”

In the past the TTAB has found that sound trademarks can be categorized as inherently distinctive or noninherently distinctive. It has found that “unique, different or distinctive sounds” sounds do not need proof of secondary meaning but that sounds that resemble or imitate commonplace sounds need evidence of secondary meaning to prove they have become distinctive and identified with a single source.  Furthermore, the TTAB has found that for goods that make a sound in the normal course of operation, such as alarm clocks, appliances with audible alerts (e.g., microwaves and clothes washer “beeps”), mobile telephones, cell phones rings and emergency alarms (e.g., smoke alarms, structure security alarms and personal alarms), that these sounds are not inherently distinctive and that registration can only be achieved with proof of secondary meaning under Lanham Act § 2(f). In the case of Powermat, the TTAB found that Applicant’s goods, i.e., battery chargers,  emit sounds in the ordinary course of operation and so the sounds are not inherently distinctive and cannot be registered without a showing of acquired distinctiveness.

In addition to the refusal on substantive grounds, the Applicant also faced procedural problems. In requests for reconsideration Applicant provided hyperlinks to its commercials on YouTube for the purpose of demonstrating the “distinctive nature of the sounds and the related consumer awareness and focus of the sounds as source identifiers.” The TTAB reiterated its previous decision that providing hyperlinks to Internet materials is insufficient to make such materials of record. The reasoning behind this policy is the transitory nature of Internet postings as websites referenced only by links may later be modified or deleted. The TTAB pointed to TMEP § 710.01(b) requiring that printouts of Internet materials need to include the URL and date on their face, or some other manner of verification. Of course, Applicant’s intent in submitting the materials had been for the Examiner to click on the hyperlink and to view the YouTube commercials themselves. The TTAB found that to support its arguments with commercials Applicant should have provided a CD, DVD, or videotape or that the Applicant could have submitted the material to TEAS@uspto.gov as email attachments as provided under TMEP §§ 807.09 and 904.03(f).

The teachings of Powermat are that sound trademarks for products that emit sounds in the ordinary course of operation are not inherently distinctive and cannot be registered without a showing of acquired distinctiveness. Also, when submitting Internet evidence to support arguments Applicants should not rely on hyperlinks but should adhere to the TMEP rules on submitting evidence.

About the author

Teresa H. Anzalone

Teresa is a Trademark Attorney with an MBA. She recently left the corporate world to join the law firm Symbus Law Group, LLC. Teresa is licensed to practice law in Pennsylvania. She directs the Pennsylvania office which is located in Gulph Mills, Montgomery County, Pa.