Patent Law

Trademark Rights for Sound Recordings

By Dennis Crouch

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.  

• Listen to the Oppedahl MP3 Sound Recording.  Perhaps of interest, the trademark office did not require any information on whether Oppedahl is the composer or copyright owner.  In an e-mail, Oppedahl indicated that his firm has a fully paid-up license in the work.
• More Information on the Registration.
• Listen to Oppedahl's Patent Law Lectures. (These are quite good).
• Professor Vanessa Rollins e-mailed with this link to a listing of many registered sound marks.

Full post as published by Patently Obvious on September 28, 2010 (boomark / email).