The Board overturned a refusal to register Duracell’s sound mark consisting of three musical notes for batteries, rejecting the Office’s position that the specimens of use (.mp3 files, example here) constituted mere advertising material. Instead, the Board ruled that transmission of the sound mark in retail locations where the goods are sold is “equivalent to” a display associated with the goods. In re Duracell U.S. Operations, Inc., 2023 USPQ2d 861 (TTAB 2023) [precedential] (Opinion by Judge Michael B. Adlin).
Section 45 of the Lanham Act provides that, for goods, a mark is in use in commerce if “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” and “the goods are sold or transported in commerce.”
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,” typically appears near the end of each advertisement, and is broadcast “as an inducement to purchasers to buy DURACELL batteries while shopping in the store.” Thus, Duracell argued, the audio messaging is analogous to a traditional “shelf talker.”
The examining attorney was unimpressed, pointing out that “[t]he commercials are playing overhead in a store, and are not coming from a display at the point of purchase.” and also noting the lack of evidence that the commercials played in the stores increased sales of the batteries or induced a consumer to purchase the goods.
The question, then, was whether Duracell’s audio messaging constitutes a “display associated” with its batteries. The Board acknowledged that “mere advertising” does not qualify, but it found that Duracell’s in-store messaging was “more than ‘mere’ advertising.”
Specifically, unlike most television, radio, newspaper, Internet, billboard or other types of advertising that consumers might encounter at home, in their cars or in other non retail locations, Applicant’s advertising/”audio messaging” is transmitted repeatedly (often multiple times per hour) in retail locations where the identified goods are displayed and available for purchase. It can be heard in the section of the store where the goods are located. In fact, according to [Duracell’s VP], the messaging/advertising is “clearly heard by shoppers at the shelves where DURACELL batteries are stocked.”
The Board reviewed several court and TTAB precedents regarding “displays associated with the goods” in a visual, rather than aural, context. It found particularly pertinent the standard laid out in In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979), which held that to qualify as a trademark specimen, the display must be:
essentially 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. (emphasis by the Board).
The Board found that the 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.” “Thus, Applicant’s audio messaging is analogous to a display associated with the goods.”
And so, the Board reversed the refusal to register.
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Text Copyright John L. Welch 2023.