By Zachary Wadlé

Most people are familiar with the concept of trademarks in the form of logos or words.  But intellectual property can also be embodied in sounds not represented by words and drawings, but rather musical notes and/or auditory tones.  While sound marks are not nearly as common as word marks, many sound marks are immediately recognizable, including Southwest Airline’s “Ding!,” MGM’s roaring lion, AOL’s “You’ve got mail,” the Pillsbury Doughboy’s giggle, NBC’s chimes, Nokia’s default cell phone ringtone, and the Harlem Globetrotter’s theme song.  However, the legal requirements to register such sound marks are different than word marks, and much less well-defined by the courts.

According to United States Patent and Trademark Office trademark examination protocol: “A sound mark identifies and distinguishes a product or service through audio rather than visual means.  Examples of sound marks include: (1) a series of tones or musical notes, with or without words, and (2) wording accompanied by music.” As one court described the standard applicable to sound marks: “A sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it is struck.” In re General Electric Broadcasting Co., 199 U.S.P.Q. 560, 562-63 (T.T.A.B. 1978). 

In sum, if a sound can be readily associated with the source of a product or service in the minds of consumers, it can potentially serve as a trademark.  Therefore, to be protected, sound marks must be a distinctive source identifier – as in, when you hear the DING!, you know it’s Southwest Airlines. But a different spectrum of distinctiveness than that applied to traditional word marks is followed in the case of sound marks. The U.S. Trademark Trial and Appeal Board (TTAB) has defined the spectrum as the distinction between “unique, different, or distinctive” sounds on the one hand and “commonplace” sounds on the other hand. Unfortunately, no further explanation of this distinction has been made by the courts. The most that can be said is the former are inherently distinctive and thus do not require secondary meaning, while the latter require secondary meaning to demonstrate distinctiveness. Secondary meaning for sounds has been described as whether consumers “recognize and associate the sound with the offered services . . .exclusively with a single, albeit anonymous, source.” In re General Electric Broadcasting Co. at 563.

Presuming that an applicant for a sound mark can demonstrate distinctiveness, often times the applicant must then address a registration refusal based on the doctrine of functionality.  In the case of sound marks, the functionality doctrine primarily comprises “utilitarian functionality” which can defeat a mark containing a product feature that “is essential to the use or purpose of the article or . . . affects the cost or quality of the article.” Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, n.10 (1982).

Harley-Davidson dealt with the functionality hurdle when it applied to register “the exhaust sound of applicant’s motorcycles, produced by V-twin, common crankpin motorcycle engines when the goods are in use,” and was opposed by several other competing motorcycle companies. See Kawasaki Motors Corp. v. H-D Michigan, Inc., 43 U.S.P.Q.2d 1521 (T.T.A.B. 1997); Honda Giken ogyo Kabushiki Kaisha v. H-D Michigan Inc., 43 U.S.P.Q.2d 1526 (T.T.A.B. 1997). The opposing parties argued that the exhaust sound proposed to be trademarked by Harley was purely functional because it merely the sound produced by any engine of that type. Ultimately, the question of whether the Harley exhaust sound was functional was never decided because Harley abandoned its trademark application in the face of substantial opposition. Regardless, the issue of functionality is an important issue to consider when contemplating a sound mark. There are many products and services that create a unique sound that consumers recognize as an indication of unique source. The question then becomes how functional is that sound when produced. If the sound is merely functional, registration of the mark may be difficult.

In today’s business environment, considerable money is spent so that products and services can not only be seen, but also “heard” by consumers. If you have associated your business with a unique, non-functional sound, it may be worth registering your sound mark to ensure that the sound of your business remains your own.