91 USPQ2d 1393 (TTAB June 12, 2009)
The TTAB sustained Nextel Communications, Inc.’s (“Nextel”) opposition to Motorola, Inc.’s (“Motorola”) application to register a “chirp” sound for cellular telephones and two-way radios. The TTAB held that Motorola’s “chirp” could not be inherently distinctive for cellular phones or two-way radios because both products make sound in their normal course of operation. Further, despite over a decade of use and “very substantial” sales, the TTAB concluded that Motorola’s chirp had not acquired distinctiveness and, therefore, could not be registered on the Principal Register.
Motorola manufactures a line of cell phones equipped with a proprietary “iDEN” technology that allows them to function as two-way radios. This technology is sometimes referred to as “push-to-talk” technology. Motorola’s iDEN-equipped phones emit an 1800 hertz “chirp” when the two-way-radio feature is used, indicating that a call is being held in two-way-radio mode. In 2003, Motorola fi led an application to register its chirp sound for “cellular telephones and twoway radios,” claiming a fi rst use date of April 30, 1996. Motorola has two U.S. customers for its iDEN phones, one of which is Nextel.
Among other things, Nextel offers what is sometimes referred to as “Direct Connect” service, which is a wireless-carrier service that allows subscribers to connect directly with each other using Motorola’s iDEN-equipped cell phones.
For over a decade, Nextel has expended “signifi cant sums” promoting its Direct Connect service through radio, television, and print media. A majority of Nextel’s nationally aired television ads feature the chirp sound emitted from Motorola’s phones. Its print advertisements also refer to the chirp.
Together, Motorola and Nextel have been in a long-standing business relationship, whereby Motorola manufactures phones that operate on Nextel’s carrier infrastructure and are sold through Nextel’s retail outlets. One aspect of the parties’ relationship was a “co-op advertising agreement,” through which Motorola partially reimbursed Nextel for advertising expenditures that met certain requirements. For example, to qualify for reimbursement, Nextel’s advertisements had to use Motorola’s MOTOROLA and stylized “M” trademarks. The advertisements were not required, however, to use the chirp.
In 2005, Nextel fi led an application to register the chirp, i.e., the same sound that Motorola sought to register, for various telecommunication services. Nextel’s application was suspended by the PTO based on a potential likelihood-ofconfusion refusal should Motorola’s application mature to registration. Nextel then filed an opposition against Motorola’s application on the following grounds: (1) Motorola has not used the chirp as a trademark in commerce, and (2) that the chirp is not inherently distinctive and has not acquired distinctiveness.
The first issue before the TTAB was whether Motorola’s chirp could be inherently distinctive. While the PTO published Motorola’s application without requiring a showing of acquired distinctiveness, the TTAB found this to be in error. Relying on its recent decision in In re Vertex Group, LLC, 89 USPQ2d 1694 (TTAB 2009), the TTAB concluded that sound marks for goods that make the sound in their normal course of operation can never be inherently distinctive. Motorola’s iDENequipped phones fall into that category because they emit many different tones, including call-alert tones, low-battery alerts, etc.
The TTAB then turned to the question of acquired distinctiveness. In support of its claim for acquired distinctiveness, Motorola argued that it has been manufacturing cell phones that emit the chirp since 1996, that sales (in dollars and units) of these phones have been signifi cant, and that it has expended “signifi cant resources” advertising and promoting the chirp for cell phones. In addition, Applicant relied on two consumer surveys that were actually commissioned and introduced by Nextel to support its claim that the chirp had acquired distinctiveness. Before beginning its analysis, the TTAB stated that it was “heavily infl uenced” by (1) the fact that cell phones are the type of goods from which consumers expect to hear various sounds during operation, and Motorola failed to show that its chirp is signifi cantly different from those sounds; and (2) the extent that others, including Nextel, use the chirp.
Nextel submitted testimony from its survey expert, Jacob Jacoby, to rebut Motorola’s acquired-distinctiveness claim. Jacoby conducted two mall-intercept surveys to measure whether Motorola’s chirp had acquired secondary meaning “among a universe of consumers who have cell phones with push-to-talk/ walkie-talkie features.” Although Nextel commissioned the surveys, Motorola relied heavily on certain results to support its claim, namely, that 60 percent of the first-survey respondents (and 72 percent in the second survey) associated the chirp with a single source of either goods or services. Motorola argued that a clear majority of 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 TTAB explained that the problem with Motorola’s analysis is that the results upon which it relies do not specify whether survey respondents associated the chirp with goods, such as Motorola’s cell phones, or services, such as Nextel’s carrier or retail-sales services. When asked specifi cally “With what company do you associate that sound?” 53% of respondents identifi ed Nextel and 1.5% identifi ed Motorola.
Motorola argued that responses to the question “With what company do you associate that sound?” violated the “anonymous-source” rule. Under the anonymous-source rule, all that is required to establish acquired distinctiveness is that consumers associate the mark with a single, albeit anonymous source. The TTAB found Motorola’s argument to be misplaced because the anonymoussource rule is intended for situations where a typical buyer would not know the corporate identity of the source. Over half of the survey respondents, however, identifi ed Nextel as the source associated with the chirp. This indicates, at the very least, that there is signifi cant consumer recognition of the chirp as being associated with a single, identifi able source.
Motorola offered evidence of continued use of its chirp in commerce since 1996, signifi cant advertising and promotional efforts (in the form of print, television, trade shows, product placement), and signifi cant sales to show acquired distinctiveness. The TTAB, however, was not convinced that consumers actually perceived the chirp as a source-identifying trademark. Moreover, many television advertisements featured Nextel’s name repeatedly and prominently. Because Nextel sells cell phones and carrier services, the TTAB explained that it is more likely that viewers of certain television ads would associate the chirp with Nextel, not Motorola.
This decision offers further insight into the burden of proof required to establish acquired distinctiveness for sound marks for products that make sound in their normal course of operation. Specifi cally, it suggests that signifi cant sales and promotional efforts may not be enough on their own to meet that burden.