Friday, November 17, 2006

Recommended Reading: The Protection of Sound Marks

Kevin K. McCormick provides a useful overview of various systems for the registration of sound marks, in his recent Trademark Reporter article entitled "'Ding' You Are Now Free to Register That Sound," 96 TMR 1101 (September-October 2006). (download here). He notes that a sound marks "transcend languages" and thus would seem to be desirable and attractive as global source indicators. Yet "recognizing sounds as trademarks has really only occurred in recent years, and as a result, only a small number of sounds have been registered as trademarks."

McCormick's article "offers a description of the basic legal frameworks for trademark protection of sounds as reflected through the treatment of sounds in the United States, the European Union, and several exemplary nations." He notes that the United States "has been the most liberal nation in regards to recognizing the registration of sounds."

For American trademark owners, the path to international registration of a sound mark is very complicated. Use of the Madrid Protocol is particularly problematic because of the differing requirements for sound mark applications in various national laws.

"The odds are simply against a U.S.-based sound mark application seeking international registration in numerous countries via the Madrid Protocol. The more likely result would be filing several applications: a CTM application for protection in any EU member state, an international application in descriptive representation states, and national applications in all other states that recognize sounds."

In sum, Mr. McCormick's article is a good starting point for one who contemplates protection of a sound mark.

TTABlog comment: My favorite sound mark is one that I registered for Boston Duck Tours for its sightseeing tour services: "The mark comprises the sound of a human voice making quacking noises like a duck." The mark was deemed, after some brilliant argument, to be inherently distinctive. (U.S. Reg. No. 2,308,503).

How about this for a sound trademark: the "signature call" of sportscaster Andres Cantor: GOOOOOOOOOOOOOOOOOOOLLLLLLLLL!

TTABlog Hat Tip: A thank you to The Trademark Reporter for granting permission to provide a link to this article. Copyright © 2006 the International Trademark Association, and reprinted with permission from The Trademark Reporter®, 96 TMR 1101 (September-October 2006).

Text Copyright John L. Welch 2006.


Post a Comment

<< Home