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Non-Traditional Marks: Sound Presentation


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  • 1. Non-Traditional Marks: Sound What happened to Harley Davidson’s Sound Mark C. Fred Charpie, III MST October 27, 2009
  • 2. Sound Marks
    • Background
    • Sounds (and scents) can be trademarked
    • (37 CFR 2.52(e))
    • First Registered Sound Mark
    • NBC Chimes (reg. April, 1950)
    • Other Examples:
    • Pillsbury Dough Boy (Reg. 2,692,077 reg. March, 2003)
    • Aflac Duck (Reg. 2,607,415 reg. August, 2002)
    • America On-line (Reg. 2,821,863 reg. March, 2004)
    • New York Stock Exchange (Reg. 2,741,129 reg. July, 2003)
    • Aamco Transmission (Reg. 2,142,232 reg. March, 1998)
  • 3. Sound Marks
    • What is a sound mark ?
    • A sound mark identifies and distinguishes a product or service through audio rather than visual means
    • (TMEP 1202.15)
    • Sound mark specimens include:
    • A series of tones or musical notes, with or without words, simple declaratory phrases and
    • Wording accompanied by music
    • Form: audio cassettes, CDs or wav. files
    • (TMEP 1202.15)
  • 4. Sound Marks
    • Sound Mark Limitations:
    • Sound marks depend on an aural perception which may be “fleeting” … not on a visual and lasting impression as in an average trademark
    • Therefore: different criteria for registration
    • Must distinguish between unique, different and distinctive sounds and “commonplace” sounds or those sounds to which listeners have been exposed under different circumstances
    • Sounds cannot be functional
  • 5. Sound Marks TTAB Distinctiveness Sound Spectrum: Unique, different or inherently distinctive Commonplace – requires proof of secondary meaning or acquired distinctiveness* Sound * Consumer testimony, surveys, extensive sales, advertising and/or promotional activities
  • 6. Sound Marks
    • Harley Davidson:
    • Filed sound mark application for V-twin engine
    • 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.”
    • syncopated “potato-potato-potato”
    • Two Specimens were Provided:
      • V-twin engine with stock exhaust pipes
      • V-twin engine with after market exhaust pipes
  • 7. Sound Marks Harley Davidson – Sound Mark timeline: 1994 1995 1996 1997 1998 1999 2000 2001 Feb, ’94 App. filed July, ’94 Examiner Assigned Jan, ’95 Approved for Publication April, ’95 Published Jun-Nov, ’95 (9) Oppositions Instituted
  • 8. Sound Marks
    • Harley Davidson – Oppositions by:
    • Nostalgia Motorcycle Co., Inc.
    • Yamaha
    • Custom Chrome, Inc.
    • Polaris Industries, Inc.
    • Kawasaki Motors Corp. USA
    • Suzuki Motor Corporation
    • Mid-USA Cycle Parts, Inc.
    • S & S Cycle, Inc.
    • Honda Motor Co. Ltd.
  • 9. Sound Marks Opposition Arguments: “ Yamaha has been building V-twin engines since the early 80’s, and there’s no difference between the sound their engine makes and the sound our engine makes … All V-twins, by their nature, have two pistons. The pistons go up and down, and they all sound the same .” Yamaha “ The sound does not identify and distinguish Harley’s motorcycle from others or indicate the source of the motorcycles … It’s very difficult to imagine a world where the sound of a running engine is an exclusive property right.” Honda Motor Company
  • 10. Sound Marks More Opposition Arguments: “ Applicant’s exhaust sound so varies in its characteristics, depending upon exhaust pipes used, operating characteristics and mode of use, idle, acceleration, etc. that it is incapable of specific definition … The existing description is so indefinite as to encompass more than one sound mark.” Suzuki Motor Corporation “ The application is not limited to one mark as required by law … it would be as if applicant were seeking both light blue and dark blue colors through one application” Kawasaki Motor Corporation
  • 11. Sound Marks Harley Davidson’s position: “ Harley-Davidson has been in existence since 1903, and the exhaust sound has become identified with our motorcycle. It’s a distinctive brand identifier all on its own … you know a Harley when you hear one.” Harley Davidson
  • 12. Sound Marks Harley Davidson – Sound Mark timeline: 1994 1995 1996 1997 1998 1999 2000 2001 Feb,’94 App. filed July,’94 Examiner Assigned Jan,’95 App’d for Pub. April,’95 Published Jun-Nov,’95 (9) Oppositions Instituted Nov,’95 – Mar,’97 S/J Motions (TTAB) Mar,’97 (9) S/J’s Denied Motions to Consolidate and Trial Preparation June,’00 H-D abandons Application
  • 13. Sound Marks
    • Harley Davidson – Sound Mark Resolved:
    • Harley Davidson expressly abandoned the sound mark application June, 2000
    • “ Dropping the application is a practical business decision … more than six years have passed since we filed our application and there is still no end in sight. The process of registering this trademark has become more of an issue than the uniqueness of our sound, and frankly, we're tired of throwing tens of thousands of dollars out the window on litigation." Harley Davidson
  • 14. Sound Marks
    • Conclusion
    • Sound can be trademarked
    • If sound marks are not inherently distinctive, then must prove secondary meaning
    • Proving secondary meaning can be difficult, expensive and time consuming