Sounds That Sell
According to 15 U.S.C. § 1127, a trademark is “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” While we are all familiar with word trademarks and their associated logos, for companies such as Ford®, Coca-Cola®, or Nike®, a less traditional style of trademark, sound or aural marks, are increasingly being used by businesses to remind consumers of the goods or services they provide. If you hear a very distinctive lion roar, you are immediately reminded of the Metro-Goldwyn-Mayer, or MGM for short, lion. Just like words or pictures, the sound of that lion has become uniquely associated with the goods or services offered by MGM. U.S. Trademark Registration No. 1,395,550 for the roar was registered on June 3, 1986 and covers “motion picture films and prerecorded video tapes” in Class 9 and “entertainment services namely, production and distribution of motion pictures and providing film and tape entertainment for viewing through the media of television, cinema and other media” in Class 41. Some other popular sound trademarks are: * the NBC chimes * the Twentieth Century Fox fanfare * the Anheuser-Busch howling wolf * the General Mills “Ho, Ho, Ho, Green Giant” sound * the Pillsbury Doughboy giggle * the American Family Life Assurance Company duck quacking the word “AFLAC” The United States Patent and Trademark Office (USPTO) provides a sampling of these and other sound marks at http://www.uspto.gov/trademarks/soundmarks/index.jsp. For fun, play some of these registered trademarks for a friend and see if they can correctly identify the products with which they are associated. While the use of sound for marketing, also called sound branding, has risen, sound trademarks are difficult to register. As evidence, there are presently only several hundred sound related trademarks registered by the USPTO. Sounds were not originally eligible for trademark protection, but over time, the types of source indicators that could be used as trademarks has grown to include nonconventional ones such as colors, sounds, and three-dimensional shapes. The World Trade Organization, the organization in charge of supervising international trade, formally expanded the legal definition of the trademark to include "any sign...capable of distinguishing the goods or services of one undertaking from those of other undertaking" (Article 15(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights). This change opened the door to many new styles worldwide. One reason it is so difficult to register a sound mark is that the sound must overcome a fairly high standard to be considered. The Trademark Trial and Appeal Board (TTAB) applied the test: "depends on [the] 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 struck". In re General Electric Broadcasting Co., 199 USPQ 560, 563 (T.T.A.B. 1978). Additionally, the trademark application for the sound mark must include, along with the audio sample, a written representation of the sound, which can be extremely difficult to provide. For example, Harley Davidson attempted for six years to register its famous engine sound with the following description, “the mark consists of the exhaust sound of applicant's motorcycles, produced by V-twin, common crankpin motorcycle engines when the goods are in use.” Unable to persuade the TTAB that this sound was unique from the nine competitors who filed oppositions and who used the same or similar engines, Harley Davidson withdrew its application in 2000. It is a bit easier when the sound mark can be represented with distinct musical notes. For example, the NBC chime is registered under the following description, “the mark comprises a sequence of chime-like musical notes which are in the key of c and sound the notes 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.” If copyrights are traditionally associated with the protection of sound related creations, like jingles, why do businesses feel the need to turn towards trademark protection as well? There are several reasons. First, if the specific purpose of the sound is to remind consumers of goods or services, then trademark protection, by definition, is appropriate. Second, while the copyright period of protection is quite long, a trademark can last indefinitely as long as it is continually used to identify the goods or services. Finally, and possibly most importantly, the infringement bar for copyrights is higher than it is for trademarks. "Substantial similarity" of copyrighted material is required for infringement, while "confusing similarity” is the lower standard used for trademark infringement. Sometimes, the sound itself is not eligible for copyright protection, like the MGM lion’s roar for example, but a business can take a somewhat familiar sound and so closely link that sound with its goods that it can be used as a trademark. Let’s take another example. The song “Sweet Georgia Brown” has copyright protection for its lyrics, its tune, and for several recording versions. The Harlem Globetrotters, however, have applied for and were granted trademark protection for the use of one particular version of that song in association with the services they provide: “entertainment services in the nature of basketball exhibitions” in Class 041. You can see how protecting the use of that rendition of the song from other related services would be beneficial. Sound trademarks are certainly an interesting type of intellectual property, as are other unique marks like shapes, colors, tastes, and textures. As sound branding and other new forms of marketing become more popular through advanced technology, the number of sound and other non-conventional trademark applications may continue to rise.