Trademark Rights for Sound Recordings

Carl Oppedahl lost his case to register the mark “patents.com.”  However, that setback did not dissuade him from continuing to push against trademark law limitations. 

Recently, the USPTO issued a trademark registration certificate for his “sensory mark.” The mark consists of a sixteen-second musical introduction that Oppedahl uses for his recorded lectures on patent law practice. 

During the trademark prosecution, the USPTO examining attorney initially suggested that "due to the length of the proposed mark, consumers may consider the sound to be a mere entertaining prelude to the sound recording, more suitable as a copyrightable work than as a trademarkable source indicator."  Oppedahl responded by pointing-out that the PTO had registered the THX sound recording [THX.MP3] which is apparently 25–seconds in length as registered.  I recently (and unsuccessfully) attempted to use a similar argument when pulled-over for speeding.  Apparently, I have no right to speed just because others speed without getting caught. 

The USPTO has registered a number of sound marks, including the NBC chimes in 1972.  Harley Davidson eventually withdrew its application to register a mark on the sound made by the roar of its V-Twin engine.  

 

13 thoughts on “Trademark Rights for Sound Recordings

  1. The genius chained to the official table, should die or go mad, in the same way, as the person with a mighty constitution at sedentary life and modest behavior dies of an apoplectic seizure.

  2. 1. Contributory trademark infringement
    I think there is a trademark difference between me taking action to play to the Oppedahl MP3 Sound Recording to hear it vs. Oppedahl himself taking to play the Oppedahl MP3 Sound Recording so that I hear it. If that is the case, then PatentlyO is headed down a contributory trademark infringement path by encouraging others to “Listen to the Oppedahl MP3 Sound Recording.”

    2. Senses trademarks
    The traditional five senses are sight, hearing, touch, smell, and taste and it would be interesting to see something on PatentlyO about the efforts to trademark touch, smell, and taste.

    3. Still unimpressed
    Oppedahl, you still are traveling down paths others have taken (attempting to trademark something heard, trademark somethnig on the visual boarder “patents.com.”) Now, if you try to trademark something along the lines of one of pain, balance, joint motion and acceleration, sense of time, or magnetoception (direction sense), (see link to en.wikipedia.org ), then we can talk about being impressed.

  3. As a retirement present to himself, partner is out driving his new Corvette. Since there is no traffic, he opens it up to 90. When he sees the flashing lights in his rear view mirror, he decides to outrun the cop. When he realizes how foolish that is, he pulls over.

    Cop: OK, what’s the hurry?
    Partner: 15 years ago my wife ran off with a cop. When I saw the flashing lights, I thought you were bringing her back.
    Cop: Best excuse I ever heard. Have a nice day.

  4. Andrew Dhuey: With this registration, consumers of online patent law lectures will know that a certain modern jazz intro means it’s an Oppedahl lecture.

    Which is great, because presumably they hear the jazz intro before making the buying decision, and this way they know exactly what they’re getting. I’m not sure how else it might reasonably be considered a source indicator.

    Dennis: Apparently, I have no right to speed just because others speed without getting caught.

    I imagine your conversation with the policeman went something like this.

    DC: But those other guys are speeding too, and you didn’t ticket them!
    Cop: Ever go fishing?
    DC: Yes, but what does that…
    Cop: Ever catch all the fish?

    I’m not sure why the “you made this mistake once before, so it’s only fair” argument is a winner, particularly when the rejection wasn’t based on sounds being inherently non-statutory. Sure, Harley gave up on the sound of its exhaust (not the engine, actually), but what’s to stop Toyota from registering the sound of the Prius engine not running?

  5. With this registration, consumers of online patent law lectures will know that a certain modern jazz intro means it’s an Oppedahl lecture. I’m going to start a competing series, Mr. Oppedahl, but don’t worry — I’ll use a substantially different Afro-Cuban jazz intro. Maybe I can get Omar Sosa to write something for me.

    But seriously, I too have enjoyed the Oppedahl lectures.

  6. I recently (and unsuccessfully) attempted to use a similar argument when pulled-over for speeding.

    Dennis, you need a better lawyer. 😉

  7. Dennis, I hope you were joking.

    You should never try to explain yourself when you are pulled over by a police officer. As you know, your act of arguing that others were speeding could be an admission that you were speeding.

    For the trademark issue:

    Although copyright would be ok to protect the musical recording, if Oppendahl is known for the musical recording, wouldn’t he have a good argument for secondary meaning? Perhaps, a market survey on this account could be good for him (although this would be a tremendous waste of money).

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