Marshall Gerstein Convinces the TTAB that Duracell Closing Sound is Registrable
For years, the close of commercials for Duracell batteries have included a distinctive three-note closing (a C4 quarter note, a G3 quarter note, then a G4 half note). The closing notes--referred to at Duracell as the “slamtone”--is widely recognized as a source identifier, helping consumers know whose batteries are being touted.
Registering sound marks for products like batteries is, however, tricky. While use of a sound mark in advertising is routinely accepted to support registration of a mark for services, USPTO guidelines (TMEP 904.04(b)) says that advertising is “generally not acceptable” to support registration of a mark for products. Registering sound marks for products that themselves make sounds (like motion pictures, audio files, or computer software) can still be easy, but the rule makes registration of sound marks for other types of products all but impossible. The makers of Chia Pets resorted to embedding a computer chip in their Chia Pet planters that plays the sound mark when a button on the planter is pressed (reg. no. 6104660). Some companies (like Samsung Electronics and audio brand Sonos) resort to first registering their sound marks in a foreign country, enabling them to register the mark in the US without use (reg. nos. 6806181 and 6742105).
Although scent marks are sometimes thought to be more unusual, there are far more scent marks registered for products than sound marks registered for products that do not make sounds. A search of the USPTO database reveals that of the more than 11 million files in the USPTO database, only ten use-based sound mark registration have ever been issued in the US for products that do not themselves make any sound. Only four of those remain active today. P&G registered its Old Spice jingle for antiperspirant (reg no. 5091526) after programming its website so that the jingle would play when the product was purchased online. Similarly, Colgate Palmolive registered its five-note Colgate Life melody for mouthwash by using a link to an advertisement. The sound of a screeching eagle is registered for beer (reg. no. 3502115) and the “Ask any Mermaid You Happen to See, What’s the Best Chicken, Chicken of the Sea” jingle (reg. no. 4446624) is registered for tuna. In none of those cases did the examiner cite the USPTO guidelines and object that the use of the sound in an advertisement was not acceptable to support registration of a mark for a product.
Here, the examiner did object, citing the USPTO guidelines. Ably assisted and supported by Duracell’s in house counsel and sales team, Marshall Gerstein convinced the Trademark Trial and Appeal Board that Duracell’s advertising was an exception to the rule, and enough to support registration of the closing notes as a trademark of Duracell’s batteries. The decision has been designated as precedent-setting.