Wednesday, March 05, 2008

TTAB Rules that Motorola's 911 Hz Chirp Fails to Function as a Trademark for Two-Way Radios

Nextel successfully blocked Motorola's attempt to register a "911 Hz chirp" as a trademark for two-way radios, convincing the Board that the chirp sound fails to function as a trademark. Motorola's chirp may be described as follows: "an electronic chirp consisting of a tone at 911 Hz played at a cadence of 25 ms ON, 25 ms OFF, 25 ms ON, 25 ms OFF, 50 ms ON." Nextel Communications, Inc. v. Motorola, Inc., Opposition No. 91161817 (February 27, 2008) [not precedential].

Nextel contended that consumers encountered the chirp only "as an alert tone with a particular meaning” rather than as a source identifier. It asserted that Motorola offered no "look for" advertising and provided no evidence that it has used its chirp as a mark.

Motorola claimed that the chirp has been consistently used as a trademark since 1983, and that the chirp was developed "to perform two functions in its two-way radios: (1) to inform the user thereof that a channel is available for communication when the push-to-talk button is pressed; and (2) to serve as a trademark to identify applicant as the source of the radios."

The Board noted that the 911 Hz chirp is one of more than a dozen sounds emanating from Motorola's two-way radios, most of which sounds signify a function of the radios. [Motorola admitted that none of the other sounds is a trademark]. These tones "allow users to aurally recognize the operational features they denote without having to look at the radios during operation." [Note: the issue of functionality was not raised]. The radios of Motorola's competitors also emit various tones to signify various operations. Motorola does not advertise its radios by means of any broadcast media, and so potential customers do not hear the chirp in any traditional advertising.

The critical inquiry was "whether the asserted mark would be perceived as a source indicator." Motorola claimed that through "experiential advertising" at trade shows, customers get the product in their hands "so that they can hear the 911 Hz mark and understand its significance as both and alert tone and a trademark." The Board was not impressed.

"First, the hands-on demonstrations appear to promote the goods as a robust and reliable voice product. To the extent that the 911 Hz chirp is a feature of such demonstrations, its significance appears to be as an indicator of the reliability of the goods rather than as an indicator of source. *** Second, we are not persuaded by applicant’s claim that consumers will associate the chirp with applicant’s goods because such goods are also marked on every surface and at nearly every angle with applicant’s other word and design marks."

The Board pointed to the lack of evidence that the chirp was promoted as a trademark. Instead, Motorola's promotional materials and live demonstrations focus on the chirp "as an operational alert signal denoting the availability of a communication channel." In short, the Board concluded that the record did not support Motorola's claim of trademark status.

In a concurring opinion, Judge Bucher urged that both parties are applying to register alert tones as trademarks, which perhaps explains why the issue of functionality ("the chirping elephant in the room") was not raised here: i.e., "whether or not Motorola's exclusive use of the 911 Hz chirp is consistent with the preservation of effective competition among manufacturers and merchants of a defined set of these hand held wireless devices." After that issue is "thoroughly litigated before the appropriate tribunal, the focus should then turn to whether or not the feature actually functions as a mark."

He posits that an operational radio tone, "like flavor, color and scent," should never be deemed inherently distinctive. A registration should issue "only upon a substantial showing of acquired distinctiveness." "Look for" advertising and survey evidence "should help the proponent of registrability."

TTABlog note: Judge Bucher's position that an operational radio tone should be registrable only upon a showing of acquired distinctiveness became the law in In re Vertex Group LLC, 89 USPQ2d 1694 (TTAB 2009) [precedential]. [TTABlogged here].

Text Copyright John L. Welch 2008.


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