NonTraditional Marks: Sound

1

• Non-Traditional Marks Sound
• What happened to
• Harley Davidsons Sound Mark

C. Fred Charpie, III MST October 27, 2009
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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)

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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)

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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

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Sound Marks
TTAB Distinctiveness Sound Spectrum
Commonplace requires proof of secondary meaning
or acquired distinctiveness
Unique, different or inherently distinctive
Sound
Consumer testimony, surveys, extensive sales,
advertising and/or promotional activities
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Sound Marks

• Harley Davidson
• Filed sound mark application for V-twin engine
• Description The mark consists of the exhaust
  sound of applicants 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

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Sound Marks
Harley Davidson Sound Mark timeline
Jan, 95 Approved for Publication
Jun-Nov, 95 (9) Oppositions Instituted
Feb, 94 App. filed
1996
1997
1998
1999
2000
2001
1994
1995
July, 94 Examiner Assigned
April, 95 Published
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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.

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Sound Marks
Opposition Arguments
Yamaha has been building V-twin engines since
the early 80s, and theres 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
Harleys motorcycle from others or indicate the
source of the motorcycles Its very difficult
to imagine a world where the sound of a running
engine is an exclusive property right. Honda
Motor Company
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Sound Marks
More Opposition Arguments
Applicants 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
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Sound Marks
Harley Davidsons position
Harley-Davidson has been in existence since
1903, and the exhaust sound has become identified
with our motorcycle. Its a distinctive brand
identifier all on its own you know a Harley
when you hear one.
Harley Davidson
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Sound Marks
Harley Davidson Sound Mark timeline
June,00 H-D abandons Application
Jan,95 Appd for Pub.
Mar,97 (9) S/Js Denied
Jun-Nov,95 (9) Oppositions Instituted
Motions to Consolidate and Trial Preparation
Feb,94 App. filed
1996
1997
1998
1999
2000
2001
1994
1995
July,94 Examiner Assigned
Nov,95 Mar,97 S/J Motions (TTAB)
April,95 Published
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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

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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