Originally posted 2010-09-29 14:04:09. Republished by Blog Post Promoter

From 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.”

I would have suggested that too, at least initially.  Click at the link to see how Carl overcame that objection.
Edison's first phonograph
As for me, when I read “continuing to push against trademark law limitations” I reach for my revolver — “trademark law limitations” usually meaning “limitations on businesses’ ability to prevent competition by using fallacious trademark claims.”

But you’ve read this blog before.  Anyway, that is not the case here.  Rather, this is the good, clean, creative kind of push of trademark as a useful, pro-competitive tool that warms the cockles of LIKELIHOOD OF CONFUSION®’s notorious icy litigator’s heart.  It’s creative, good lawyering, and in terms of the purposes of trademark law, exhibits high fidelity.

By Ron Coleman

I write this blog.

3 thoughts on “Sounds original!”
  1. I think I would have sided with the USPTO’s examiner’s initial reaction… listening to that piece, my impression is of a fairly generic-sounding bit of “light-jazz” background music, nothing making any really notable impression on me that would serve as an indicator of source, such as more distinctive musical trademarks like the NBC chimes do.

  2. If he were arguing “.com” for protection as part of a website registration, I would side with the examiner, but as part of a business name, I think the analysis is a little different.

    As an analogy, “Apple” would not be protectable for a fruit seller but is for Apple Computers, because it has been separated from its descriptive use. And of course “patents” is merely descriptive, but “patents.com” as a business name is arguably protectable (IMHO) so long as no claims are made for its separate parts.

    From a musical standpoint, the intro is pretty generic and it’s hard to see how it would ever become recognizable enough to indicate source. But I don’t think that counts as a legal argument.

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