James P. Flynn, Managing Director of the Firm and Member in the Litigation and Employment, Labor & Workforce Management practices, in the firm’s Newark office, authored an article in ILN IP Insider, titled “Full of Sound and Query, Signifying Something: Recent Noise Over Acoustic Trademarks.”
Following is an excerpt:
“Leo the Lion has been the most regular star of MGM Pictures since it was founded on this day in 1924, and his roar is probably the sound most commonly associated with the studio.” –Kat Eschner, The Story of Hollywood’s Most Famous Lion (2017)
“There’s no roar quite like a Nittany Lion’s!” –Penn State Football @PennStateFball on 12/7/2020
So, there you go—Metro-Goldin-Mayer and Pennsylvania State University are two different entities each associated with a distinctive roar connected to their institution. They are marketed through different, yet related, channels of trade (sports and entertainment, which were melded together as ESPN’s original name). The MGM roar and the Nittany Lion roar are certainly not identical, but they might be considered confusingly similar, should one ever need to distinguish or compare them. (I am unaware of any reported comparison, but I did find the latter compared to a toilet flushing and have seen the former’s trademark suffer indignities at times too). I start with MGM and Penn State, not because MGM’s registered trademark and Penn State’s common law one are at odds, but because they are two well-known acoustic, or sound (or auditory), marks that can help us understand those sounding off recently about such non-traditional trademarks. That noise includes this one, which is “the sound made by a drinks can being opened, followed by a silence of approximately one second and a fizzing sound lasting approximately nine seconds,” according to Ardagh Metal Beverage Holdings Gmbh & Co. Kg v. European Union Intellectual Property Office, T-668/19. The uproar also includes numerous articles by diverse scholars and various bloggers expressing a renewed interest in sound marks in many countries.
The object then is to hear out all sides, and offer some thoughts on the recent clamor around acoustic marks and the questions that they present. Every sound trademark seems not only to signify something but to raise a question or two as well. Hence, the title of this piece and the discussion below.