Using Sound as a Trademark

A trademark is a device which can take almost any form, as long as it is
capable of identifying and distinguishing specific goods or services. A
trademark may be a word, name, symbol, or device which is used in trade with
goods to indicate the source of the goods and to distinguish them from the
goods of others. A sound may also be a trademark or a service mark, rather than visual images or words. To qualify as a trade or service mark, the sound must function as a source
identifier for the goods and/or services. Sound marks may even be
superior to word marks among certain audiences, since the mark is perceived
aurally rather than visually. New technology is providing increased
opportunities for trademark owners to use sound marks

Examples of Registered Sound Marks

Sound marks may be entertaining, clever, and informative. Also, sound marks may become famous. The Tarzan Yell, the Merrie Melodies Theme, the sound of a finger swiping a dish and the spoken word “boing” are all registered sound marks in various jurisdictions.

Registration of Sound Marks

The U.S. Patent and Trademark Office (USPTO) began registering unconventional sound marks more than 50 years ago. In 1950, the National Broadcasting Company (NBC) obtained a sound mark for radio broadcast services. The mark subsequently expired, and in 1971, NBC obtained a sound mark for “3 chime like notes” to identify broadcasting services. The mark is used between television shows to identify the station. Although sound mark registration is not available globally, international branding for companies such as Deutsch Telekom, Nokia, Yahoo! and Intel include registration of sound marks in multiple jurisdictions.

Filing Sound Mark Applications

Where available, the sound mark application process is the same as for traditional trademarks and service marks. In the United States, sound mark applications must undergo the usual substantive examination process. The drawing requirement, however, is waived and a description of the mark is required in its place. Applications to register sound marks may be filed on an intent-to-use basis. The applications are published for opposition and specimens must be reviewed and accepted prior to the issuance of a registration certificate.

Searching Sound Marks

When searching sound marks, it is important to interpret the terminology that the registry uses to label its unconventional marks. The USPTO uses mark drawing code “6” to uniformly label sound marks in the database. The “6” indicates that there is no drawing of the mark because the mark is not perceived visually. Other useful search terms for sound marks are likely to be found in the mark descriptions. A sound mark within a registry may contain an aural element that is not disclosed in the title of the mark but is important to the search result.

Protection in the Global Marketplace

There is no uniformity regarding protection of trademarks consisting of sounds in the global marketplace even though trademarks consisting of sounds have existed for many years. The United States has long recognized sound marks. Although certain sound marks may not be considered inherently distinctive, they may be registrable upon proof of secondary meaning. There is no uniform protection on the international level. Even if permitted by statute, registration of sound marks may be frustrated by the practical difficulties of sufficiently describing such marks to satisfy local Trademark Offices. In view of the inconsistency in protection for sound marks, trademark owners with multinational interests must be wary of adopting such marks, since they will be difficult, if not impossible, to register at foreign trademark offices or protect in the courts of many jurisdictions.

Trade-Related Aspects of Intellectual Property Rights

The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) requires a uniformity among members as to the extent of intellectual property protection, which extends to protection of sounds that operate as trade marks, but the way in which these provisions are interpreted from jurisdiction to jurisdiction is not uniform.

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