Can you trademark a sound in the United States?

Can you trademark a sound in the United States?

The purpose of a trademark is to help consumers distinguish between products from different companies.  The traditional definition of a trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of a product of one party from products made by other parties.  Visual trademarks used to the only types of trademarks that could be protected, but in recent history sounds have been recognized as trademarks which can be registered with the United States Patent and Trademark Office.

It is important to remember that using a trademark in commerce is the key to gaining rights to a trademark.  Registering a trademark is not necessary to use a trademark, but registering a trademark grants the owner of the trademark additional rights.

The first instance in the United States of a sound being granted the right to be registered as a trademark is In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978).  In that case, General Electric wanted to register three musical notes that were played regularly on television show produced by the National Broadcasting Corporation, a General Electric subsidiary.  The Trademark Trial and Appeal Board, allowed General Electric to register the three musical notes as a sound trademark.  The Trademark Trial and Appeal Board found that sounds can function as trademarks in situations where the sound assumes a definitive shape or arrangement and are used in a manner that creates an association of the sound with a product in the mind of a person that hears the sound.

Registering a sound for a trademark is similar to registering a visual trademark, with some differences:

  1. The trademark application must indicate that the application is for a sound mark.
  2. A digital recording of the sound mark must be submitted with the application.
  3. A detailed written description of the sound must be submitted with the application.  For instance, if the sound trademark is a series of musical notes, those notes should be written out.
  4. A specimen of the sound trademark being used with the products should be submitted with the application.  For instance, if the sound trademark is for a movie production company, examples of the sound trademark being played before the movie begins should be included.

The typical rules which would disqualify a visual trademark from being registered also apply to sound trademarks.  Commonplace sounds cannot be registered as trademarks.   Only sound trademarks that are arbitrary, unique or distinctive may be registered.  If a sound is functional it cannot be registered as a trademark. The Trademark Trial and Appeal Board defined what a functional sound is In re Vertex Grp. LLC, 89 USPQ2d 1694, 1702-03 (TTAB 2009), a sound mark is functional if: (1) it is essential to the use or purpose of the goods or services; or (2) if it 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.  If a sound is part of the normal operation of a device, The United States Patent and Trademark Office requires prof that a sound has become a distinctive of a particular product through substantially exclusive and continuous use, usually for at least five years before the claim of distinctiveness is made.

If you are thinking about registering a sound trademark it is best to consult with an experienced trademark attorney to guide you through the process.

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