Trademark Double Dog Dare: Do Your Rendition Of Tarzan Yell

Did you know that the Tarzan yell is a registered trademark? So is the Looney Tunes theme song. And Homer Simpson’s “D’oh!” Surprised? You shouldn’t be. People have been trademarking sounds and music for ages. It just hasn’t been very common until now. But, dear readers, applications for sound marks, like so many other issues in intellectual property are on the rise. Last week, Mr. Carl Oppedahl obtained registration for a 16 second Jazz ditty (Trademark Registration Number: 3853036). To which I respond: “So what?” But some folks in the blogosphere are apparently none too pleased with this. This is because they are confusing copyright and trademark. Again. Sigh. OK, let’s go.

Trademarking a sound or series of sounds is really not that hard to do. The Trademark Manual of Examination Procedure (“TMEP”) §1202.15 tells us “A sound mark identifies and distinguishes a product or service through audio rather than visual means.” OK. That’s fairly straightforward. We all know that in order to be eligible for trademark protection, a mark has to be unique, arbitrary, or distinctive and it has to function as a source identifier. This means the consuming public will see that mark and automatically know that it is the brand for a particular product. For example, I don’t need to tell you that Nike sells sporting goods because based on just hearing the word “Nike” you already knew that. That’s a source identifier and it’s distinctive of a particular sporting goods company as compared to all other sporting goods companies. What is meant by arbitrary, unique or distinctive is that a mark can’t just say what the goods are or merely describe them. For example, you can take a regular word and use it as a mark for something totally unrelated, like Apple Computers, which is totally OK. However, just using the words “Blue Jeans” to describe your blue jeans company would never work because it describes the product. “Levis” totally works because the name itself doesn’t describe the product. It’s arbitrary because it doesn’t exist in the English language other than to describe a blue jean company. Make sense?

Descriptive marks contain adjectives like “blue” and can function as trademarks, but that’s a lot harder to do. We talked about distinctive a second ago. A descriptive mark has to be pretty distinctive to get trademark protection, meaning that even though it describes the product, it is so well known by the public that they assume the descriptive word refers to a particular brand. In our example, the public would hear “blue jeans” and not just think of any pair of blue jeans, they think Blue Jeans Brand blue jeans. Coppertone tanning oil was able to pull this off. Finally, a generic mark is a word that just says what the product is. Apple brand apples or blue jeans brand blue jeans would never fly with the USPTO. This is because allowing a person to trademark “blue jeans” would preclude all other purveyors of blue jeans from telling people what they sell. Generic words can never ever ever in a million years be trademarks. In big fancy pants legalese, that’s known as a “restraint on trade”. The FTC frowns on that. Make sense? Good.

OK. Here’s the point of today’s musings. Sounds can be registered so long as they meet the same requirements we just talked about. A sound mark can be a series of tones or musical notes, with or without words, and wording accompanied by music. The only thing is that the requirements for distinctiveness for a sound mark are a bit higher. This is because it would be kind of stupid to let someone register a mark (thus precluding EVERYONE ELSE from using it) for, say, a barking dog or an alarm clock without a requirement of showing that the public recognizes that particular sound of a barking dog as a source identifier. But that’s pretty much it. Sounds can be trademarks just like everything else, end of story. Sort of.

Last week, the blogosphere was all a twitter (pun intended, of course) when Mr. Oppedahl’s Trademark Registration Number: 3853036 popped up. *Gasp* it’s a 16 second jazz song!!!!!!! The horror! The shame! The nerve of some people! Folks, this is not that big a deal. I know we’re all a little hyper these days with troll activity on the rise, but this is nowhere near troll activity. News flash update- people have been trademarking sounds for years. Yes, dear readers, that includes songs, even the 16 second jazz ditty kind, so simmer down. Don’t believe me? Sound trademarks are so elemental that the USPTO uses them as a fun way for kids to get excited about trademark law. No, I’m not kidding. But, for your listening enjoyment, here’s Mr. Oppedahl’s song.  He uses it to introduce his lectures on patent law.

During prosecution, the Examiner rejected the mark at first. This was not because sounds can’t function as trademarks, but because (allegedly) Mr. Oppedahl did not properly show the song functioning as a trademark and the proposed sound mark was too long to function as a source indicator. In response, Mr. Oppedahl pointed out that the specimen was in the correct format as per USPTO requirements, provided the musical score, and successfully overcame the rejection based on the song length by citing to other, longer, sound trademarks. The trademark issued in due course. Done deal. Despite the blogosphere’s indignation, there is nothing precluding Mr. Oppedahl’s song from functioning, or being registered as, a trademark. I’ve noticed some people apparently taking issue with the fact that the USPTO didn’t require him to show he is the composer or copyright owner. This is because the USPTO doesn’t care. Remember, kids- trademark and copyright are two different things ruled by two different bodies of law and filed in two different offices.

I’d be willing to bet that one of two things happened. Mr. Oppedahl paid someone to write the song for him and retained the copyright (under the works made for hire doctrine. But that’s another topic for another day). Or, more likely, he just took a license for the purpose of using it with his lectures. Mr. Oppedahl isn’t trying to claim that he owns the music with his trademark. He’s saying it’s a source indicator for his lecture series. So why should the PTO care? The trademark registration doesn’t mean Mr. Oppedahl can stop all uses of the song- he’s just saying no one else can use it to introduce their lecture series. Either way, a trademark infringement action would be ruled by trademark law, and a copyright infringement action would be ruled by copyright law, and the standards are very very different. Remember, you can have different forms of IP protection for the same thing. If Oppedahl wanted to sue someone for trademark infringement, he would have to show confusion in the public as to the source. If he wanted to sue for copyright infringement he would have to show first that he actually owns it, and then he would have to show copying, access, substantial similarity, etc.

Here’s the deal. Remember how we talked about that in order to obtain registration for a sound, the proposed sound must still pass muster under the PTO requirements? That means it has to have a use in commerce, and it can’t be generic or descriptive. Could someone explain why Mr. Oppedahl’s mark doesn’t meet the requirements? Could someone explain why the Examiner got it wrong in this case? Neither could I. But here’s the thing. You can register a trademark all you want –that don’t mean it’s gonna do you any good. A trademark derives its strength from consumer recognition, not the phenomenal cosmic power of the USPTO. So…meh. It looks like Mr. Oppedahl is working to achieve consumer recognition. He is using his mark properly and he went through all the necessary channels to obtain registration, so tell me again why it’s a problem? Normally I would have stopped looking after taking a look at the prosecution history and found a more incendiary topic to blog about, but this was just waaaaay too much fun researching. I’ve been whistling the Tertris theme song for two days now (Elorg Company owns that one). I told you earlier the USPTO uses sound marks to get the kiddies excited. If you didn’t believe me or just want to have some fun check this out the Trademark Soundex, brought to you by the USPTO.

That is all, dear readers. You are now free to move about the country.


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Join the Discussion

7 comments so far.

  • [Avatar for Nick Gold]
    Nick Gold
    February 11, 2011 07:20 pm

    LEVIS is a bad example of an arbitrary or fanciful trademark. That’s because the mark is LEVI’S, and once described denim overalls belonging to a man named Levi Strauss. They were his, Levi’s, denim overalls.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    October 8, 2010 11:55 am

    that would make for a very definite claim.

    Indeed it would.

  • [Avatar for IANAE]
    October 8, 2010 11:12 am

    So who is right? The patent examiner that says a Tarzan yell is indefinite or the trademark examiner that says it’s distinctive?

    Why can’t they both be right?

    Distinctiveness and definiteness aren’t the same thing. If you asked ten different kids on swings to do a Tarzan yell, you’d get ten different yells. If you asked ten different kids on swings to do a yell, you’d have to appeal to a person’s judgment to decide whether each one was a “yell like Tarzan”, and reasonable people would disagree on the scope of the claim.

    Now, if you claimed a yell as described in the actual Tarzan yell trademark registration, viz: “a yell consisting of a series of approximately ten sounds, alternating between the chest and falsetto registers of the voice, as follows – 1) a semi-long sound in the chest register, 2) a short sound up an interval of one octave plus a fifth from the preceding sound, 3) a short sound down a Major 3rd from the preceding sound, 4) a short sound up a Major 3rd from the preceding sound, 5) a long sound down one octave plus a Major 3rd from the preceding sound, 6) a short sound up one octave from the preceding sound, 7) a short sound up a Major 3rd from the preceding sound, 8) a short sound down a Major 3rd from the preceding sound, 9) a short sound up a Major 3rd from the preceding sound, 10) a long sound down an octave plus a fifth from the preceding sound”, that would make for a very definite claim.

  • [Avatar for Blind Dogma]
    Blind Dogma
    October 8, 2010 11:06 am

    Alas, I must offer a second correction this morning.

    The application does have proper reference for a Tarzan-type yell. Here the examiner seems to conflate broadness with definiteness, as the type of yell is clearly understood, while the examiner’s being correct in that every user would inherently have a different Tarzan yell merely indicates breadth.

  • [Avatar for Blind Dogma]
    Blind Dogma
    October 8, 2010 11:00 am

    Sorry Mark, I misread your post. Clearly, the applicant can reference the distinctiveness as already determined by an official agency of the government (which would soundly defeat any official notice taken by the patent examiner).

    Regarding the narrowing amendment – Without even reading the specification, I would wager a fair amount that there would be 112 issues to deal with. Chances are not good that the original application as filed included the basis for the added limitaion.

  • [Avatar for Blind Dogma]
    Blind Dogma
    October 8, 2010 10:09 am

    Mark, why is a trademark examiner conducting a reexam?

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    October 8, 2010 07:56 am

    Once upon a time, there was a patent on a method to swing on a swing (US 6,368,227

    Claim 1 read:
    1. A method of swinging on a swing, the method comprising the steps of:
    a) suspending a seat for supporting a user between only two chains that are hung from a tree branch;
    b) positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch;
    c) having the user pull alternately on one chain to induce movement of the user and the swing toward one side, and then on the other chain to induce movement of the user and the swing toward the other side; and
    d) repeating step c) to create side-to-side swinging motion, relative to the user, that is parallel to the tree branch.

    The USPTO Director was not amused when the patent issued. He ordered a reexam (serial number 90/006,289) citing new prior art. The Applicant then narrowed the claim to include:

    “ and yelling like Tarzan while swinging on the swing”

    Then it was the Examiner’s turn to not be amused. The claim was rejected as being “indefinite” . Said the Examiner, “Applicant should note that every user would inherently have a different Tarzan yell.”

    So who is right? The patent examiner that says a Tarzan yell is indefinite or the trademark examiner that says it’s distinctive?