Nextel trademark move needs context
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.
