Friday, June 19, 2009

Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable

In February 2008, the Board sustained Nextel's opposition to Motorola's application to register a 911 hertz chirp sound as a trademark for two-way radios, finding that the sound fails to function as a trademark. (TTABlogged here). Nextel and Motorola returned to the TTAB in an opposition to Motorola's 1800 Hz chirp sound (listen here) for "cellular telephones and two-way radios," and Motorola lost again: on the ground of claim preclusion as to two-way radios, and as to cell phones on the ground that the mark is not inherently distinctive (as a matter of law) and has not acquired distinctiveness. Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009) [precedential].

Motorola's iDEN-equipped cellular phones have a two-way radio feature, referred to as "push-to-talk" or "walkie-talkie" capability. They emit the 1800 hertz chirp when the two-way feature is being used, to indicate to the user to "go ahead [proceed] or [that] the call has been completed" in the two-way mode. Nextel sells these Motorola brand phones.

Two-way radios: The Board began by looking to the 2008 decision involving the 911 Hz chirp for two-way radios. Although not pleaded, issue preclusion was raised in the briefs, and so the Board considered the pleadings as amended to include that issue. It found that all four requirements for issue preclusion as to two-way radios had been met: the issue of "failure to function" was fully litigated, the determination was necessary to the final judgment, and Motorola had a full and fair opportunity to litigate the issue. Therefore, Nextel was entitled to judgment that the 1800Hz chirp sound does not function as a trademark for two-way radios.

Cellular phones: In In re Vertex Group LLC, 89 USPQ2d 1694 (TTAB 2009) [precedential] [TTABlogged here], the Board ruled that a sound emitted by a product in its normal course of operation cannot be an inherently distinctive trademark. Motorola's chirp "falls into that category of sounds."

Motorola claimed acquired distinctiveness based on use of the chirp since 1996, significant sales of the phones, and significant expenditures for advertising and promotion. It also relied on two consumer surveys commissioned by Nextel - or at least on the first two of three questions in the survey.

Nextel asserted that Motorola's advertising did not focus on the trademark significance of the chirp, and it pointed to the survey results (including the third question), claiming that only 1.5 percent of respondents mentioned Motorola "as the single company with which they associated the [chirp]."

The Board observed that its determination as to acquired distinctiveness was "heavily influenced by the following facts:"

First, cellular telephones are the type of goods from which consumers would expect to hear various types of sounds emitted as they indicate various operational functions. Moreover, it is advantageous that the handset’s operational tones be different from each other so that the user will not be confused regarding what function of the handset is being activated. Applicant has not demonstrated that the chirp is [so] significantly different from other operational alert tones either emitted by applicant’s own iDEN handsets or competitors’ goods that it would be more readily perceived and recognized by consumers than other sounds made by the handsets. Second, another factor that strongly influences our determination as to whether applicant’s chirp has acquired distinctiveness concerns the extent that others use the chirp. Opposer, itself, uses the chirp in advertisements promoting opposer’s own services.

Motorola argued that the survey results showed that a clear majority of the survey respondents associated the chirp with a single source, and that "[s]o long as respondents identify a single source, correctly or otherwise, the mark is source-identifying." The Board disagreed with that assertion because it relied on only the first two questions of the survey, which do not distinguish between goods and services.

The survey respondents are never asked what goods or services they associate with the chirp; however, those who associated the chirp with one company were next asked Question 1c. (“With what company do you associate that sound?”). The survey respondents who answered these questions and identified “Nextel” (or one of its affiliated companies) represent 53 percent of all survey respondents, compared to 1.5 percent who identified “Motorola.”

The survey did not ask "with what goods and/or services are you associating this sound?"

Motorola argued that survey question 1c was improper because it violated the "anonymous source" rule, but the Board turned a deaf ear to that contention:

"[t]he anonymous source rule is directed to the situation where a typical buyer would not know the corporate identity of the source." Tone Bros., 28 F.3d at 1203, 31 USPQ2d at 1329 (citations omitted). That is not the situation here; that is, we cannot conclude that the source being associated with the chirp is “anonymous.” Rather, over half of the survey respondents were able to identify opposer (or its affiliates) as the source being associated with the chirp. At the very least, this indicates that there is significant consumer recognition of the chirp as being associated with a single, identifiable source of goods or services. *** And, while we make no finding herein that the chirp has acquired distinctiveness in connection with opposer’s services (that issue is not before us), we do not discount that numerous survey respondents identified opposer as the source associated with the chirp. There is no evidence to suggest that the survey respondents were somehow incorrect, confused, or that they were mistakenly identifying opposer as the source for applicant’s cellular telephones.

And so the Board concluded that the survey did not support Motorola's claim of acquired distinctiveness.

Turning next to the promotion and use of the chirp, the Board found that "applicant has not used the chirp in commerce as a mark on its cellular telephones" and that "promotional efforts involving the chirp, whether commissioned by applicant or others, do not prove that the chirp has acquired distinctiveness for applicant’s cellular telephones."

Although Motorola's sales figures were substantial and impressive, "what is missing from the record is evidence corroborating applicant's characterization of these numbers, namely, that the cellular telephones were 'sold under the chirp mark' or that the chirp was used in such a way that it would be recognized as a source-identifier for applicant's goods in advertisements."

Most damaging to Motorola's 2(f) claim was the evidence establishing that opposer extensively used the chirp in advertisements for its services, for nearly as long as Motorola. This contemporaneous use a least rebuts Motorola's contention of substantially exclusive use and, "along with other deficiencies noted," defeats Motorola's 2(f) claim.

And so the Board concluded that Motorola did not establish acquired distinctiveness, and the Board therefore declined to reach that claim that Motorola has not used the chirp as a trademark.

TTABlog note: I asked my go-to guy on surveys, Hal Poret, for his comments on the survey issue(s). He said this:

Applicant's criticism of the Jacoby survey for asking respondents what company they associate the chirp with was misplaced. It is standard survey practice to ask respondents to name the single source associated with a mark, in order to ensure that respondents are not merely speculating when answering that a mark comes from only one source but are indeed thinking of the true source (whether they can name it or not).

Had the respondents been asked to identify the goods or services they associated with the chirp, maybe Motorola would have benefited. In theory, if respondents had identified phones, Motorola may have been able to use the survey as evidence that the chirp has become associated with Motorola's goods, even if consumers were incorrect or unclear about which company puts out those goods. However, in the absence of such a question, the 53% rate of respondent association of the mark with "Nextel" compelled the Board to reject the survey as evidence that the chirp has acquired distinctiveness for Motorola's phones.

TTABlog note: Pam Chestek, at her Property, intangible blog, probes the ownership issue in her posting, Who Owns the Chirp? Nextel has its own application on file to register the chirp. As Pam notes, this spat is not likely to end soon.

Text Copyright John L. Welch 2009.


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