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If It Quacks Like a Duck...It Just Might Be a Trademark

Landslide: A Publication of the ABA Section of the Intellectual Property Law
July/August 2010

Matheson, Julia Anne , Naydonov, Anna B.

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In this article Finnegan partner Julia Anne Matheson and associate Anna Balishina Naydonov offer insight into some of the key challenges facing trademark owners in their efforts to protect and enforce sound marks in the United States.  Ms. Matheson and Ms. Balichina discuss how unlike more traditional trademarks consumers are not necessarily predisposed to perceive sounds as identifiers for the source of goods and services.  They go on to explain that to obtain protection, owners of sound marks must demonstrate either inherent distinctiveness or acquired distinctiveness however, there are not concrete guidelines on the question of what might qualify as "inherently distinctive" in the context of a sound but some general principles do emerge.  First, if the sound is emitted by a device in the normal course of its operation the General Electric, Vertex, and Motorola decisions all support the conclusion that the evidence of secondary meaning will be a prerequisite to protection.  Second, if the sound closely approximates one known in nature, there is a high likelihood that secondary meaning will be required to achieve protection.  Third, and finally, one should realize that the issue of functionality presents as much of an obstacle in the arena of sound marks as for more traditional product configuration. So make sure your advertising efforts tout your sound as a source identifier, rather than a functional feature of the device.

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