Trademarks are words, symbols or other devices that (1) identify the source of a producer’s goods and/or services and (2) distinguish the goods and services of one producer from those of another. This definition includes less traditional brand identifiers including sounds, colors, smells and even taste or flavor. As long as a color, smell, sound or taste functions as trademark, i.e. serves the two functions stated above, then it can be registered as a trademark. However, the trickiest part is providing the necessary evidence of use to the USPTO during registration.
When registering a trademark, the Applicant has a duty to show the USPTO examiner how the mark is presented to consumers. When registering a trademark used with the sale of goods, as opposed to services, simply using the trademark in advertising does not satisfy this requirement. If the trademark is not used on the goods themselves, or on the packaging, containers, labels or tags, then the Applicant must show some other direct association with the goods where they are physically being sold (the “point-of-sale”) in order to register their trademark.
Duracell ran into this problem recently. Duracell has been using three musical notes they call the “slamtone” in their advertising since 1974 and applied to register it as a trademark in 2021. In doing so Duracell submitted specimens showing the mark in use in television commercials. However, the examining attorney refused registration reasoning that Duracell’s specimens only showed the slamtone used in the Applicant’s advertising and the specimens submitted by Duracell did not show the slamtone used on the goods, their packaging, containers, labels or tags. In response, Duracell produced evidence of commercials including the slamtone being played in stores selling their products and argued that consumers heard the slamtone in Durcaell’s advertisements throughout the store, including where Duracell batteries could be found for purchase – their reasoning being that consumers were presented with the trademark at the physical location where they would see Duracell batteries for sale.
The Examiner maintained their refusal arguing that the commercials were played from overhead speakers, not at the display where the batteries are sold, and that there was no evidence that the commercials increased Duracell’s sales.
On appeal, the Trademark Trial and Appeal Board (the”Board”) noted that the Trademark Act does not require physical contact between the display carrying the trademark and the goods being sold. Rather the displays must be materials located at the point-of-sale that are designed to catch the attention of consumers and induce them to purchase the goods that are displayed with the trademark. The Board concluded that ads including the slamtone were played over 100 million times in stores in which the batteries were sold and they could be heard near shelves containing Duracell’s batteries offered for sale. As a result, there was a sufficient connection between the trademark and the goods being sold with the trademark that the Board reversed the Examiner’s refusal to register the slamtone. Note, the Board did not require that Duracell show the use of their trademark increased sales.
A lot of business owners would probably assume that a brand identifier used in commercials advertising a product for sale for over forty years would be easy to register, but as this case shows, the detailed rules one has to follow during registration can be rather difficult to navigate. Both the USPTO and the Courts have their own notions of how a trademark needs to be used in order to function as a trademark. This winds up being a rather critical issue during registration.