Behind the Jingles: Legal Strategies to Protect Sound Trademarks
John S. Miranda | November 01, 2021
Some of the world’s best-known trademarks are not logos, slogans, or brand names. Homer Simpson’s famous “D’OH!” The three chimes that often accompany NBC’s logo. THX’s iconic “deep note”. All of these brief but undeniably distinctive brand identifiers are registered as “sound marks” with the U.S. Patent & Trademark Office (USPTO).1 So what comprises a sound mark? Sound marks do not have to be jingles or theme songs, though many sound marks are musical in nature. They can also include verbal slogans and distinctive product sounds, along with an endless variety of sound effects and noises which consumers may associate with a particular brand. So, what types of sound marks are out there, and how can one obtain a sound mark?
Original music compositions and recordings are generally eligible for copyright protection. However, very short compositions, such as NBC’s recognizable chime sequence, may not be eligible for copyright registration or protection due to the brief nature of the work. Accordingly, when such brief compositions become known as the calling card of a brand, they may be eligible for protection under trademark law. The NBC chimes sequence actually became the first “purely audible” service mark to register with the USPTO in 1950.2 That being said, full songs and longer jingles can be sound marks, in addition to being eligible for copyright protection, as long as they are used as source identifiers in connection with a particular brand. For example, the version of “Sweet Georgia Brown” which serves as the recognizable theme of the Harlem Globetrotters, is a registered sound mark.3
The USPTO’s regulatory guidelines for the examination and registration of sound marks are set forth in Section 1202.15 of the Trademark Manual of Examining Procedure (“TMEP”).4 Specifically, the TMEP states that, in order to function as a source indicator, a sound mark must “assume a definitive shape or arrangement” and “create in the hearer’s mind an association of the sound” with the underlying goods or services. The TMEP lists “a series of tones or musical notes” and “wording accompanied by music” as two examples of potentially registrable forms of sound marks. This same TMEP provision establishes that, like other types of trademarks and service marks, sound marks must be “arbitrary, unique or distinctive” in connection with the goods or services with which they are associated. The TMEP then elaborates that “commonplace” sounds, such as sounds which are frequently heard in the “normal course of operation” of products or to which listeners have been exposed under different circumstances, can only be registered as sound marks upon a showing of “acquired distinctiveness”.5 In this way, sound marks are quite similar to other, more traditional types of trademarks or service marks. In order to register, sound marks must be distinctive and capable of serving as source identifiers for a particular brand of goods or services.
Sound marks are especially prevalent in the field of film and television, due to the audiovisual nature of brand identifiers which precede feature presentations. The MGM lion’s roar, the Looney Tunes Theme Song, and the symphonic 20th Century Fox theme have all been registered as sound marks.6 However, sound marks are not the exclusive domain of the entertainment business. The giggle of the Pillsbury doughboy, the “AFLAC” duck’s quack, and the hardware store jingle “save big money at Menards” are all registered marks.7 The most important element when determining whether a sound clip or jingle can receive sound mark protection is whether consumers recognize such a sequence as a source indicator in connection with a particular brand.
Some music industry professionals have long anticipated the application of trademark law and sound mark doctrine to hip-hop “producer tags”. Although there is no clear agreement on who first pioneered the producer tag (or “drop”), music producers have been placing sonic calling cards on their beats for decades.8 Even casual fans of hip-hop can probably name a few famous tags, such as Mike Zombie’s “Zombie on the Track”9 drop which notably appears in the intro of Drake’s “Started From the Bottom”.10 Producer tags generally consist of a short audio sample, often referencing the name of the producer, and are frequently placed near the beginning of a track. Many of hip-hop’s most famous producers, such as Just Blaze and Murda Beatz, have highly recognizable producer tags.11 But tags are not just for the all-star producers. The practice has become ubiquitous in hip-hop, as evidenced by Rap Genius’s voluminous Producer Tags Directory.12 Although producer tags are not registered as sound marks with the USPTO as a regular practice, trademark law, rather than copyright, would be the applicable legal regime to enforce exclusive rights to producer tags in most scenarios.
But, most prospective sound mark applicants are not hip-hop producers or film moguls, so how are sound marks applicable to standard consumer goods and services? As described above, certain “commonplace” sound marks can be determined to be functional or otherwise non-distinctive if such marks consist of sounds which are made in the “normal course of operation” of the underlying goods or services.13 This practice of refusing sound mark protection for “commonplace” sounds is not exclusive to the United States. For example, the European Union Intellectual Property Office (“EUIPO”) recently refused registration of a trademark application for the sound of a particular pattern of fizzing upon the opening of a beverage can. The application was filed by Ardagh Metal Beverage Holdings, a German manufacturer of metal beer cans. The European General Court affirmed the EUIPO’s refusal to register the sound mark on the basis that the fizzing pattern was non-distinctive, given the fact that consumers are accustomed to hearing fizzing upon opening a beverage can.14 Anheuser-Busch, owners of Budweiser, received a similar refusal in the USPTO in 2014, when they attempted to register the sound of a beer can opening but the trademark examining attorney maintained that such a sound was not distinctive in connection with the underlying beer products.15 Likewise, Harley Davidson failed to register its applied-for trademark for the sound of its motorcycle engine rumbling, a filing which met opposition from other motorcycle manufacturers who claimed that the particular sound resulted from a common, functional engine design.16 Although the USPTO and other IP offices are generally open to registering sound marks in the nature of unique jingles or other distinctive sounds, the aforementioned examples establish that the sound mark analysis becomes much more complicated in the case of “commonplace sounds”, especially when such sounds may play a functional role in the operation of the underlying goods.
So, how can a prospective sound mark owner get started with the USPTO registration process? First, it is always a good idea to begin by searching the USPTO’s database for sound marks in the Trademark Electronic Search System17 by going to Structured Search, selecting “Mark Drawing Code” in the drop down menu, and entering the number 6 with no quotation marks. This will initially retrieve all active sound mark applications and registrations. There are relatively few sound marks in the USPTO’s database, compared to traditional trademarks and services, so prospective sound mark applicants can easily narrow their sound mark search based on their particular field of goods or services and review the register of sound marks in order to establish that their proposed mark has not already been filed or registered in the relevant field. For assistance in conducting a thorough trademark clearance search and legal analysis, it is always a best practice to procure the assistance of an experienced trademark attorney. Once it is determined that the proposed mark is likely available for use and registration, the next step is to file an application with the USPTO. To apply to register a sound mark, an applicant must provide the USPTO with (1) a high-quality, reproducible sound file featuring the proposed trademark; (2) the full name and legal entity information of the owner; (3) the specific products or services which the trademark purports to distinguish (i.e., what product or service does the owner offer in connection with the sound mark); and, evidence that the owner actively uses the sound mark as a brand identifier in connection with the relevant goods or services.18 Applications for sound marks are examined by members of a special task force within the USPTO’s trademark examination corps, rather than a randomly chosen trademark examining attorney who may not have experience with sound marks. If there are no issues which need to be addressed via the issuance of an Office Action, the mark will then proceed to registration.
In many ways, sound marks are not that different from other, more traditional forms of trademarks and services marks. They must be distinctive and not functional, and if the proposed sound marks consist of “commonplace” sounds to which consumers may be accustomed to hearing, then evidence of acquired distinctiveness must be submitted. In other ways, however, the sound mark application and registration process is less intuitive than standard trademark prosecution. So, if you have a potential sound mark which you want to register and are deciding whether to proceed pro se or hire a law firm, it is always recommended to obtain “sound” advice from an experienced trademark attorney before submitting your application.