Sound marks for alarms refused registration

United States of America
In In re Vertex Group LLC (Cases 76601697 and 78940163, February 13 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has upheld a decision of the US Patent and Trademark Office in which the latter had refused to register two sound marks. 

Vertex Group LLC sought to register sound marks described as a sound of "descending frequency sound pulse" (from 2.3 kilohertz (kHz) to approximately 1.5 kHz) occurring at intervals of four to five per second, with the sound pulse alternating with silence. The applications covered goods in Class 9 of the Nice Classification - namely, “personal security alarm in the nature of a child’s bracelet to deter and prevent child abductions” and “personal security alarms.”  

The TTAB refused registration based on functionality, holding that:

  • the proposed sound was a feature of the goods that served a utilitarian purpose; and
  • the sound did not function as a trademark to identify and distinguish the source of the goods. 
In particular, the TTAB held that the marks were functional despite Vertex's evidence to support its claim that the marks were not functional, which included: 
  • website advertising that featured a 'click to hear' feature allowing consumers to listen to "the unique sound" of the product;
  • press releases and media coverage touting the "trademarked sound" of the product; and
  • radio public service announcements which played the sound of the product. 
In arriving at its determination that the sound marks were functional, the TTAB held that:
“[w]hen a sound is proposed for registration as a mark on the Principal Register for goods that make the sound in their normal course of operation, registration is available only on a showing of acquired distinctiveness under Section 2(f).

Vertex did not seek registration of the sound marks under Section 2(f) of the Lanham Act. However, the TTAB noted that even if this rule were not in effect, Vertex's marks would be functional and not entitled to registration. 

The TTAB held that the mere fact that Vertex described the sound of its product as a trademark in advertising and promotion did not mean that it performed the function of a trademark. For example, although the website invited consumers to listen to the sound, there was no evidence that anyone had listened, nor did the website instruct anyone as to what to listen for to aid them in distinguishing this alleged “unique” sound over other alarms. Neither did the public service announcements refer to the sound played as coming from a particular source. Instead, they promoted awareness of an alarm as an indication that a child may be in danger. 
Further, the TTAB indicated that Vertex had not shown that the sound that its product emits was unique. The TTAB stated that “every audible alarm emits some sort of sound” and that this is essential to the use or purpose of an alarm product. To support this, there was evidence in the record that alarms functioned better when sound is pulsing and loud. Further, Vertex's description of the sound of its mark was broad, covering sounds between 1.500 kHz and 2.3 kHz, which would preclude competitors from using a significant section of the optimal range of sound for alarms. Finally, Vertex had a pending patent application on the product which described the loudness of the sound of the alarm. 
Based on the above, Vertex's marks were refused registration. 
Lara A Holzman, Alston & Bird LLP, New York

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