Sound trademark
Encyclopedia
A sound trademark is a non-conventional
trademark
where sound
is used to perform the trademark function of uniquely identifying the commercial origin of products or services.
In recent times, sounds have been increasingly used as trademarks in the marketplace
. However, it has traditionally been difficult to protect sounds as trademarks through registration, as a sound was not considered to be a 'trademark'. This issue was addressed by the World Trade Organization
Agreement on Trade-Related Aspects of Intellectual Property Rights
, which broadened the legal definition of trademark to encompass "any sign...capable of distinguishing the goods or services of one undertaking from those of other undertakings" (article 15(1)).
Despite the recognition which must be accorded to sound trademarks in most countries, the graphical representation of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.
, sound trademarks are generally acceptable if they can be represented by musical notation. According to the Australian trademarks Office, an application for a sound trademark which cannot be graphically represented with musical notation must include the following requirements.
Other requirements are set out in the trademarks Office Manual of Practice and Procedure issued by IP Australia.
, Article 4 of Council Regulation (EC) No. 40-94 of 20 December 1993 ("signs of which a Community trademark may consist") relevantly states that any CTM may consist of "any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In Shield mark B.V. v Joost Kist (case C-283/01) the EcJ basically repeats the criteria from Sieckmann v German Patent Office (case C-273/00) that graphical representation, preferably means by images, lines or characters, and that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
This definition generally encompasses sound marks, and therefore an applicant for a CTM may use musical notation
to graphically represent their trademark. A piece of music
—a tune, or a ring tone on a telephone
, can they be easily registered as a trademark (provided, of course, that it meets the Community trademark tests for registrability and distinctiveness). While tunes are capable of registration, before 2005 noises were not. The sound of a dog
barking or the crash of surf
cannot be recorded in musical notation and sonagrams were not accepted by the OHIM trademark registry. A change in legislation occurred in 2005 so that now the Office accepts sonograms as a graphical representation of a trademark if they are accompanied by an MP3 sound file when filing a trademark electronically.
, the test for whether a sound can serve as a trademark "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".
This was the fairly strict test applied by the US Trademark Trial and Appeal Board
in the case of General Electric
Broadcasting Co., 199 USPQ
560, in relation to the timed toll of a ship
's bell clock.
More famously, Harley-Davidson
attempted to register as a trademark the distinctive "chug" of a Harley Davidson motorcycle
engine
. On 1 February 1994, the company filed its application 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". Nine of Harley Davidson's competitors filed oppositions against the application, arguing that cruiser-style motorcycles of various brands use the same crankpin V-twin engine which produces the same sound. After six years of litigation, with no end in sight, in early 2000, Harley Davidson withdrew their application.
Other companies have been more successful in registering their distinctive sounds: MGM and their lion's roar; the NBC chimes
; famous basketball team the Harlem Globetrotters
and their theme song "Sweet Georgia Brown
"; Intel and the three-second chord sequence used with the Pentium processor; THX
and its "Deep Note
"; Federal Signal Corporation and the sound of their "Q2B
" fire truck siren; AT&T
and the spoken letters "AT&T" accompanied by music; RKO with a combined moving image and sound mark depicting the RKO Pictures radio tower transmitting a Morse-code like signal; and 20th Century Fox
with the very famous fanfare composed by Alfred Newman
.
Non-conventional trademark
A non-conventional trademark, also known as a nontraditional trademark, is any new type of trademark which does not belong to a pre-existing, conventional category of trade mark, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of...
trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
where sound
Sound
Sound is a mechanical wave that is an oscillation of pressure transmitted through a solid, liquid, or gas, composed of frequencies within the range of hearing and of a level sufficiently strong to be heard, or the sensation stimulated in organs of hearing by such vibrations.-Propagation of...
is used to perform the trademark function of uniquely identifying the commercial origin of products or services.
In recent times, sounds have been increasingly used as trademarks in the marketplace
Marketplace
A marketplace is the space, actual, virtual or metaphorical, in which a market operates. The term is also used in a trademark law context to denote the actual consumer environment, ie. the 'real world' in which products and services are provided and consumed.-Marketplaces and street markets:A...
. However, it has traditionally been difficult to protect sounds as trademarks through registration, as a sound was not considered to be a 'trademark'. This issue was addressed by the World Trade Organization
World Trade Organization
The World Trade Organization is an organization that intends to supervise and liberalize international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade , which commenced in 1948...
Agreement on Trade-Related Aspects of Intellectual Property Rights
Agreement on Trade-Related Aspects of Intellectual Property Rights
The Agreement on Trade Related Aspects of Intellectual Property Rights is an international agreement administered by the World Trade Organization that sets down minimum standards for many forms of intellectual property regulation as applied to nationals of other WTO Members...
, which broadened the legal definition of trademark to encompass "any sign...capable of distinguishing the goods or services of one undertaking from those of other undertakings" (article 15(1)).
Despite the recognition which must be accorded to sound trademarks in most countries, the graphical representation of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.
Graphic representation
In AustraliaAustralia
Australia , officially the Commonwealth of Australia, is a country in the Southern Hemisphere comprising the mainland of the Australian continent, the island of Tasmania, and numerous smaller islands in the Indian and Pacific Oceans. It is the world's sixth-largest country by total area...
, sound trademarks are generally acceptable if they can be represented by musical notation. According to the Australian trademarks Office, an application for a sound trademark which cannot be graphically represented with musical notation must include the following requirements.
- a graphic representation of the mark (eg. "CLIP CLOP MOO");
- a clear and concise description of the trademark (examples are given below);
- The trademark is a sound mark. It comprises the sound of dogs barking to the traditional tune "Greensleeves" as rendered in the audio tape accompanying the application.
- The trademark consists of the sound of two steps taken by a cow on pavement, followed by the sound of a cow mooing (clip, clop, MOO) as rendered in the recording accompanying the application.
- The trademark consists of the sound of a soprano voice singing wordlessly to the tune represented in the musical score attached to the application. The trademark is demonstrated in the recording accompanying the application form.
- The trademark consists of a repeated rapid tapping sound made by a wooden stick tapping on a metal garbage can lid which gradually becomes louder over approximately 10 seconds duration. The sound is demonstrated in the recordings accompanying the application.
- a recording of the trademark which can be played back on media which is easily and commonly accessible.
Other requirements are set out in the trademarks Office Manual of Practice and Procedure issued by IP Australia.
European Union
In the European UnionEuropean Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
, Article 4 of Council Regulation (EC) No. 40-94 of 20 December 1993 ("signs of which a Community trademark may consist") relevantly states that any CTM may consist of "any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In Shield mark B.V. v Joost Kist (case C-283/01) the EcJ basically repeats the criteria from Sieckmann v German Patent Office (case C-273/00) that graphical representation, preferably means by images, lines or characters, and that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
This definition generally encompasses sound marks, and therefore an applicant for a CTM may use musical notation
Musical notation
Music notation or musical notation is any system that represents aurally perceived music, through the use of written symbols.-History:...
to graphically represent their trademark. A piece of music
Music
Music is an art form whose medium is sound and silence. Its common elements are pitch , rhythm , dynamics, and the sonic qualities of timbre and texture...
—a tune, or a ring tone on a telephone
Telephone
The telephone , colloquially referred to as a phone, is a telecommunications device that transmits and receives sounds, usually the human voice. Telephones are a point-to-point communication system whose most basic function is to allow two people separated by large distances to talk to each other...
, can they be easily registered as a trademark (provided, of course, that it meets the Community trademark tests for registrability and distinctiveness). While tunes are capable of registration, before 2005 noises were not. The sound of a dog
Dog
The domestic dog is a domesticated form of the gray wolf, a member of the Canidae family of the order Carnivora. The term is used for both feral and pet varieties. The dog may have been the first animal to be domesticated, and has been the most widely kept working, hunting, and companion animal in...
barking or the crash of surf
Breaking wave
In fluid dynamics, a breaking wave is a wave whose amplitude reaches a critical level at which some process can suddenly start to occur that causes large amounts of wave energy to be transformed into turbulent kinetic energy...
cannot be recorded in musical notation and sonagrams were not accepted by the OHIM trademark registry. A change in legislation occurred in 2005 so that now the Office accepts sonograms as a graphical representation of a trademark if they are accompanied by an MP3 sound file when filing a trademark electronically.
United States
In the United StatesUnited States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, the test for whether a sound can serve as a trademark "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".
This was the fairly strict test applied by the US Trademark Trial and Appeal Board
Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board is a body within the United States Patent and Trademark Office responsible for hearing and deciding certain kinds of cases involving trademarks. These include appeals from decisions by USPTO Examiners denying registration of marks, and opposition proceedings...
in the case of General Electric
General Electric
General Electric Company , or GE, is an American multinational conglomerate corporation incorporated in Schenectady, New York and headquartered in Fairfield, Connecticut, United States...
Broadcasting Co., 199 USPQ
United States Patents Quarterly
The United States Patents Quarterly is a United States legal reporter published by the Bureau of National Affairs in Washington, D.C. The USPQ covers intellectual property cases including patents, copyrights, trademarks, and trade secrets, from 1913 to the present.The USPQ reports case law from...
560, in relation to the timed toll of a ship
Ship
Since the end of the age of sail a ship has been any large buoyant marine vessel. Ships are generally distinguished from boats based on size and cargo or passenger capacity. Ships are used on lakes, seas, and rivers for a variety of activities, such as the transport of people or goods, fishing,...
's bell clock.
More famously, Harley-Davidson
Harley-Davidson
Harley-Davidson , often abbreviated H-D or Harley, is an American motorcycle manufacturer. Founded in Milwaukee, Wisconsin, during the first decade of the 20th century, it was one of two major American motorcycle manufacturers to survive the Great Depression...
attempted to register as a trademark the distinctive "chug" of a Harley Davidson motorcycle
Motorcycle
A motorcycle is a single-track, two-wheeled motor vehicle. Motorcycles vary considerably depending on the task for which they are designed, such as long distance travel, navigating congested urban traffic, cruising, sport and racing, or off-road conditions.Motorcycles are one of the most...
engine
Engine
An engine or motor is a machine designed to convert energy into useful mechanical motion. Heat engines, including internal combustion engines and external combustion engines burn a fuel to create heat which is then used to create motion...
. On 1 February 1994, the company filed its application with the following description: "The mark consists of the exhaust
Exhaust system
An exhaust system is usually tubing used to guide reaction exhaust gases away from a controlled combustion inside an engine or stove. The entire system conveys burnt gases from the engine and includes one or more exhaust pipes...
sound of applicant's motorcycles, produced by V-twin
V-twin
A V-twin engine is a two-cylinder internal combustion engine where the cylinders are arranged in a V configuration.- Crankshaft configuration :Most V-twin engines have a single crankpin, which is shared by both connecting rods...
, common crankpin motorcycle engines when the goods are in use". Nine of Harley Davidson's competitors filed oppositions against the application, arguing that cruiser-style motorcycles of various brands use the same crankpin V-twin engine which produces the same sound. After six years of litigation, with no end in sight, in early 2000, Harley Davidson withdrew their application.
Other companies have been more successful in registering their distinctive sounds: MGM and their lion's roar; the NBC chimes
NBC chimes
The NBC chimes, named for the radio and television network on which they have been used, consists of a succession of three distinct pitches: G3, E4, and C4 , sounded in that order, creating an arpeggiated C-major chord in the second inversion, within about two seconds time, and reverberating for...
; famous basketball team the Harlem Globetrotters
Harlem Globetrotters
The Harlem Globetrotters are an exhibition basketball team that combines athleticism, theater and comedy. The executive offices for the team are currently in downtown Phoenix, Arizona; the team is owned by Shamrock Holdings, which oversees the various investments of the Roy E. Disney family.Over...
and their theme song "Sweet Georgia Brown
Sweet Georgia Brown
"Sweet Georgia Brown" is a jazz standard and pop tune written in 1925 by Ben Bernie and Maceo Pinkard and Kenneth Casey .The tune was first recorded on March 19, 1925 by bandleader Ben Bernie, resulting in a five-week No. 1 for Ben Bernie and his Hotel Roosevelt Orchestra...
"; Intel and the three-second chord sequence used with the Pentium processor; THX
THX
THX is a trade name of a high-fidelity audio/visual reproduction standard for movie theaters, screening rooms, home theaters, computer speakers, gaming consoles, and car audio systems. The current THX was created in 2001 when it spun off from Lucasfilm Ltd...
and its "Deep Note
Deep Note
Deep Note is the name of THX's audio logo, a distinctive synthesized crescendo sound. It was created by Dr. James A. Moorer, then an employee of the Lucasfilm Computer Division, in 1983...
"; Federal Signal Corporation and the sound of their "Q2B
Q2B
The Q2B siren is an electromechanical siren that has one of the most noticeable sounds in the world. The Q2B or "Q-siren" is famous for its sound, which is trademarked, and the look of the siren...
" fire truck siren; AT&T
AT&T
AT&T Inc. is an American multinational telecommunications corporation headquartered in Whitacre Tower, Dallas, Texas, United States. It is the largest provider of mobile telephony and fixed telephony in the United States, and is also a provider of broadband and subscription television services...
and the spoken letters "AT&T" accompanied by music; RKO with a combined moving image and sound mark depicting the RKO Pictures radio tower transmitting a Morse-code like signal; and 20th Century Fox
20th Century Fox
Twentieth Century Fox Film Corporation — also known as 20th Century Fox, or simply 20th or Fox — is one of the six major American film studios...
with the very famous fanfare composed by Alfred Newman
Alfred Newman
Alfred Newman was an American composer, arranger, and conductor of music for films.In a career which spanned over forty years, Newman composed music for over two hundred films. He was one of the most respected film score composers of his time, and is today regarded as one of the greatest...
.
Further reading
- "A Quacking Kazoo Sets Off a Squabble" article by Jesse McKinley in The New York TimesThe New York TimesThe New York Times is an American daily newspaper founded and continuously published in New York City since 1851. The New York Times has won 106 Pulitzer Prizes, the most of any news organization...
June 2, 2009
External links
- A listing of sound trademarks with audio files at the United States Patent and Trademark OfficeUnited States Patent and Trademark OfficeThe United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
website - The Non-Traditional Trade Mark Archives
- The fresh version of Non-Traditional Trade Mark Archives under publications
- Article on the registration of sound trademarks in the European Union