Tuesday, March 03, 2009

Precedential No. 4: TTAB Rules that a Sound Emitted by Goods in Normal Course of Operation Cannot Be Inherently Distinctive

In a case of first impression, the TTAB held that a sound mark for goods that make the sound in their normal course of operation, cannot be inherently distinctive and may be registered only upon proof of acquired distinctiveness. Applicant Vertex sought to register an alarm sound for a "personal security alarm in the nature of a child's bracelet to deter and prevent child abductions" and for "personal security alarms." Because Vertex did not seek to register the mark based on acquired distinctiveness, the Board deemed the mark unregistrable for that reason alone, and it also affirmed the PTO's two refusals to register on the grounds that Vertex's sound mark is functional under Section 2(e)(5) and fails to function as a trademark for the goods (Sections 1, 2, and 45). In re Vertex Group LLC, 89 USPQ2d 1694 (TTAB 2009) [precedential].

Applicant Vertex sought to register a sound consisting of "a descending frequency sound pulse (from 2.3kHz to approximately 1.5kHz) that follows an exponential, RC charging curve, wherein said descending frequency sound pulse occurs four to five times per second, and that over a one second period of time, there is alternating sound pulses and silence with each occurring approximately 50% of the time during a one second period of time." [A recording of the sound may be found here]. Vertex submitted a Statement of Use in the bracelet application but not in the other.

Vertex asserted, of course, that its sound mark is not functional and is inherently distinctive. It submitted considerable evidence showing use of the sound for a combination watch and personal alarm for children, called the "AmberWatch."

After reviewing the relevant case law on sound marks (particularly In re General Electric Broadcasting Co., Inc., 199 USPQ 560 (TTAB 1978)), as well as the Supreme Court's decisions in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) [product design cannot be inherently distinctive] and Qualitex Co. v. Jacobson Products, Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995) [color cannot be inherently distinctive], the Board ruled 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)."

Since Vertex did not seek registration under Section 2(f), and since its alarm sound mark may be registered only upon a finding of acquired distinctiveness, the Board held that refusal to register is appropriate on that ground.

However, it went on to review and affirm the two grounds for refusal maintained by the PTO: functionality and failure to function as a trademark.

The Board first considered the failure-to-function refusal. [TTABlog comment: It seems to me that the functionality discussion should come first, since that refusal is fatal to the applications and (unlike failure-to-function) cannot be overcome by proof of acquired distinctiveness. The failure-to-function refusal is then an alternative refusal, leading to the ruling on acquired distinctiveness.]

In any event, the Board reviewed the evidence submitted by Vertex and found nothing that promoted recognition of the alarm sound as a source indicator (e.g., no "listen for" advertising) and nothing that educated the consuming public to the "assertedly distinctive aspects of the sound."

As to functionality, the Board applied both the Supreme Court test set out in Qualitex, quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1 (1982), and in TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001), and the test set out by the CCPA in In re Morton-Norwich Products, Inc., 213 USPQ 9 (CCPA 1982).

Under the Supreme Court's test, the Board found that the use of an audible alarm is functional because it is "essential to the use or purpose of applicant's products." The evidence showed that the use of a loud alarm is important, and that alternating sound pulses and silence provides a "more effective way to use sound as an alarm than is a steady sound."

Applying the four Morton-Norwich factors, the Board noted that Vertex has a utility patent on a digital wristwatch with a "loud alarm." Vertex's advertising "extols the loudness of the alarm." Competitors would need to use a loud alarm comprising alternate pulses of sound and silence, and registration of Vertex's sound would deprive competitors of many of the available possibilities. Vertex argued that there are "thousands of specific frequencies within the range that is most suitable for use in alarms," but the Board was not impressed:

What applicant's argument fails to appreciate, however, is that the description of its mark only specifies that its sound pulse is between 1500 Hz and 2300 Hz. Based on this description, applicant would be free to combine sound pulses for any of the frequencies within this range, a large swath of the optimal range of 1000 Hz to 3000 Hz. While there may indeed be countless combinations of frequencies available for personal alarms utilizing the frequencies within the optimal range, registration of applicant’s sound as described would deprive competitors of many of those options. It matters not that applicant's actual sound may currently use only a handful of particular frequencies, for it would be free to change the combinations at any time and still have its sound fall within the ambit of the description. This factor favors a finding of functionality.

As to the fourth factor, the sound of the product has no bearing on the cost or ease of manufacture.

Weighing all the Morton-Norwich factors, the Board concluded that the mark is functional and unregistrable.

Text Copyright John L. Welch 2009.


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