Legally Speaking: Sounds Like � A Trademark

John G. Browning Sep. 2, 2009, 4:59pm

As someone who has helped individuals and companies with obtaining and protecting trademarks (everything from event slogans to artful renderings of a restaurant chain's logos), I have a healthy appreciation for the legal importance of protecting the things that consumers see and associate with someone's business.

If you see those familiar Golden Arches, you know it stands for McDonalds, just as when you view the picture of the Pillsbury Doughboy on the label, you realize it's not the same as "Brand X" biscuits.

But what about when the trademark that distinguishes a product or service isn't something you can see at all, but rather something you hear?

As it turns out, sounds are just as capable of being protected by trademark law as words and pictures are. The U.S. Patent and Trademark Office (USPTO) and U.S. law realize what most of us as consumers already do – that sounds can also perform the function of uniquely identifying the commercial origin of goods or services.

While sounds weren't always afforded the same types of legal protection as other trademarks, and while it is still more difficult to protect a sound as a trademark, in recent years sounds have been used more often than ever to describe the products or services that someone provides.

Under U.S. trademark law, the test for whether a sound can be a trademark "depends on (the) aural perception of the listener." While it may be "as fleeting as the sound itself," the sound should still be "so inherently different or distinctive that it attaches to the subliminal mind of the listener" and is "associated with the source or event with which it struck."

Have you seen an NBC commercial lately and heard the chimes doing the network's musical notes? They're trademarked.

If you've been to the movies, and heard the MGM lion's roar, or the THX "Deep Note" for its sound system before the movie starts, then what you've heard are both trademarks.

In fact, if you checked the movie times and heard "Hello and Welcome to Moviefone," then you've listened to a trademark owned by AOL.

The movie theater is where you'll hear other sound trademarks, too. 20th Century Fox with its very famous fanfare (courtesy of composer Alfred Newman) that opens a movie is a trademark, as is the "Looney Toons" theme song – one of Time Warner's protected marks.

Technology companies have also gotten in on the act: Intel's five note ding/3 second chord sequence used with the Pentium processor, the spoken letters "AT&T" with a music background, "Yahoo!" sung in a yodeling style to denote the search engine company, and Nokia's default ringtone have all been given trademark protection.

In a way, it makes sense that the entertainment world provides us with trademarked sounds, since our experience as consumers is not just visual but aural as well.

Whether you're listening to Homer Simpson say "D'Oh" or hearing the Harlem Globetrotters famous theme song "Sweet Georgia Brown" (both trademarks, by the way), you're experiencing something that is distinctive to those forms of entertainment.

However, products we see in our everyday lives and the sounds with which they're identified are just as likely to merit the protection of trademark laws. The Pillsbury Doughboy's unique giggle (produced when Pop'n Fresh is poked in the stomach) is a trademark. So is the crowd sound and bell from the trading floor of the New York Stock Exchange.

Unfortunately, sometimes distinctiveness is not enough for the USPTO. In 1994, Harley-Davidson attempted to register as a trademark the very distinctive revving sound of it V-twin engine (what some would describe as sounding like "potato-potato-potato").

According to the application, 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."

But even one of the most recognized brands in America has its detractors. Nine of Harley-Davidson's competitors opposed the registration, arguing that various brands of cruiser-style motorcycles used the same engine and produced the same sound.

After years of litigation and an unfavorable decision by the Trademark Trial and Appeal Board, Harley-Davidson ultimately withdrew its application in early 2000. Sorry, Hog lovers.

Harley notwithstanding, about 300 sound trademarks have made it through the sometimes arduous process of being recognized by the USPTO (only about 150 of which are still active) – and not all of them are that well-known.

But for even the smaller holders of sound trademarks, they're no less important for business. Bay Quackers, a San Francisco-based tour company that uses open-air amphibious vehicles (known as "ducks," like the World War II-vintage military craft) to roam the streets of San Francisco on sightseeing jaunts before cruising into the bay itself. Passengers on the vehicles use a kazoo-like device to quack at passersby.

In May, Bay Quackers was sued by rival Ride the Ducks, a Norcross, Ga.-based tour operator that runs amphibious tours in several cities, including San Francisco, Philadelphia, Baltimore and Branson, Mo.

Ride the Ducks says it has a sound trademark on the "quack" made by a yellow bill-shaped kazoo (known as a "Wacky Quacker"), and that Bay Quacker has violated this mark by using a kazoo that makes an identical quack.

According to Bob Salmon, Ride the Ducks' V.P. for Marketing & Sales, "If you blew theirs and ours, you wouldn't hear any difference. It's a very important part of a product. We're very interactive with people on the street, and the way that we interact is using our Wacky Quackers."

The suit seeks not only an injunction on the use of the kazoos, but the destruction of "all noisemakers and other implements" that produce quacks on the Bay Quackers tours.

While John Scannell, owner of Bay Quackers, accuses Ride the Ducks of trying to shut down his business, Mr. Salmon denies having any problem with even direct competition, just "a problem with them infringing on our trademark."

To paraphrase the old saying, if it looks like a duck, walks like a duck, and quacks like a duck, then it must be… grounds for a lawsuit.

John Browning is a partner in the Dallas office of Gordon & Rees, LLP. He may be contacted at:

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