Many mobile phone users are willing to pay extra fee to get an unusual phone ringtone. For this reason, the global ringtone industry hit a selling record of billion in 2004. Although the ringtone industry faded in 2007 and 2008, there were still several hundred million dollars' sales in the U.S. market.

    Apart from being commodities, ringtones were also the objects of trademark applications successively made by mobile phone manufacturers, including Verizon and Nokia, both of which applied for registering their preset ringtones as trademarks. According to the U.S. Lanham Act, a sound could be a target of trademark right protection. As long as a sound is non-functional and is distinctive, it is eligible to be protected as a trademark. Targeting trademarks, this article discusses the determination criterion for trademark distinctiveness adopted by the U.S. Trademark Trial and Appeal Board (hereinafter referred to as the "TTAB").

    In 2007, Nokia registered its preset ringtone as a trademark. For other sound marks obtained from the United States Patent and Trademark Office (hereinafter referred to as the "USPTO"), including Twentieth Century Fox and the lion roar registered by MGM, they all can be found from relevant cases in the USPTO (Note 1). Therefore, there are a lot of cases in which sounds were registered as trademarks, especially in the entertainment and computer industries.

    Traditionally, the trademarks are classified into five categories, namely original marks, arbitrary marks, suggestive marks, descriptive marks and generic marks, by the strength of the trademark distinctiveness and based on two elements of ways (the way how word marks are created and the way how words are used in the industry). Original marks, arbitrary marks and suggestive marks are those with inherent distinctiveness, while descriptive marks can be registered as trademarks only when they acquire distinctiveness. For example, according to the review criterion of trademark distinctiveness in Taiwan area, the so-called "original marks" mean the marks "created from original wisdom, without following the existing vocabulary or things, and having no specific and existing meaning themselves." The original marks are mostly created to distinguish the source of goods or services.

    However, the distinctiveness concept of such kind of original marks is relatively difficult to apply to sound marks. The reason is that, although many sound signs neither have a specific meaning themselves nor follow any existing melodies or things, and the purposes of creation are also to distinguish the source of the goods or services, the U.S. law generally believes that the traditional trademark theory should be revised if sounds are taken as objects of trademarks. Thus, the sounds are divided into two categories: (i) unique sounds, different sounds, and distinctive sounds; (ii) commonplace sounds. The sounds in the first category are those with inherent distinctiveness; while the sounds in the second category are those without distinctiveness. Thus, in general case, if it is a commonplace sound, it must first yield the effect of identifying the origin of goods in the minds of consumers, that is, through the consumers' use of the sound, let them associate the sound with a manufacturer when hearing the sound.

    For preset ringtone of Apple's iPhone, there is no similar sound before it was made public. If, examined by the traditional theory, the ringtone is of originality character, which qualifies it to be identified as a ringtone with inherent distinctiveness. Thus, when an application is filed with the USPTO for registering the ringtone as a trademark, there is no need to present evidence of acquired distinctiveness.

    However, if the USPTO determines that the preset ringtone is of no unique character, then it should be regarded as a commonplace sound, which can only be registered as a trademark when it acquires distinctiveness. Therefore, if Apple has not sold iPhone or launched its ringtone-centered marketing, the evidence of acquired distinctiveness simply does not exist; only when Apple acquires distinctiveness for its ringtone can it apply for trademark protection.

    However, in 2009 the TTAB explicitly excluded the possibility of existence of sound distinctiveness in the case of In re Vertex Group LLC (Note 2); thus sounds can only be registered as trademarks when the evidence of acquired distinctiveness can be presented, which greatly subverted the determination criterion of traditional trademark distinctiveness. In the case of Nextel Communications v. Motorola, Inc. (Note 3) later and the case of In rePowermat Inc. (Note 4) in 2013, the TTAB further mentioned that sounds do not have inherent distinctiveness.

    Sounds registered as trademarks must be of no functionality and at the same time have distinctive character. For the application of the so-called "functionality", there are two circumstances: (1) de facto functionality; and (2) de jure functionality. The de facto functionality means that the target is functional in terms of general perception or use, while the de jure functionality means that the target has a function or economic utility. Based on the U.S. Lanham Act, targets with de facto functionality can still be protected as trademarks, for such protection will not impede competition; however, targets with de jure functionality cannot be protected as trademarks, for such protection will impede competition.

    Among U.S. trademark cases, in-depth discussion about applying trademark functional theory to sound marks can be found in the case of Kawasaki Motors Corp. U.S.A. v. H-D MichiganInc (Note 5). The Kawasaki Motors Corp. U.S.A. opposed Harley-Davidson's applying for registering a motorcycle engine sound as its trademark, while in Harley-Davidson's application, the sound mark was described as a composition of the sound produced by motorcycle exhaust pipes. The court held that whether the sound has engine sound characteristics and whether the same sound will be produced by other manufacturers by combining engines in the same way should be taken into consideration to judge whether the sound mark registration should be approved.

    In the above case, the TTAB did not substantially address the functionality issue, but advocated the consideration that whether the approval for Harley-Davidson's application for registering a motorcycle engine sound as a trademark will exclude manufacturers' using the combination of the motorcycle engine. Therefore, in the case the TTAB held that the sound might have functionality, and thus attention should also be paid to the functionality issue when the trademark application was reviewed.

    In 1947, U.S. National Broadcasting Company (NBC) applied for a sound mark to protect its three distinct pitches, but it was not approved by the TTAB until 1978. In the case of In re General Electric Broadcasting Co. (Note 6), the TTAB acknowledged that a sound could be a target for a trademark application, "A sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it is struck. (Note 7)"

    In the case of In re General Electric Broadcasting Co., after examining the eligibility of NBC's application for registering its regular ship bell ringing as a trademark, the TTAB held that a trademark is not required to be necessarily presented in the form of image; thus once a sound is capable of indicating the source, it is eligible for a trademark application even though it fails to be presented in the form of image. For this reason, the TTAB determined that the ship bell ringing is a commonplace sound similar to that of other vessels, and thus it does not have inherent distinctiveness. The TTAB required the applicant to present evidence of acquired distinctiveness of the sound upon trademark registration.
Distinctiveness has been playing an important role in sound mark examination. The standpoint of sound distinctiveness and eligibility in the case of General Electric in 1978 has been binding on the TTAB and the Federal Court. In the case of General Electric, sounds are divided into two categories by the strength of sound trademark distinctiveness, which different from the traditional theory of trademark distinctiveness, namely the commonplace sounds and the sounds with inherent distinctiveness. For commonplace sounds, it is required to present evidence of acquired distinctiveness for trademark registration while for sounds with inherent distinctiveness, there is no need to present such evidence. Thus, once the law or the USPTO determines that a sound is a commonplace one, evidence of acquired distinctiveness of the sound must be provided to register it as a trademark. Just as the case of Ride the Ducks LLC v. Duck Boat Tours, Inc (Note 8), the Court ruled that the duck call is a commonplace sound because the sound is well known by the public; for this reason the duck call does not have inherent distinctiveness and evidence of acquired distinctiveness shall be presented upon application for trademark registration. In the above case, the duck call is a commonplace sound without any creation. What about a mechanical sound? As it is not a sound from the nature environment, can it be excluded from the application of inherent distinctiveness? For a long time, the TTAB has no clear criterion for this issue until the Vertex Group case in 2009.

    In 2009, the Vertex Group case caused wide discussion among U.S. practitioners, mainly because the TTAB put forward a restriction on sound mark application. The TTAB considered that if a sound is generated from a product in normal operation, it is a sound without inherent distinctiveness, and therefore an applicant must present evidence of establishment of the second meaning, in order to apply for its trademark protection.

    In this case, Vertex Group applied for trademark protection for its "AmberWatch" sound, which was refused by the USPTO and therefore appealed by the former. During the review, the TTAB found that Vertex Group developed its AmberWatch for kids with a combination design of watch and personal alarm. Such kind of design is supposed to help parents to protect their children from kidnapping or other crimes. Thus, the main function of the watch lies in sending out a 115-db signal, which can be heard within a distance range larger than a football field according to Vertex Group.

    The trademark application case of Vertex Group contains two different applications, both of which are related to the alarm sound. One is the personal security alarm in a child's bracelet for the repression and prevention of child kidnapping. The other is a personal security alarm. Vertex Group, in both its applications, stated that the sound is of distinctive character and expressed that it intended to use the potential mark in transactions. However, the examiner refused these two applications, holding that the trademark applications of Vertex Group lack the basis of trademark function, because the sound concerned is made of several sing-tones, and is not distinctive enough.

    After reviewing the applications of Vertex Group, the TTAB sustained the dismissal of the Group's appeal. In the case, the TTAB restated that a sound could be registered as a trademark; however, when judging the trademark distinctiveness, the TTAB followed the criterion for distinguishing between a commonplace sound from a sound with inherent distinctiveness in General Electric's case.

    The TTAB held that an evidence of acquiring distinctiveness must be presented in case of a commonplace sound while no such evidence is required in case of a sound with inherent distinctiveness, provided that the sound being able to indicate a particular product or service shall be proved. The TTAB further pointed out that the targets of Vertex Group's trademark registration applications are sounds generated from products in normal operation, and thus only when the evidence of acquired distinctiveness is presented can the sounds be registered as trademarks. For the so-called "products that using the sounds generated in their normal operation as trademarks", the TTAB also gave some examples, such as alarm clock, other devices containing sound alarm and signals, the telephone and alarm products. If a product is classified into the above category and if the application is still targeted at a mechanical sound, it is a must to present evidence of acquired distinctiveness for a sound mark registration. The TTAB applied this new criterion to Vertex Group's case, and thus confirmed USPTO's refusal of the trademark applications.

    In 2009 and in the case of Nextel Communications v. Motorola, Inc., the TTAB reviewed a mechanical sound mark registration again. The TTAB pointed out that the Motorola targeted the electronic chirp for a phone trademark registration, but such sounds are inherently expected to be heard from phone products by phone users. Therefore, as the criterion established by the TTAB in the case of Vertex Group, "Mechanical sounds generated from equipment in normal operation do not have the inherent distinctiveness," Motorola's machine sound mark can only be registered after it acquires distinctiveness.

    As regard to the case of Nextel Communications v. Motorola, Inc., it started with Motorola's applying to the USPTO for registering the sound of insects and birds as its mark in April 2003. It was described in Motorola's application that the sound is just like an electronic sound of insects and birds composed of 24-Ms rhythm and 1,800-Hz frequency and to be used in the phones or two-way radios. Motorola claimed that it used the sound for the first time in April 1996. Nextel, however, opposed the registration based on two grounds. The first is that Motorola did not use the sound of insects and birds as a trademark under normal commercial practice; the second is that the sound of insects and birds has no inherent distinctiveness or acquired distinctiveness.

    The TTAB confirmed the criterion established in the case of Vertex Group, and therefore sustained USPTO's refusal of Motorola's application. Although Motorola claimed that the mark has inherent distinctiveness, the TTAB determined upon review that the sound of insects and birds has been associated with the use of mobile phones and therefore does not have the inherent distinctiveness. In the Nextel Communications case, the TTAB not only restated the criterion established in the case of Vertex Group, but also further confirmed that the products falling into the product category classified by the criterion established in the case of Vertex Group, including mobile phones and the appliances capable of generating sound themselves, all belong to such category of products generating sounds in normal use. Therefore, under the criterion of Vertex Group's case, the sound emitted by mobile phones does not have the inherent distinctiveness, and can only be protected after the evidence of acquired distinctiveness is presented.

    The development of technical industry and the diversity of products have created more and more targets for intellectual property protection. To achieve well protection of its products and avoid imitation by other competitors, the industry is good at adopting intellectual property protection strategy in combination with different intellectual property characteristics to protect its product innovation and features. For the trademark protection, though many countries tend to loosen their policies on the eligibility of trademark targets, the check point still lies in unfair competition.

    In the field of trademark protection, the marks with distinctiveness may be registered as trademarks except that they are of functionality. Therefore, the "single color", "product packaging", "interior design of concept shops", "smell", "sense of smell", "sound", "art works" and other targets that were not recognized as trademarks in the past are now protected as trademarks by authorities of various countries either expressively or impliedly. But they also stress that those targets must acquire distinctiveness. Generally speaking, while broadening the trademark registration targets, the authorities attach more importance to the review of "functionality" and the establishment of acquired distinctiveness.

(Source: Sina)

【Comments】

Jiang Xiuhua: As a kind of non-traditional trademark, a sound mark is to some extent not recognized by people as an element for trademark registration, mainly because of its non-visibility and certain difficulties in its transmission. However, with the changing society, Internet, smart phone and other environments and equipment, sound can appear anywhere and at any time in public, which provides a favorable environment for the sound mark registration and protection. Therefore, one of the biggest bright spots of the new Trademark Law, taking effect as of May 1, 2014, is that it stipulates that sounds can also be registered as trademarks. According to relevant reports, after the implementation of the new Trademark Law, the China Radio International filed an application to the Trademark Office for registering the sound of its "starting melody" to be a trademark, which became the first sound trademark application in China.

    This article mainly discussed the sound mark protection in U.S., that is, a sound mark must have inherent distinctiveness or acquire distinctiveness through the using process. In the article, the author also listed the difficulties several industrial tycoons met in the sound mark protection. To the commentator's knowledge, no sound mark has been approved to be registered in China. But from the legislative conception, the examination of sound marks in China should be similar to that in U.S., that is, the sounds used as trademarks must have the function of being capable of identifying product/service source, or sounds may not be protected unless they have distinctiveness. For example, the flute-sound used on "flute" products and the mew used on "cat food" products should not be approved to be registered as trademarks.

    Finally, though on the legal level, sounds can be registered as trademarks, they, as non-traditional trademarks, appear new characteristics that are different from traditional trademarks in the process of actual use and legal rights safeguard, which remains to be further studied.

Liu Wei (Intellectual Property Institute of Shanghai University): As a kind of non-traditional trademark, "sound" became a trademark element in China's 2013 Trademark Law. However, the determination of distinctiveness of sound marks has been a problem in the trademark examination and litigation process. Whether in the U.S. law or the Chinese law, the distinctiveness and non-functionality are the most important elements and challenges in the examination of non-traditional trademarks. Such point can also be figured out by reading this article. It is impossible for such non-traditional trademarks as sounds and colors to have inherent distinctiveness, because consumers may not likely immediately regard such trademarks as indication of resource. The trademarks will be protected only when they acquire the second meaning. For functionality examination, the de jure functionality is of more decisive significance compared with de facto functionality. The U.S. Supreme Court formed the following classical expression in Qualitex case: if exclusive use of a design feature as a trademark would put competitors at a significant non-reputation-related disadvantage, the feature will be prohibited to be used as a trademark based on functionality principles, because the feature is essential to the use or purpose of the article or it affects the cost or quality of the article. At present, cases related to sound marks examination and lawsuits are not common. The determination criteria of distinctiveness and non-functionality of such trademarks are still under exploration.