by Sean O’Connor
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”, 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. 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.
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?
 http://en.wikipedia.org/wiki/Masshole; http://massholeproshop.com/.
 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.
 TARR Results available at http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78443400.