Subject: [NEXTEL-1] Re: Nextel Owns "Push To Talk" Re: Nextel Owns "Push To Talk"

From: [email-masked]
Date: Fri, 20 Jun 2003 09:54:55 -0400

-------- Original Message --------
   From: [email-masked]
Subject: Re: Nextel Owns "Push To Talk"

With all due respect to your lawyer bashing, my friend, take a closer look at what
you copied from the PTO for "Push To Talk".  Note that the registration is on the
SUPPLEMENTAL Register, not the PRINCIPAL Register.  Note the difference between
this one and the "PTT" application, which shows that "PTT" is being applied for
(but not yet granted) for the Principal Register.

The Supplemental Register is used when something CANNOT be registered on the
Principal Register (which refusal for the Principal Register can be for a variety
of reasons).  Being on the Supplemental Register does not convey the same rights
for the registrant as the Principal Register.  Rather, it is an acknowledgement
that indeed the registrant does not at this time fulfill the requirements for full
trademark protection, for whatever reason.  Here, it is probably (although I don't
have first hand knowledge of their situation) exactly what you've researched, i.e.
that the term has been used for many years in the industry and is DESCRIPTIVE of
the service, and not distinctive.

Marks which are merely descriptive are nonetheless eligible for registration on
the Principal Register if they have become "distinctive."  A mark's
distinctiveness shifts with time, its usage in trade, the owner's promotional
efforts, and its acceptance by the consuming public as an indicator of the goods
or services origin.  Any of these things, to name only a few, can be used to
demonstrate that a mark has "acquired distinctiveness" and is eligible for
registration on the Principal Register.  In addition, the federal trademark
statute, the Lanham Act (15 U.S.C. 1051, et seq.) provides that proof of
substantially exclusive and continuous use of a mark by the applicant, in
commerce, for five years may be prima facie evidence that a mark has become
distinctive (15 U.S.C. 1052(f)).

It is also important to note that a generic mark can never be, or become,
distinctive.

The Supplemental Register merely serves as a notice, without conveying additional
legal rights over the common law, that the registrant is utilizing the term.  It
MIGHT be a defensive strategy vis-a-vis Verizon and other newcomers that Nextel is
utilizing the mark to prevent Verizon, et. al. from attempting to trademark the
term themselves.

Thus, the summation is: the "Push To Talk" registration is pretty meaningless in
the grand scheme of things unless and until the term becomes identified strictly
with Nextel sometime in the future (which is kinda doubtful).  In that regard, it
would seem that they've had better luck with "Direct Connect", which you'll find
that they DO have a Principal Registration for, under File No. 78975071.

Now, if you want some REAL fun, do a search of other terms that Nextel has (or
attempted to) trademark, including "Pass It On", "Bring It", "Push To View", etc.

Alan T.

In a message dated 6/20/2003 3:39:09 AM Eastern Daylight Time,
[email-masked] writes:

> Nextel may not have kidnapped "PTT" yet, but it looks like they already
> have "Push To Talk" trademarked.
>
> I guess everyone needs to stop using Nextel's trademark "Push-to-talk"
> immediately.
>
> Perhaps they'll get 'God bless America' trademarke next?
>
> The first "old" book I grabbed was a COPYRIGHTED 1980 ARRL handbook and
> in 5 minutes found this term used on page 22-2. I'll bet thousands of
> prior usage by two-way radio or microphone manufactuera exusts plus
> millions of use of the term in other texts for at least 50 years.
>
> I thought you couldn't trademark a commonly used term, like 'apple pie'
> except if you 'styled' it in a way that was unque to your product or
> service, but I'm not a lawyer. (And lawyers wonder why somany people
> dislike them. ha!)
>
> >From Nick Ruark's original posting;
> -----------------------------
>
> " Nextel is preparing to defend its product. The company trademarked the
> phrase ``push to talk,'' preventing rivals such as Verizon Wireless from
> using it to describe their new phones. Nextel was granted ownership of
> the phrase in April after a 15- month review, according to the United
> States Patent and Trademark Office. Nextel also filed for a trademark on
> the acronym PTT.
>
> Nextel is now contacting companies to inform them of the push-to-talk
> trademark, said spokeswoman Audrey Schaefer. That may pose a marketing
> hurdle for competitors such as Verizon Wireless, which have publicly
> used the phrase. Verizon Wireless Chief Executive Officer Dennis Strigl
> in February said the company planned a ``push-to-talk product well
> before the end of the year."
> -------------------------------
>
> So everyone won't have to go searching, here's the US Patent and
> Trademark file info:
> ----------------------------
>
> Word Mark: PUSH TO TALK
>
> Goods and Services:
> IC 038. US 100 101 104. G &S: Telecommunication services, namely,
> providing voice, data,
> pictures, music and video via wireless networks.
> FIRST USE: 20030418.
> FIRST USE IN COMMERCE: 20030418
>
> IC 009. US 021 023 026 036 038. G &S: Hardware and software for use in
> communications
> networks, namely, Internet protocol and telecommunications network
> transmitters, receivers,
> converters, and routers which allow the user to send voice, data,
> pictures, music and video over wireless networks.
> FIRST USE: 20030418.
> FIRST USE IN COMMERCE: 20030418
>
> Mark Drawing Code: (1) TYPED DRAWING
>
> Serial Number: 78103382
>
> Filing Date: January 17, 2002
> Filed ITU
> FILED AS ITU Supplemental Register Date: April 22, 2003
>
> Owner (APPLICANT) Nextel Communications Inc. CORPORATION DELAWARE
> 2001 Edmund Halley Drive Reston VIRGINIA 20191
> Type of Mark: TRADEMARK. SERVICE MARK

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From: [email-masked]
Date: Fri, 20 Jun 2003 11:44:23 -0400

-------- Original Message --------
   From: [email-masked]
Subject: Re: Nextel Owns "Push To Talk"

In a message dated 6/20/2003 10:52:43 AM Eastern Daylight Time, [email-masked]
writes:

> I can tell you 'Handie-Talkie', &'HT' is a Motorola tm...
> Any judge who grants either of these tm's should be sent to jail...and
> Nextel's executives &attorneys right behind him for trying to do it...then
> Nextel can just go away like it should be...I'm sick of those crooks...
> Jim

Actually, as they are registered trademarks on the Federal Register (Handie Talkie
is at least, there are numerous "HT" trademarks for a variety of products so I
didn't take the time to narrow it down), it would not be possible to have a second
registration granted for the same type of good, product or service.  Similarly, it
would be impossible for Nextel (or any other company) to trademark "Walkie Talkie"
for these type of radios as that clearly is a descriptive term.  Of course, you
can register this type of word for another use.  For example, there is a "Walkie
Talkie" registration for an action figure.

Also, another way to get a registration on the Principal Register is to disclaim
the right to exclusive rights to use certain parts of the mark.  For example,
Nextel might be able to register on the Principal Register "Nextel Walkie Talkie"
if they specifically disclaim exclusive rights to the "Walkie Talkie" portion.
This is very common and we've done this for one of our food service clients many
times.

Alan T.