TTAB affirms refusal of 'chirps' sound marks for battery chargers

In In re Powermat Inc (Serial Nos 77715011 and 77715052, January 17 2013), the Trademark Trial and Appeal Board (TTAB) has issued a decision affirming the refusal of registration of two sound mark applications for battery chargers filed by Powermat Inc.

The sound marks were described in the applications as consisting of “five short electronic chirps, lasting less than half a second...” In one application, each of the five chirps increased slightly in pitch from the previous chirp, and in the other application each chirp decreased slightly in pitch from the previous chirp. The applications were refused on the grounds that the sounds were not inherently distinctive and therefore failed to function as marks. 

Although the applications took slightly different procedural paths, both applications ended up in this consolidated appeal. The issues on appeal were:

• the examiner’s refusal to consider four hyperlinks in the applicant’s papers to its commercials on YouTube to demonstrate that the sounds were distinctive and source identifiers; and
• whether the applicant’s sound marks were registrable as being inherently distinctive. 

With regard to the evidentiary issue of the hyperlinks, the TTAB restated its prior holdings that providing hyperlinks to internet materials is insufficient to make such materials of record. The proper procedure for submitting such evidence is set forth in the Trademark Manual of Examining Procedure (TMEP) §710.10(b), which requires “complete information as to the source or context”. Further, to submit audio-visual files of the commercials as evidence, the proper procedure is to submit a CD, DVD or videotape, or an electronic file by email attachment, as set forth in TMEP §§807.09 and 904.03(f) - but not by hyperlink.  

With regard to the substantive refusal to register the sound marks as inherently distinctive, the TTAB has previously held that “sounds emitted in the course of a product’s ordinary function can never be inherently distinctive and can only be registered on a showing of secondary meaning”.  The applicant did not dispute that the battery chargers emit the sounds for which it sought registration in their ordinary course of operation. The applicant also did not argue that the sound marks had acquired distinctiveness. Instead, the applicant argued that the applied for pattern of chirp sounds were inherently distinctive source identifiers for the applicant’s products and that these sounds formed the basis for the applicant’s 2009 and 2010 advertising campaigns.

The TTAB held that, under its previous precedent, even if the evidence regarding the applicant’s promotion of its sounds were considered equivalent to 'look for' advertising, such evidence would only be relevant to consideration of registration under Section 2(f) of the Trademark Act for acquired distinctiveness, which the applicant did not assert. 

Thus, since the sound marks could not be inherently distinctive, and the applicant did provide evidence that the marks had acquired secondary meaning, the refusal to register was affirmed.   

Lara A Holzman, Alston & Bird LLP,  New York