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  • As General Electric instructs, "a distinction must be made between unique, different, or distinctive sounds and those that resemble or imitate ‘commonplace' sounds or those to which listeners have been exposed under different circumstances."
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • As General Electric instructs, "a distinction must be made between unique, different, or distinctive sounds and those that resemble or imitate ‘commonplace' sounds or those to which listeners have been exposed under different circumstances." 199 USPQ at 563.
  • The General Electric case draws a distinction between inherently distinctive sound marks, and those which must be shown to have acquired distinctiveness.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • As noted, General Electric draws a distinction between inherently distinctive sound marks, and those which must be shown to have acquired distinctiveness.
  • The Trademark Act embodies a flexible approach toward the concept of what constitutes a service mark or a trademark and the TTAB has recognized that sounds may, under certain conditions function as source indicators in those situations where they assume a definitive shape or arrangement and are used in such a manner so as to create in the hearer's mind an association of the sound with a good or service.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Before reviewing the evidence recounted above, as well as the arguments of applicant and the examining attorney, in the light of applicable law, we consider the treatment of sound as a trademark or service mark. The Trademark Act embodies "a flexible approach toward the concept of what constitutes a service mark or a trademark" and the Board has recognized that "sounds may, under certain conditions … function as source indicators in those situations where they assume a definitive shape or arrangement and are used in such a manner so as to create in the hearer's mind an association of the sound with a [good or] service." In re General Electric Broadcasting Co., Inc., 199 USPQ 560, 563 (TTAB 1978). See also, In re N.V. Organon, 79 USPQ2d 1639, 1644 (TTAB 2006) (the Trademark Act includes a broad definition of "trademark," and it is the sourcedistinguishing capacity of a proposed mark that is significant, "not its ontological status as color, shape, fragrance, word or sign") quoting Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995).
  • Even a sound so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard must nonetheless be associated with the source or event with which it is struck.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Even a sound "so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard" must nonetheless "be associated with the source or event with which it is struck." Id.
  • General Electric contemplates registration on the Principal Register of sounds as marks, when the sounds are arbitrary, unique or distinctive and can be used in a manner so as to attach to the mind of the listener and be awakened on later hearing in a way that would indicate for the listener that a particular product or service was coming from a particular, even if anonymous, source.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • General Electric contemplates registration on the Principal Register of sounds as marks, when the sounds are arbitrary, unique or distinctive and can be used in a manner so as to attach to the mind of the listener and be awakened on later hearing in a way that would indicate for the listener that a particular product or service was coming from a particular, even if anonymous, source.
  • In General Electric, the TTAB noted that a distinction must be made between unique, different, or distinctive sounds and those that resemble or imitate ‘commonplace' sounds or those to which listeners have been exposed under different circumstances.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • In General Electric, the Board noted that "a distinction must be made between unique, different, or distinctive sounds and those that resemble or imitate ‘commonplace' sounds or those to which listeners have been exposed under different circumstances." 199 USPQ at 563.
  • Even if applicant were seeking registration under Section 2(f), no amount of evidence of acquired distinctiveness would overcome a prima facie showing by the examining attorney that the sound is functional under Section 2(e)(5).
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • In these cases, applicant seeks registration of the alarm sound without resort to Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).15 FOOTNOTE 15 "There is a distinction, of course, between the two applications. As the child's bracelet application was amended to assert use in commerce, it could have also been amended to claim acquired distinctiveness, but the personal alarms application, which remains based on intent to use, cannot proceed under Section 2(f) (or on the Supplemental Register). In any event, applicant seeks registration of the mark without resort to a claim of acquired distinctiveness in either application. Even if applicant were seeking registration under Section 2(f), no amount of evidence of acquired distinctiveness would overcome a prima facie showing by the examining attorney that the sound is functional under Section 2(e)(5). See 15 U.S.C. §1052(f)."
  • Case Finding: In view of our holding that registration on the Principal Register of the sound emitted by applicant's product in its normal course of operation is only available on a showing of acquired distinctiveness, registration is refused.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • In view of our holding that registration on the Principal Register of the sound emitted by applicant's product in its normal course of operation is only available on a showing of acquired distinctiveness, registration is refused.
  • Registration of commonplace sounds and those to which listeners have been exposed under different circumstances must be supported by evidence to show that purchasers, prospective purchasers and listeners do recognize and associate the sound with services offered and/or rendered exclusively with a single, albeit anonymous, source.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Moreover, registration of commonplace sounds and those to which listeners have been exposed under different circumstances "must be supported by evidence to show that purchasers, prospective purchasers and listeners do recognize and associate the sound with services offered and/or rendered exclusively with a single, albeit anonymous, source." Id; compare with In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001), wherein registration was refused for a mark consisting of use of a hologram on trading cards, in part because of other uses of holograms, even though not as a mark (e.g., for anti-counterfeiting purposes), which made consumers less likely to perceive any hologram as a mark.
  • Commonplace sounds, or those which individuals may have been exposed to under other circumstances, must be shown to have acquired distinctiveness.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • On the other hand, General Electric also contemplates that commonplace sounds, or those which individuals may have been exposed to under other circumstances, must be shown by evidence to be distinctive, in other words, commonplace sounds must be shown to have acquired distinctiveness.
  • Subsequent to the TTAB's decision in General Electric, the Supreme Court has stated that both color and trade dress in the nature of product design can never be inherently distinctive and can only be registered on a showing of secondary meaning.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Subsequent to the Board's decision in General Electric, the Supreme Court has stated that both color and trade dress in the nature of product design can never be inherently distinctive and can only be registered on a showing of secondary meaning. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) (greengold color used on dry cleaning press pads protectible as a trademark because of acquired distinctiveness) and Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 54 USPQ2d 1065, 1068-69 (2000) (design of children's clothing items not protectible except on a showing of secondary meaning).
  • It is appropriate to follow the Supreme Court's rule regarding color and product design, for certain types of sound marks.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • There is no subsequent case law, however, stating such a rule in regard to sound marks. Nonetheless, we find it appropriate to follow the Supreme Court's rule regarding color and product design, for certain types of sound marks.
  • Sounds may be registered if supported by evidence to show that purchasers, prospective purchasers and listeners do recognize and associate the sound with services offered and/or rendered exclusively with a single, albeit anonymous, source.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • We conclude that applicant's sound is the type that General Electric instructs may be registered only if "supported by evidence to show that purchasers, prospective purchasers and listeners do recognize and associate the sound with services offered and/or rendered exclusively with a single, albeit anonymous, source." General Electric, supra, 199 USPQ at 563.
  • When 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).
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • When 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). Examples of such goods would include products such as alarm clocks, appliances that include audible alarms or signals, telephones, and the alarm products of applicant.14 FOOTNOTE 14 "Our list is for illustrative purposes only and not intended to foreclose future inquiry into whether sounds made by other products might also be registrable only on a showing of acquired distinctiveness."
In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009) Grand Total
In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) 1
In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001) 1
Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000) 1
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) 1
In re General Electric Broadcasting Co. Inc., 199 USPQ 560 (TTAB 1978) 1
Grand Total 5 5
No Statutes Listed

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