by Sean O’Connor
Guest Satyriconista
OK, so once I got over my disappointment upon realizing my mistake about which “bars” at&t meant, I realized that there might be a good blog post in it anyway. I’ve been looking for something appropriately snappy to make my debut on Legal Satyricon, ever since Marc Randazza foolishly invited me, as a fellow former “Masshole”,[1] to post at will. This topic also nicely took me out of my normal pro-IP comfort zone. Plus, now that Marc is busy moving to the land of Californication, someone has to pick up the slack for him.
What’s really at issue here is one of those rare times when a corporation truly may have recaptured something from the public domain. It’s not the “More Bars In More Places” slogan that did this, but rather at&t’s branding of the standard image of bars showing the strength of cell service in a given location. We’ve all relied on these for years, and the cry of “crap, I’ve got no bars here” is a familiar refrain even among grandmothers. The bars are purely functional representations of the strength of cell service and a standardized one at that. If anything were unworthy of being captured as a trademark, this should have been it.
But my buddy Dan Laster and I first noticed a few years ago that at&t was using an image of the standard bars in a branding way. Or at least, it seemed clear that they wanted consumers to start seeing it this way. We marveled at the sneaky chutzpah of at&t, but figured someone would ultimately oppose any federal registration of the bars as a mark.
However, one thing led to another and the hopeful foreplay of the SM assertion of state service mark rights soon led to the full score of the ® federal registration mark. I couldn’t believe it. How could the PTO allow this mark? Why didn’t competitors such as Verizon or Sprint oppose it? It was indeed a great mystery.
It turns out that it was pre-at&t merger Cingular that applied to register the “bars” mark or “signal strength icon” with the PTO back in 2004. And virtually all the other telecoms quickly protested the publication of the mark, which the PTO did with nary a clue as to how generic the mark already was.[2] Despite this, the PTO allowed the mark to issue, although it registered it only on the Supplemental Register (Serial # 78443400). Nonetheless, at&t has been using the “®” on the bars which could lead many members of the public to believe that at&t has successfully registered the mark on the Principal Register. At the same time, cancellation proceedings are underway.[3]
While I am aghast at the chutzpah of the attorneys who sought to register a blatantly functional, generic icon as a proprietary trademark, I reserve my highest scorn for the PTO. I get that it was likely presented as only a brand symbol for registration (“the mark consists of a series of bars of varying heights”). But to take a standard functional symbol such as the bars and let one company get exclusive rights, would be like allowing a single biotech company to get exclusive rights to the standard biohazard symbol. I tell my students that most of these stories of big bad corporations pulling things back out of the public domain are just a mischaracterization of what actually happened, or what the exclusive rights really cover. And I stand by this as a general matter. However, the PTO stumped me on this one and I think they really rogered the public and other cell service providers. Fortunately, the PTO seems to have come to its senses and is going to cancel the mark. But in the meantime, at&t continues to paste billboard all over the country with the “More bars in more places” campaign and the bars logo with “®” attached. I understand that until the mark is fully cancelled, they probably have a right to keep using the “®”. But I think it is shady and misleading at best, given the cancellation proceedings underway.
At the same time, I have to hand it to SBC—whoops, I mean at&t. First, they came into being as one of the Baby Bells spun off from the original behemoth AT&T in the 1984 antitrust break-up. Second, they grew fabulously as “SBC” and then acquired the remains of the original AT&T that had steadily gone downhill since the break-up, rebranding themselves “at&t” in the process (and reviving the behemoth in many ways). It was like the phoenix rising from the ashes – but with mock e.e. cummings humility. And then in a master stroke, they have appropriated the bars functional symbol from the public domain – and their competitors. You have to admire that kind of Machiavellian cunning. And it’s a testimony of the continuing power of high cost lawyers and blanket marketing campaigns. What’s next: appropriation of the standard keypad layout as a trademark?
[1] http://en.wikipedia.org/wiki/Masshole; http://massholeproshop.com/.
[2] See Nokia Letter of Protest available at http://tmportal.uspto.gov/external/PA_1_0_LT/OpenServletWindow?serialNumber=78443400&scanDate=2005041833352&DocDesc=Letter+of+Protest&docType=LOP¤tPage=1&rowNum=21&rowCount=28&formattedDate=13-Apr-2005.
[3] TARR Results available at http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78443400.
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Isn’t it just a “Taste Great!/Less filling!” campaign, just centered around the bars? Others can, perhaps, also graphically use bars (right in a novel setting?), just not the same phrase. This can be viewed as a discussion, as “taste great, less filling” is–a debate. What would stop a competitor from registerig: “90% of the country, sorry more bars/signal/reliability/coverage.”? Couldn’t they even choose “bars”? Choosing the word “bars” makes similar to the beer ad campaign, a debate.
If the bars and the phrase were part of the same mark, I wouldn’t mind so much. The issue here is that the graphic icon of the bars *by themselves* are a registered mark (not the word “bars”). Click on the “standard image of bars . . .” link in the post above to see the registered mark.
Nonetheless, there are definitely descriptive fair use and functionality defenses available to competitors who need to use the “signal strength icon” (the image of the bars themselves) for its normal descriptive and/or functional purposes. So that’s why cell phones are still, obviously, using the bars to indicate signal strength no matter who the service provider is. The question is where at&t is going to draw the line between what it considers to be functional or fair use descriptive use of the signal strength icons by other cell service providers (which I’ll address a bit more in a reply to the post by KWW below).
A few questions.
You wrote that “at&t has been using the “®” on the bars which could lead many members of the public to believe that at&t has successfully registered the mark on the Principal Register.”
How so? Doesn’t use of the circle R simply mean that the mark is registered with the USPTO on either Register? Do you suggest that owners with marks on the Supplemental Register not use the circle R?
You also wrote that “it is shady and misleading at best” for at&t to continue using the circle R symbol while cancellation proceedings are underway. Again, how so? Should I counsel my clients to stop using the circle R symbol when they are involved in a cancellation proceeding?
Finally, you wrote that “the PTO seems to have come to its senses and is going to cancel the mark.” What’s your authority for this? I see that Verizon has a current cancellation proceeding, but I don’t see anything that suggests the TTAB is unilaterally canceling the mark or that the TTAB has made any rulings in the proceeding.
I agree with the premise of your post, but the points I’ve outlined above have been bothering me.
Kevin
(I think you get the award for first Satyricon post with footnotes. Kudos!)
I don’t dispute that an owner of a mark registered on the Supplemental Register can use the circle R. For me, it’s more about the intent here (which admittedly does not change at&t’s rights). The question is: what is at&t planning on doing with this mark/brand as far as policing and enforcement? They have spent a lot of money on a massive multi-year campaign to brand around the signal strength icon. The early ads with objects stacked as bars (e.g. beach chairs) were kind of funny and clever. But then it became clear (to me at least) that they were trying to develop secondary meaning for the signal strength icon itself. And the upshot is that they did in fact register the icon by itself and are using it as a core mark for their brand. More recently, they seemed to have doubled down on the campaign, with new billboards everywhere, or at least in the cities I have been traveling to over the past few months. This recent activity is what prompted me to finally look into it.
So I see three things potentially going on, in no particular order of priority. First, at&t is nervous that the mark will be cancelled — and yes I may have gotten a little over optimistic about the cancellation proceeding in progress; it’s no guarantee the registration will be cancelled — and is getting maximum mileage out of the registration while it still has it. Second, and related to the first, at&t is preparing for a post-cancellation phase in which it will have to fall back to state law TM rights. But for that to be effective, it will likely need to show secondary meaning in the states it would like to assert the mark in. This campaign — and the extra “legitimacy” given to the mark by the current use of the circle R — could certainly go a long way towards that. Third, further evidence of secondary meaning could be helpful in the current cancellation proceeding, and any other subsequent challenges.
Let me be clear, I don’t begrudge anyone the full use of their legal rights. The issue is whether they are going to try to overreach their rights. I have counseled individuals who received TM infringement cease and desist letters that made it sound like a mark registered on the Supplemental Register had all the rights of a mark registered on the Principal Register — essentially bluffing and relying on the lay person’s unfamiliarity with the distinction. So I don’t put it past anyone to intentionally “leverage” a registration and overreach with it.
Here’s what it boils down to for me. at&t could legitimately have registered the mark as a defensive measure. In this case, at&t is simply trying to carve out a narrow protected space for its marketing campaign. But equally likely, at&t could have registered the mark with the intent of building broad rights to the icon and asserting them offensively. The issue is: who is cabined in their activities? I think at&t should be cabined and closely monitored in its use of the signal strength icon as a TM (and hopefully lose the mark altogether); the rest of the U.S. public should be presumptively free to use the icon in any way they want. But after all the time, money, and effort spent by at&t around this mark, it is likely that they will aggressively police it. Will they be completely candid in any enforcement activities about the limited rights associated with Supplemental Register registration? I’m not so sure about that.
Finally, since I am still suspicious that at&t/Cingular or their attorneys must have known the icon was a poor candidate for TM rights, I have a hard time seeing the registration as done in good faith. If it wasn’t, then I wouldn’t exactly be doubling down on the marketing campaign right now, which could turn out itself to be further evidence of bad faith, exploiting what might have been the original misleading of the PTO to register the mark in the first place (“gee, it’s just some random rectangles of varying lengths”). I don’t like to stir the pot on “fraud on the PTO” or “inequitable conduct” on either the TM or patent side, because I think such allegations are overused, but sometimes you gotta call it like you see it . . .
P.S. thanks for the kudos for FNs in LS. I’m still trying to get the hang of the blog format, yet I’m still so conditioned to footnote the crap out of everything from law review article writing. At the same time, there was something perversely satisfying about being able to drop a footnote to “Masshole” and the company that sells “Masshole” branded sportswear.
Sean,
Like Kevin, I’m sympathetic to your larger point, but I don’t think you’ve been completely fair to AT&T. You refer to fraud and “what might have been the original misleading of the PTO to register the mark in the first place (‘gee, it’s just some random rectangles of varying lengths’).”
However, AT&T never claimed the mark was arbitrary. In fact, in response to the examining attorney’s requirement that it state the significance of the mark, AT&T responded on 8/20/07 as follows:
“Others in the industry use icons with similarities to portions of applicant’s mark or to applicant’s mark in its entirety on the user screens for products, namely cellular telephones–and within user manuals for such phones–to indicate current signal strength by varying the height or number of bars within the icon. However, to the best of applicant’s knowledge, applicant is the only entity using the mark as an indication of source for telecommunications services.”
Michael
[…] this post at The Legal Satyricon, I see that AT&T has registered this five-bars design on the […]
Hi Michael:
I do realize that I’m being unusually harsh (for me) on this one. However, note that the OA response you reference only came about after: 1) Nokia’s letter of protest was filed; 2) the Acting Deputy Commissioner for Trademark Operations stated that it was “clear error” that the mark was published for opposition; 3) the examiner issued an OA rejecting the mark as merely descriptive; 4) at&t responded to the OA trying to argue that telecom services are completely different from telecom products like cell phones themselves (which is of course technically true, but is too clever by half); and 5) the EA issued yet another OA rejection saying the “service vs product” argument was unpersuasive and demanding that at&t respond as to what significance both the antenna symbol to the left of the bars has and the whole icon has to the telecom industry. Only at that point did at&t respond with the paragraph you quote. In other words, in no submissions from the original one in 2004 all the way until 2007 when the EA demanded the most clearly relevant information to the whole application, did at&t give any hint what widespread fundamental role the icon played in the telecom industry. The original application simply said “bars of varying heights”. The argument distinguishing cell phones from cell service is borderline sophistry: it’s true that the signal strength icon appears on the hardware itself, but *it is an indicator of the availability/strength of the service*. So it is of course a symbol directly linked to the service as well as the hardware.
In the end, this should have been one where the applicant says something like “can’t blame a guy for trying” and then quietly disappears to save dignity. Instead, at&t appears to have taken it back from outside counsel (who again were likely just following the client’s orders — I understand (but questions of when to say no arise as well)) and dug in its heels further.
Sean
those aren’t bars anyway, they’re columns. OK I’ve spent too much time making excell charts today.
[…] of Washington] School of Law Professor Sean O’Connor, guest blogging at Legal Satyricon, writes about AT&T’s trademark registration of the bars indicating cell phone signal […]
[…] the Supplemental Register? Not very, if you ask me, which is why I disagree with portions of Sean O’Connor’s post at The Legal Satyricon on the pending cancellation proceeding concerning AT&T’s five-bars […]