In Re Vertex LLC, the Trademark Trial and Appeal Board (“TTAB”) affirmed the examining attorney’s refusal to register the applicant’s sound mark in connection with a child’s bracelet designed as a personal security alarm.The TTAB found that the product did not serve to identify and distinguish the source of applicant’s goods from similar goods of others. The TTAB also found that the proposed sound mark was not registrable because it is functional – the use of the alarm is essential to the purpose of the applicant’s product.

The TTAB affirmed the decision of In re General Electric Broadcasting Co., Inc.,199 USPQ 560, 563(TTAB 1978) where it was found that when sounds are arbitrary, unique or distinctive so as to attach to the mind of the listener, registration may be possible. On the other hand, in order for common place sounds to become registrable they need to have acquired distinctiveness. For goods that make a particular sound in their normal course of operation, registration is possible only if distinctiveness is acquired. The applicant’s mark had not acquired distinctiveness.

Even in the absence of General Electric, the TTAB also discussed two other reasons why registration should be refused. Firstly, the TTAB reaffirmed that in order for a proposed sound mark to be registered there must be an association of origin or source, so that when a prospective purchaser hears the sound emitted by the product they would know it as the product. The applicants lacked evidence to show that prospective purchasers and listeners recognize and associate the sound with the services they offered. They did not show that the sound emitted from their product to be so distinctive that it could be registered without a showing of acquired distinctiveness. Secondly, the TTAB found that the proposed sound mark’s main characteristic was primarily functional because it was essential to the use or purpose of the article. The TTAB followed the four factor test laid utilized by the Federal Court Circuit (In re Morton-Norwich Products, Inc.,671 F.2d 1332, 213 USPQ 9). The factors used for analyzing functionality are:

1. The existence of a utility patent disclosing the utilitarian advantages of the design.To this the applicant argued that it applied for autility patent for its product and not for the sound. The TTAB rejected this argument; given that the patent application highlighted the use and description of a “loud alarm” as a key feature ofthe product.

2. The advertising materials containing significant positive references tothe design’s utilitarian advantages by its creator. In the case at hand, the evidence clearly demonstrated that the applicant’s advertising material focused mostly on the highly audible signal rather than on the design of the product itself.

3. The availability to competitors of functionally equivalent designs. The applicant argued that its particular combination of frequencies need not be employed by other makers of personal alarms since the thousands of frequencies within this range could be combined into a number of variations. However, the TTAB noted that the application only specified that the sound pulses would be between 1500 Hz and 2300 Hz, thus leaving the applicant free to combine sound pulses for any of the frequencies within this range of 1000 Hz to 3000 Hz, and depriving its competitors of many of those options if the sound mark were to be registered as described.

4. The facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. In the present case, this factor remained neutral, given that the sound emitted by the alarm did not affect the cost or complexity of the manufacture of the product.

Quite simply, the proposed sound was found to be functional and not entitled to registration because the use of the alarm is essential to the use or purpose of the applicant’s product.