09 Feb What Does Your Brand Sound Like?

Here at The Brand Protected®, we are fascinated by the legal ins and outs of nontraditional trademarks. We have written in the past about scent marks (Play Doh’s unique smell has a trademark) and signature color marks (yes to UPS brown but no to Louboutin’s red shoe sole). This week, we are covering sound marks, including jingles, sounds used in advertising, as well as sounds made during use of a product (think: Intel’s startup computer chimes or America Online’s “You’ve got mail”).

It is Possible to Trademark Sound 

Although rare, it is possible to trademark sounds that identify a business’ product or service. Unlike traditional trademarks, that represent a brand identity through words, images, or symbols, sound marks are characterized by musical notes and/or auditory tones, both with or without spoken words. You can check out some examples highlighted by the United States Patent and Trademark Office (USPTO), including the MGM roaring lion and the Looney Tunes theme song.

Establishing a Legal Standard for Sound Marks

The legal requirements to register sound marks are very different from traditional trademarks, and the case law is not as well established. According to the USPTO, “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.” So, let’s break that down: a sound mark, in the mind of the consumer, needs to

• Readily identify the product or service being sold
• Distinguish the source of the product or service from other companies
• Not have a utilitarian functionality

Identification

The identification element of a sound mark requires some consumer participation. The sound must be so distinctive that a consumer hears the sound and subliminally and readily associates it with the source of the good or service. Because sound marks rely on the reaction they create in a listener’s brain, they are not generally accessible to smaller or newer companies. They take a certain amount of exposure before the identification element is met.

Distinguishability 

Next, a sound mark must distinguish the source of a good or service as opposed to any other. For that reason, a sound mark must be substantially exclusive.

Functionality

We discussed the doctrine of functionality when we covered color marks. This legal requirement does not allow a company to register a trademark for a sound if that sound serves a utilitarian function. If a mark is found to have a function beyond identification of a particular company, it will likely not be able to enforce a sound mark. For example, Harley-Davidson tried to register the exhaust sound produced by V-twin, common crankpin motorcycle engines. Other engine producers opposed the mark, saying that the sound is simply that which is made by that type of engine. Harley-Davidson ended up abandoning its pursuit of that mark, so the issue of functionality wasn’t addressed in court.

Functional sounds include 1) sounds that are essential to the way the good or service is used, and 2) sounds that impact the cost of a good or service.

 Is a Sound Mark Right for Your Company? 

As mentioned above, protecting a sound mark is particularly difficult, especially for companies that are not widely known. However, all is not lost! Copyright might be a more appropriate intellectual property protection for sounds such as music, audio recordings, jingles, and others. Any sound can be copyrighted if it qualifies as an original work of creation. If your company’s sound marks have not yet reached the level where they create a subliminal reaction in consumers, reach out to The Brand Protected® to learn more about copyrighting your brand sounds. Click here to schedule an appointment!