Protect your sound marks: Clearance, perception, evidence

If you are one of the one billion iPhone users around the world (or about 1 in 2 smartphone users in the United States), you probably recognize the sound your iPhone makes when Siri is activated. That simple set of six tones has acquired distinctiveness and consumer recognition through extensive and consistent use over time. In fact, it has not changed since Apple first introduced it back in 2011.

Similarly, when you open Netflix or HBO, each platform launches with its own distinctive sound. And you are likely already thinking of numerous other enduring, unmistakable examples along these lines: the McDonald’s tag; NBC’s three tones; the ESPN fanfare; Darth Vader breathing; Homer Simpson saying “D’oh.” 

All of these are sound marks, and they are all registered at the US Patent and Trademark Office (USPTO).

A sound mark is a trademark that utilizes sound to uniquely identify the commercial origin of a product or service. Increasingly, sounds are part of many companies’ marketing and branding strategies. But obtaining such protection through registration is not always easy.

How do you know if a particular sound is protectable or eligible for trademark registration?  As you consider seeking protection for your melody or noise or motif, what other important considerations should you keep in mind? Here are three key factors.

Clearance

As you seek to register your mark, the odds that you will have to compete with a third party that is using a confusingly similar sound are pretty low.  However, there is no ideal way of completely clearing a sound mark. The USPTO register is full of sound marks in numerous classes of goods and services.  Listening to all of these is an unwieldly, inefficient approach, and even then, this approach does not take into account commercial uses that are unregistered. 

Instead, when seeking to position your mark for registration, focus on the creation and ownership behind the sound. Make sure it is an original work.  If the sound was created by an employee, confirm that the work falls within the scope of the worker’s employment.  If the creation of the sound was contracted out to another party, ensure the rights to it have been properly and fully assigned to the company.

Perception

Next, determining whether a sound is protectable depends largely on its use and public perception.

Is it functional or commonplace, like an alarm clock or a ringing phone? Or is it unique, different or distinctive, like the AFLAC duck’s quacking or the Pillsbury doughboy’s giggle? More generic sounds, like those in the first category, could pose problems for registration.

In addition, to successfully register a mark, it will be necessary to provide evidence that the mark is not just in use but is widely recognizable – not for itself (like a car horn) but as an aspect of your brand.  Beyond your own advertising, the most effective evidence is usually unsolicited coverage and recognition by third parties. If your sound can be shown to fall in the second category, registration will likely be straightforward.

Application requirements

Finally, aside from the USPTO’s usual trademark application requirements, you will also need to provide an audio clip of the sound, sheet music (if your sound is musical), and a detailed textual description of the notes and lyrics (if any), including the type of instrument playing the sound, and the octave and duration of the notes.  If your sound is not a piece of music, then you must describe not just the impression the sound gives, but also how it is produced.  For instance, the description of the Darth Vader mark includes the statement “rhythmic mechanical human breathing created by breathing through a scuba tank regulator.”

Going forward

Come back soon. We will be writing more on this topic, including an overview of the sound mark protection process in other countries and strategies for enforcing rights and monitoring for infringements.