Sound Trademark for Click of Eyeglasses Granted on Appeal

By Joseph Mandour on August 8, 2013

California Intellectual Property LawDespite an initial rejection by the USPTO, last Thursday the Trademark Trial and Appeal Board (TTAB) decided to grant eyeglass manufacturer Sutro Product Development, Inc. a sound trademark for the three clicks its glasses make while opening.

Sutro Product Development appealed the examining attorney’s rejection of its sound trademark to the TTAB in an effort to demonstrate that the three clicks are not functional elements of its design.  Trademark serial number 77/418,246 is now approved for publication and will continue to move forward toward registration.

The San Francisco-based eyeglasses manufacturer originally filed the trademark application in March 2008.  In its application, Sutro described the sound as “a series of three, regularly spaced, repeated clicks,” which are a result of the metal components of the eyeglass hinge striking each other.

Upon its initial rejection by the USPTO, Sutro modified the application to the Supplemental Register in January 2010.  Regardless, the USPTO rejected the sound for being a natural result of a functional part of the product, and therefore held that it was not able to be trademarked.

After another failed appeal to the examining attorney, Sutro then filed an appeal brief with the TTAB in November 2010.  After years of debate, the Board finally ruled on August 1st to allow the three clicks sound trademark to publish.

The criteria that the TTAB used to examine this application are known as “Morton-Norwich factors.”  In this case, the TTAB investigated whether any existing utility patents claimed the same invention.  The Board identified two relevant patents for glasses frames, but none claimed sound as an element of the design.

The TTAB also determined whether the company had advertised any utilitarian advantage of the three clicks sound.  In this area, the TTAB’s decision differed sharply from the conclusion the examining attorney had reached.  The examiner ruled that Sutro’s claims that its three clicks hinge is “10x stronger than a conventional hinge” constituted a boast of its utilitarian advantage.  The Board disagreed, finding that the company did not claim that the hinge was stronger due to its clicks.

The Board further determined that the sound did not simply result from a cheaper way of manufacturing the product than competitors.  These new interpretations of the three click sound by the TTAB cleared the way for acceptance of the sound trademark.

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