Subject: [NEXTEL-1] Nextel trademark move needs context

From: [email-masked]
Date: Fri, 01 Aug 2003 16:28:20 -0400

Nextel trademark move needs context

Alan Tilles

Mobile Radio Technology 
Jul 1, 2003 

I was surprised by the hoopla around Nextel's application to register as a
trademark the term “Push to Talk,” both by Nextel as well as the land mobile
industry. Some members of the industry are now concerned about their continued use
of a term, which has been industry parlance for decades. A review of the
registration process might prove whether this is a tempest in a teapot.

On Jan. 17, 2002, Nextel filed an application to register the mark “Push to Talk”
with the U.S. Patent and Trademark Office. Nextel's application was filed under
the PTO's Intent to Use provisions, for use in connection with telecommunications
goods and services. These provisions permit prospective owners to file federal
trademark applications for marks without prior actual use of the mark. On April
22, 2003, Nextel filed proof that it had begun to use the mark. PTO records
indicate that on Aug. 5, Nextel will be issued a trademark registration.

One might question how registration of a familiar term might occur. However, a
closer review of the application identified by Serial Number 78/103382 reveals
that this mark will register on the Supplemental Trademark Register, not the
Principal Trademark Register. What does this mean, and what is the effect of this
registration?

The PTO maintains two distinct registers. The Principal Register is the one that
we typically associate with federally protected trademarks, McDonald's for
hamburgers, Chrysler for cars. Note that a mark might be registered to two
different companies when used in connection with different (and not confusingly
similar) products. Thus, there is a Federal Registration for Ace Hardware and Ace
Micro Brewed BBQ Sauce, each owned by different companies, because no one would
seriously confuse a hardware store with the maker of BBQ sauce and vice versa.
Registration on the Principal Register entitles the registrant to (among other
things) prevent others from using a mark to identify confusingly similar goods or
services.

Certain marks may not initially be eligible for registration on the Principal
Register. Primarily, these marks are descriptive of the goods or services. For
example, I would not be able to obtain a service mark registration for
“communications” for my two-way radio shop. However, I might be able to obtain a
federal registration for “Tilles Communications,” if I disclaim exclusive rights
to the descriptive word “communications.” It also might be possible to obtain a
Principal Registration for a descriptive mark if, at some point, that mark has
become distinctive with regard to my goods or services. 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.

In addition, the Lanham Act provides in certain cases 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, and thus,
eligible for registration on the Principal Register.

So, what do you do if you have a descriptive mark, but would like to potentially
garner some level of protection from future users? The PTO also provides a
Supplemental Register. Supplemental Registrations are virtually admissions by the
registrant that the marks contained therein are descriptive, and that the
registrant has no right to prevent use by prior users. Also, Supplemental
Registrations are not published for third-party opposition.

What does all of this legal mumbo jumbo mean at the end of the day? Nextel's mark
“Push to Talk” is a Supplemental Registration, which does not necessarily prevent
prior users from continuing to use that term to describe their products and
services. So, if you're a two-way dealer who's used this term since you got your
first soldering iron as a birthday present, it is most likely not problematic to
continue that use (everything here is fact-specific, so I hesitate to make
generalities). However, Nextel might keep identical marks from being used by more
junior users.

But, let's say that you have more cash than you know what to do with, and you are
mad as heck, and aren't going to take it anymore. What could you do? You could
file a petition with the PTO to cancel the Supplemental Registration.

A Supplemental Registration may be cancelled and removed from the register for a
number of reasons, one of which is if it is shown that the mark in question is
generic. “Generic,” in this sense, has several meanings. One test is if the word,
or combination of words, can be found in the dictionary. Or, if the average
consumer, who is potentially going to buy the product or use the service, would
not recognize the mark as being a trademark or service mark but would rather see
it as the identity of the good or service. “Linoleum” is an example of a term that
was once registered but has now become generic. Think about Xerox and Kleenex as
potentials, too.

Nextel's benefit from registration is the potential to restrict “Push to Talk”
from being used by “junior” users. And, for that reason, it may have been a smart
move for Nextel, in the face of increased competition in its market niche.
 
 http://iwce-mrt.com/ar/radio_nextel_trademark_move/index.htm

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From: [email-masked]
Date: Fri, 01 Aug 2003 16:32:43 -0400

Alan,

Good FAQ for the CO's (Confused Ones)

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