John Welch’s The TTABlog today wrote about one of my favorite subjects – sound trademarks (see my prior post here regarding a sound trademark registration by Nokia).
The Trademark Trial and Appeals Board upheld an opposition filed by Nextel Communications of an application by Motorola to register “an electronic chirp consisting of a tone at 911 Hz played at a cadence of 25 ms ON, 25 ms OFF, 25 ms ON, 25 ms OFF, 50 ms ON” as a trademark for two-way radios. See Nextel Communications, Inc. v. Motorola, Inc., Opposition No. 91161817 (T.T.A.B. February 27, 2008).
The dispute is actually one of two sound trademark oppositions between the two companies. Nextel also filed an opposition against Motorola’s sound trademark application for an “electronic chirp consisting of a tone at 1800 Hz played at a cadence of 24 milliseconds ON, 24 ms OFF, 24 ms ON, 24 ms OFF, 48 ms ON” for cellular telephones and two-way radios (filed April 8, 2003, but claiming first use on April 30, 1996). See Nextel Communications, Inc. v. Motorola, Inc., Opposition No. 91164353 (T.T.A.B.). Nextel also filed its own sound service mark application for “a tone at 1800 Hz played at a cadence of 24 milliseconds (ms) ON, 24 ms OFF, 24 ms ON, 24 ms OFF, 48 ms ON” for various telecommunications related services (filed on February 25, 2005, but claiming first use on May 16, 1997); however, the application is currently suspended pending the outcome of Motorola’s application.
The TTAB’s decision found that Motorola’s “chirp” failed to function as a trademark under Section 45 of the Trademark Act (15 U.S.C. §1127), namely a mark that is used in such a manner that it would readily be perceived as identifying the specified goods and distinguishing a single source or origin for the goods (i.e., whether the mark which would be perceived as a source identifier).
Instead, Motorola’s “chirp” was found to function merely as an alert tone notifying users of Motorola’s two-way radios when the two-way radio has found an available channel on which to communicate. In addition, the TTAB found that Motorola’s promotional efforts only reinforced that Motorola did not use the “chirp” as a trademark, but rather as a way for users of Motorola’s two-way radios to “aurally recognize an operational feature of the goods,” namely to signal the availability of a feature of its goods rather than the source of the goods.
It is interesting to note that the question of the mark being “functional” (and thus refused registration on the Principal Register under Section 2(e)(5) of the Trademark Act (15 U.S.C. §1052(e)(5) on the grounds that the sound is matter that, as a whole, is function) was not raised by the parties. The concurring opinion refers to this as the “chirping elephant in the room” – basically, Nextel did not bring it the issue of functionality because it has its own sound trademark application pending.
The concurring judge suggests that it is more important for an issue such as functionality to first be litigated in order to determine whether a mark holder’s exclusive use of a sound is “consistent with the preservation of effective competition among manufacturers and merchants of a defined set of these hand held wireless devices.” Only after this issue is thoroughly litigated should the focus then turn to whether or not the sound actually functions as a mark.
For a good article on “non-traditional” trademarks, check out the article by Jerome Gilson and Anne Gilson LaLonde titled “Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks” 95 TMR 773, The Trademark Reporter (2005).
Trivia question of the day: What is the only “scent” trademark currently registered on the Principal Register, for what scent, and for what goods? The answer can be found here and here. And while this mark is registered on the Principal Register under Section 2(f), what is the only “scent” trademark (now canceled) to ever be determined to be inherently distinctive such that it was registered it on the Principal Register (not based on acquired distinctiveness). The answer can be found here.
[Update: I saw a Nextel commercial this evening advertising Nextel's Direct Connect Service. A "chirp" sound was played repeatedly throughout the commercial. Did Nextel perhaps learn a lesson from this decision and is making sure its sound trademark does not suffer the same fate?]