Whether generic or proprietary, the phrase “push to talk” may become the words of war in the wireless industry in the next few years. As it stands today, Nextel Communications Inc. has claimed it has an exclusive right to trademark the phrase. Others disagree, noting the phrase has been around since World War II.
The U.S. Patent and Trademark Office has not given definitive approval to Nextel’s request to be issued the trademark. The iDEN carrier has received a final review of its trademark application with the federal agency, but that does not entitle the carrier to any exclusive claim to the trademark, according to the USPTO Web site.
Nextel sees the issue a little differently. “They have issued us the right,” said Audrey Shaefer, spokeswoman for Nextel. “It is our belief that we do have exclusive rights (to the phrase) for a host of reasons.”
Verizon, which recently launched its own walkie-talkie-like service and which calls it Push to Talk, disagrees. “They could not have such a claim,” responded spokeswoman Brenda Raney. “It has been a generic term since the 1940s.”
In its press release in June, Nextel claimed the USPTO “approved the registration of its (Nextel) trademark for its Push-To-Talk service.”
To back its claim, Nextel filed a lawsuit recently to stop Verizon Wireless from using the phrase for its walkie-talkie service.
But the application with serial number 78103382 has not yet been published in the agency’s official gazette, a condition for a company’s provisional claim to the trademark. Gazette publication opens the door for the public to dispute the claim, according to Jessie Marshall, USPTO trademark administrator. After publication in the gazette, two kinds of proceedings could follow-principal or supplemental. A principal proceeding results when the review is published for opposition, which gives a contesting company 30 days within which to file a dispute. If it is published for opposition, it means the applicant cannot claim it as a trademark until the matter is resolved by the agency.
In the case of a supplemental review, the company can claim it after it has been published, but it is subject to a cancellation proceeding. Nextel’s application is supplemental, which means the carrier can claim it when the gazette publishes the trademark. But that has not happened, which makes its claim to the PTT trademark appear untenable.
However, Marshall admits that the USPTO Web site contains a discrepancy on the status of Nextel’s claim, which portrays it as having passed a final review while still subject to opposition. On a different page, the application is described as “supplemental.”
Once the official gazette publishes the trademark, Verizon will have the right to challenge it in a cancellation proceeding under USPTO’s appeal board.
“It’s like going to court,” remarked Marshall and it involves testimony, deposition and sometimes an oral hearing. But no jury is involved. “The board will decide based on the paper records developed by both companies.”
The process can last years, said Marshall, explaining that the two parties will have to decide whether to continue the matter in court or ultimately bring it to the agency, which handles the process.
Explaining her company’s position, Shaefer said Nextel is the first company to use the label in its combination wireless phone and walkie-talkie products.
“We used the phrase first,” she said, adding that it has enabled the market to associate the name with the company. The company has been using the service for about 10 years and has acquired 11.7 million subscribers. Nextel also calls the service Direct Connect. Shaefer said Nextel used both Direct Connect to explain to the market “when we started what the capability was.” She added, “It is not unusual to have a brand name and a trademark for a service.”
PTT gained momentum in the past year as Nextel gained a considerable subscriber base, triggering interest in the vendor and carrier community to expand the scope of services and customer range within an agreed industrywide standard.
Nextel filed the application Jan. 17, 2002.
