Are Artificial Exhaust Sounds the Next Beethoven?

By Donald R. Hageman, III and Jon Soifer, Sandberg Phoenix

High performance car aficionados admire the roar of 8, 10, and 12-cylinder engines. As these loud brutes approach obsolescence, car manufacturers including Stellantis, Porsche, BMW, and Ferrari are betting customers will want to keep making a commotion with the next generation of electric vehicles (EV). While exhaust sounds have been around since the dawn of the combustion engine, with the rise in EV sales automotive manufacturers are making a huge push towards artificial exhaust sounds.

Accordingly, within the world of IP law, globally, we likely will see a rise in companies attempting to trademark sound.

What is a sound trademark?

While trademarks are commonly known to protect logos, brand names and slogans there is a rare type of trademark protection – sound trademarks. Iconic sound marks, registered with the USPTO, that you have likely heard are Netflix’s opening sound (US Reg. 5194272), Law and Order’s “chung chung” (US Reg. 3137680), 60 Minute’s “ticking stopwatch” (US Reg. 4328490), or Homer Simpson shouting “D’OH” (US Reg. 3411881). Three things must exist for a sound to receive trademark registration.

A sound mark must:

– Be distinctive;

– Be unique; and

– Create brand awareness.

The Lanham Act, which codified federal trademark law in the U.S., does not explicitly discuss sound marks. Guidance is given by section 1202.15 of the Trademark Manual of Examining Procedure, which states that, to function as a source indicator, a sound mark must “assume a definitive shape or arrangement” and “create in the hearer’s mind an association of the sound” with the underlying goods or services. Sound marks are primarily found in the entertainment industry, by way of chime, intros, or pre-credit scenes. The question is then can an EV’s artificial exhaust sound fit into this sound trademark category?

Sound Marks and EV Exhaust Notes

The most recent case of an EV manufacturer attempting to register a sound trademark is with Porsche in the European Intellectual Property Office (EUIPO). Porsche recently filed a trademark registration application (EUTM Application 018795489) for the sound it developed for its electric vehicles (i.e., Taycan Turbo S). The EUIPO rejected in European application because the sound isn’t distinctive enough.

In its application to register the sound as a trademark, Porsche told the European Intellectual Property Office (EUIPO) that the “sound is futuristic, melodious, and has a certain tempo as well as motives and dynamics.” Furthermore, they claimed that it was “enough to evoke recognition” of the Porsche brand, noting that it “combines the typical features of a musical composition, namely dynamics structure and different pitches, and brings them together to create a memorable and unusual sound.” Porsche even went so as far as to compare its EV sound to that of the “opening motif of Beethoven’s 5th Symphony, the sound of KITT’s scanner from the Knight Rider television series, or the sound of the Lightsabers (US Reg. 3618321) from the Star Wars film series.” The EUIPO strongly disagreed rejecting the application stating that Porsche’s EV vehicle sounds are not distinguishable from any other vehicle sounds. The EUIPO asserted that the sound, which combines the acceleration noise of a finely tuned performance engine into the purr of electric energy, was not complex or distinctive enough, nor was it generated by the electric vehicle itself.

The fact that Porsche was not able to receive trademark protection for its EV sound does not mean that it is impossible to do so. Earlier this year, BMW received a European sound mark registration for one of its electric vehicles (EUTM Registration 18424124). BMW has also filed a US registration application for a different sound. (US App. No. 97257101). Porsche’s and BMW’s applications demonstrate that a new wave of sound mark applications in the form of EV exhaust sounds is likely on the way for both the USPTO and the EUIPO.

While comparing an artificial exhaust sound to a classical masterpiece like Beethoven’s 5th Symphony may sound outlandish, trying to protect a vehicle’s exhaust sound is not entirely a new concept. In 1994 Harley Davidson filed a US registration (US App. No. 74485223) for a for the sound of its motorcycles. In its application, Harley Davidson stated that the sound “consists of the exhaust sound of applicant’s motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use.” The US Trademark Office stressed that the feature could not serve as a trademark. The US Trademark Office stated that the functional element of the mark (the sound) is essential to the use or purpose, meaning, the sound Harley was trying to protect is a feature which is crucial to the “use or purpose” of the motorcycle in general. The distinction here is that Harley was trying to trademark a sound a combustion engine makes during use. With EV’s this is not the case; the sounds technically serve no function, and each could theoretically be curated to meet the requirements to receive registration as a sound trademark, as was done with BMW. (EUTM Registration 18424124)

Sound marks remain rare, only 475 sound marks (or about 0.012% of the 2.6 million registered marks within the US) have been registered in the US. EV manufacturers are currently filing an abundance of applications for artificial exhaust sounds further pushing the limits as to what can receive trademark protection.