Duracell has a sound mark consisting of three musical notes for its batteries.
“A mark is deemed in use in commerce on goods when, among other things, ‘it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.’” In re Siny Corp., 920 F.3d 1331, 2019 USPQ2d 127099, at *2 (Fed. Cir. 2019) (quoting 15 U.S.C. § 1127).
Mere advertising, however, is not enough to qualify as a specimen of trademark use. Avakoff v. S. Pac. Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985), Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965); Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 513, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Anpath Grp., Inc., 95 USPQ2d 1377, 1380 (TTAB 2010) (“a clear ‘line of demarcation’ has been drawn between mere advertising materials, which have been found unacceptable as specimens showing use of a mark for goods, and point-of-purchase promotional materials which have been found acceptable as a display associated with the goods”).
Duracell does not place its sound mark on the goods or their containers, or on tags or labels affixed thereto. Rather, Duracell uses “audio messaging” with the sound mark in retail location where its batteries are sold.
Sound Specimens
For its trademark application, Duracell submitted specimens in the form of .mp3 files, accompanied by a declaration stating that the specimens comprised “audio messaging” played in stores where Duracell’s batteries are sold.
The three-note sound, referred to as the “slamtone,” is broadcast “as an inducement to purchasers to buy DURACELL batteries while shopping in the store.” Duracell argued its audio messaging is analogous to a traditional “shelf talker.”
But Duracell’s slamtone was used at the end of audio commercials playing overhead in a store. Not from a display at the point of purchase.
While “mere advertising” does not qualify as use in commerce, the TTAB found that Duracell’s in-store slamtone was “more than ‘mere’ advertising.” Specifically, Duracell’s slamtone is transmitted repeatedly in retail locations where it can be heard in the section of the store where DURACELL batteries are stocked for sale.
The TTAB cited In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979), noting that a trademark specimen could be point of sale material such as banners, shelf talkers, window displays, menus, or similar devices which are designed to catch the attention of purchaser sand prospective purchasers as an inducement to consummate a sale and which prominently display the mark in question and associate it or relate it to the goods in such a way that an association of the two is inevitable even though the goods may not be placed in close proximity to the display or, in fact, even though the goods may not physically exist at the time a purchaser views the display.
The audio messages featuring Duracell’s sound mark have been played “in tens of thousands of stores where Applicant’s batteries are sold, often multiple times per hour, and in total the ads in question, and the slamtone, aired more than 100 million times.”
Finding this audio messaging to be analogous to a point-of-sale display associated with the goods, the TTAB found the .mp3 specimen adequate to show use in commerce for the sound mark.
Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.