Nextel Communications, Inc.v.Motorola, Inc.

Trademark Trial and Appeal Board

Feb 27, 2008

No. 91161817 (T.T.A.B. Feb. 27, 2008)

Oral Hearing: August 22, 2007
Mailed: February 27, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nextel Communications, Inc.

v.

Motorola, Inc.
_____

Opposition No. 91161817
to application Serial No. 78235618
_____

John L. Stewart, Jr. of Crowell & Moring, LLP for Nextel
Communications.

Thomas M. Williams of Brinks Hofer Gilson & Lione for
Motorola, Inc.
______

Before Bucher, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
An application has been filed by Motorola, Inc. to
register on the Principal Register a sound (hereinafter
“chirp”) 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
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91161817
2
as a mark for “two-way radios” in International Class 9.1
Nextel Communications, Inc. has opposed registration
under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052 and 1127, on the following grounds, as amended:
(1) that as used by applicant on the goods in commerce, the
chirp fails to function as a mark; and (2) that even if used
as a mark, the chirp is not inherently distinctive and has
not acquired distinctiveness. Applicant, in its amended
answer, denied the salient allegations of the notice of
opposition. In addition, applicant asserted the following
affirmative defenses: that opposer lacks standing to oppose
the subject application; and that its chirp has acquired
distinctiveness.2
The Record
The record consists of the pleadings and the file of
the involved application. In addition, during its assigned
testimony period, opposer took the depositions, with
accompanying exhibits, of the following individuals:

1 Application Serial No. 78235618 was filed April 9, 2003,
alleging May 6, 1991 as the date of first use of the mark
anywhere and in commerce.

2 In addition, applicant asserted as an affirmative defense that
opposer’s amended notice of opposition fails to state a claim
upon which relief can be granted. However, inasmuch as applicant
did not file a motion to dismiss under Fed. R. Civ. P. 12(b)(6)
challenging the sufficiency of the amended pleading, such
affirmative defense will be given no consideration. See
generally TBMP §503 and the authorities cited therein.

Opposition No. 91161817
3
Henrick Rasmussen, Radio Systems Manager of Durham, North
Carolina; Thomas Hoyes, an employee of opposer; and Dr.
Jacob Jacoby, a survey rebuttal expert. In addition,
opposer filed notices of reliance upon the following: the
file history for opposer’s application Serial No. 78575442;
applicant’s responses to certain of opposer’s
interrogatories, requests for admission and requests for
production of documents; printed publications available to
the general public; portions of opposer’s discovery
deposition of applicant’s Rule 30(b)(6) witness, David
Klein; and potions of applicant’s discovery deposition of
opposer’s Rule 30(b)(6) witness, Allison O’Reilly.
Applicant, during its assigned testimony period, took the
depositions, with accompanying exhibits, of the following
individuals: David Klein, applicant’s Portable Marketing
Manager, Radio Systems Division; and Dr. Michael Rappeport,
a consumer survey expert. In addition, applicant filed a
notice of reliance upon the following: certain of opposer’s
responses to applicant’s interrogatories; and portions of
applicant’s discovery deposition of opposer’s Rule 30(b)(6)
witness, Allison O’Reilly.
Both parties filed briefs, and opposer filed a reply
brief. In addition, counsel for both parties presented
arguments at an oral hearing held before the Board on August
22, 2007.
Opposition No. 91161817
4
The parties have designated portions of the record as
“confidential.” Although the confidential testimony and
evidence play a significant role in determining the issues
under consideration herein, we are mindful that such
materials were introduced under seal. Thus, while we are
privy to this testimony and evidence, we will refer to it in
only a very general fashion. Such materials, had we
disclosed them in this opinion, would assist any reader
beyond the parties to better understand our reasoning in
reaching our decision.
Evidentiary Matters
Applicant has sought to exclude certain evidence
introduced by opposer, namely, opposer’s second notice of
reliance upon the discovery deposition of its Rule 30(b)(6)
witness, Allison O’Reilly, as well as the documents
introduced as Exhibit F in opposer’s first notice of
reliance. In additions, both parties have raised a number
of objections directed toward the probative value of their
adversary’s testimony and evidence.
After careful examination of the record in this case,
we have determined that none of the evidence sought to be
excluded is outcome determinative. Given this fact, we see
no compelling reason to discuss the objections in a detailed
fashion. Suffice it to say, we have considered all of the
testimony and evidentiary exhibits submitted by the parties.
Opposition No. 91161817
5
In doing so, we have kept in mind the various objections
raised by the parties, and we have accorded whatever
probative value the subject testimony and exhibits merit.
The Parties
Applicant is a manufacturer of, inter alia, two-way
radios. Applicant’s two-way radios utilize a secure network
and are used by and marketed to law enforcement, military,
fire and other emergency responders, as well as vehicle
fleet consumers. (Klein Testimony 17:15-20:18). As early
as 1983, applicant began using a 911 Hz chirp in its two-way
radios. (Id. at 32:7-24). In 1991, a change was made to
the electronic chip that produces the 911 Hz chirp in
applicant’s radios, but the perceptible audio tone remained
unchanged (Id. at 36:8-37:14). Currently, applicant’s
annual sales of its two-way radios featuring the chirp are
very substantial (Id. at 49:21-24, Exhibits 9, 10).
In addition, applicant admits in its answer to the
amended notice of opposition that it has a long-standing
business relationship with opposer, whereby applicant
manufactures “phones and phone accessories that function on
MOTOROLA network infrastructure operated by Opposer, and
which phones and accessories are sold to Opposer for resale
to Opposer’s cellular service customers” (amended answer,
para. 2). Applicant further admits that it manufactures
phones and phone accessories for sale to opposer’s direct
Opposition No. 91161817
6
competitors for resale to cellular service customers (Id. at
para. 3). Finally, applicant admits that opposer has filed
application Serial No. 78575442 for the various
telecommunication services recited therein.3
Opposer is one of the largest providers of cellular
telephone services in the United States, with approximately
17 million subscribers to its services nationwide. Opposer
further markets and sells, inter alia, cellular and walkie-
talkie phones manufactured by applicant (Hoyes Testimony
5:17–8:17). The customers for opposer’s walkie-talkie
phones include the New York, D.C. Metropolitan, and Boston

3 Application Serial No. 78575442 was filed on February 25, 2005
by Nextel Communications, Inc. for a sound mark described as
follows: “The sound mark consists of a tone at 1800 Hz played at
a cadence of 24 milliseconds (ms) ON, 24 ms OFF, 24 ms ON, 24 ms
OFF, 48 ms ON,” and asserting May 16, 1997 as the date of first
use anywhere and in commerce in connection with the following
services:
“Telecommunication services, namely, electronic, electric and
digital transmission of voice, data, pictures, music, video, and
other electronic information via wireless networks; Two-way radio
services; Electronic transmission of voice, text, images, data,
music and information by means of two-way radios, mobile radios,
cellular telephones, digital cellular telephones, mobile
telephones, handheld units, namely, personal computers and
digital assistants (PDAs), dispatch radios, and pagers; Paging
services; Transmission of positioning, tracking, monitoring and
security data via wireless communications devices; Mobile
telephone communication services; Wireless Internet access
services; Wireless data services for mobile devices via a
wireless network for the purpose of sending and receiving
electronic mail, facsimiles, data, images, music, information,
text, numeric messaging and text messaging and for accessing a
global communications network; Telecommunication services,
namely, providing user access to telephone and Internet wired or
wireless networks for the transmission of voice, data, images,
music or video via a combination of persistent interconnection
and instant interconnection/instant interrupt technologies;
Wireless communications services,” in International Class 38.

Opposition No. 91161817
7
Police Departments, New York and D.C. Fire Departments, the
FBI, Secret Service, and others in the federal, state, local
and municipal public safety sector (Id. at 6:19-22).
Opposer’s Standing
As noted above, applicant has asserted as an
affirmative defense opposer’s lack of standing to oppose
registration of the proposed mark in its subject
application. We note that regardless of whether applicant
asserts opposer’s lack of standing as an affirmative
defense, opposer must prove its standing as a threshold
matter in order to be heard on its substantive claims. See,
for example, Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982). In its brief,
applicant argues that opposer has failed to prove its
allegations that applicant will assert its proposed mark
against opposer. Applicant further argues that opposer’s
use of an 1800 Hz tone in its cell phones is unrelated to
applicant’s use of the involved 911 Hz chirp in its two-way
radios. Thus, applicant argues that opposer lacks both a
real interest in this proceeding and a reasonable belief of
damage. Applicant argues in addition that opposer asserts
for the first time in its brief on appeal that it is a
competitor of applicant; and that such assertions are
unpleaded and should be given no consideration. Applicant
Opposition No. 91161817
8
argues that, in any event, opposer’s competitor argument is
not supported by the record in this case.
The purpose of the standing requirement is to prevent
mere intermeddlers from initiating proceedings. Thus, the
Federal Circuit has enunciated a liberal threshold for
determining standing, namely, whether a plaintiff’s belief
in damage has a reasonable basis in fact and reflects a real
interest in the case. See Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d, 1023 (Fed. Cir. 1999). See also Jewelers
Vigilance Committee Inc. v. Ullenberg Corp., 853 F.2d 888, 7
USPQ2d 1628 (Fed. Cir. 1988).
In this case, opposer has established that it has a
long-standing business relationship with applicant whereby
applicant supplies opposer with cellular and walkie-talkie
phones and their accessories for sale to opposer’s cellular
service customers. Opposer also has established that it
markets its walkie-talkie phones to the same consumers as
those of applicant’s goods. Opposer further has established
that applicant supplies phones and accessories to opposer’s
direct competitors for resale to their cellular service
customers. Applicant acknowledges that many of the users of
its two-way radios “often carry and use Applicant’s cellular
telephones used with Opposer’s network services” (brief, p.
45).
Opposition No. 91161817
9
We find that opposer’s goods and services as well as
applicant’s goods are offered to the same consumers.
Opposer’s cellular phones, manufactured by applicant, and
its cellular phone services appear on this record to be
complimentary to applicant’s two-way radios and, by
applicant’s admission, are often used together. In
addition, the walkie-talkie phones manufactured by applicant
for sale by opposer also may be used for the same or similar
purposes as applicant’s two-way radios. Opposer’s cellular
and walkie-talkie phones emit an 1800 Hz sound under
specific circumstances during their use. Thus, applicant’s
assertion of its 911 Hz chirp as a mark may affect opposer’s
ability to utilize and market its 1800 Hz tone in its
products, especially inasmuch as they are manufactured by
applicant. As a result, we find that regardless of whether
opposer and applicant are direct competitors, opposer has a
reasonable basis for its belief in damage resulting from
applicant’s registration of its chirp, and a real interest
in this case. See Ritchie v. Simpson, supra. See also TBMP
§309.03(b) (2d ed. rev. 2004) and the authorities cited
therein. Therefore, opposer has standing to bring this
opposition proceeding.
Failure to Function As a Mark
Opposer contends that applicant’s two-way radios emit
the 911 Hz chirp as an alert tone when a particular radio
Opposition No. 91161817
10
function is activated. Opposer also contends that applicant
“did not engage in any ‘look for’ or ‘listen to’ advertising
or otherwise feature the 911 Hz Tone as a trademark rather
than as an alert tone” (brief, p. 4). Opposer further
contends that consumers and potential consumers of
applicant’s goods “only encountered the sound in one of four
circumstances, and in each case, the sound was expressly
presented for its significance as an alert tone with a
particular meaning” (Id.) rather than as a source
identifier. Opposer contends in addition that applicant has
provided no evidence that it has used its chirp as a mark,
but rather that applicant relies upon its word mark and logo
for recognition of its recited goods.
Applicant asserts that its chirp was “developed by
Applicant’s engineers and marketing personnel in 1983 and
has been consistently used as a trademark since that date”
(brief, p. 3). Applicant further asserts that the Federal
Communications Commission (FCC), which regulates two-way
radios in the United States, requires only that they be
equipped with an LED light indicator to inform users that a
channel is available for communications; and that there is
no requirement that such radios emit any audible tones.
Applicant asserts in addition that it developed the 911 Hz
chirp to perform two functions in its two-way radios: (1)
to inform the user thereof that a channel is available for
Opposition No. 91161817
11
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.4
From the testimony and evidence made of record in this
case, we have determined the following: Applicant’s 911 Hz
chirp is affixed to its two-way radios “through an
electronic chip resident in the device and from which the
sound originates and emanates” (See Applicant’s response to
Interrogatory No. 5). Two-way radios, including those
manufactured by applicant and its competitors, operate on
“trunked” systems that allocate frequencies as needed among
various users. (Rasmussen Testimony, 20:22-21:9). When a
user attempts to communicate by means of a two-way radio,
the trunked system first seeks out and confirms the
availability of a channel for communication. (Id.). If the
system finds an available channel, the radio emits a sound
to inform the user that communication may now commence.
(Id. at 21:9-13). Such radios emit a different sound to

4 The question of whether applicant’s 911 Hz chirp comprises
matter that is functional under Section 2(e)(5) of the Trademark
Act is not before us. In its brief, applicant notes that opposer
did not plead functionality as a ground for opposition and argues
that opposer thus is barred from asserting this argument at final
hearing. We observe in addition that at oral hearing, counsel
for opposer agreed that functionality under Section 2(e)(5) is
not an issue in this case. We further observe that applicant
argued in its brief that, in any event, its 911 Hz chirp is not
functional. Inasmuch as the issue of functionality was neither
pleaded by opposer nor tried by the express or implied consent of
the parties, such arguments will be considered in the context of
opposer’s pleaded claims.

Opposition No. 91161817
12
alert the user that no channel is available for
communication. (Id. at 21:14-24:13). Applicant’s two-way
radios emit its 911 Hz chirp when a channel is available for
communication. (Klein Testimony, 15:22-24). The 911 Hz
chirp is one of over a dozen sounds emanating from
applicant’s two-way radios, most of which signify a function
thereof:
Q. And for these 911 Hz radios, each emits nine
to 12 different tones, is that correct?
A. I believe that is actually what I stipulated
prior, but they actually generate more tones than
that.
Q. And each of the tones has a different
significance in terms of the operation and
function that it signifies, is that right?
A. For the most part each tone has a sole
function to the radio and it’s clearly delinieated
in the user manual and in the training guides.

(Klein Testimony, 74:1-11). Applicant has consistently
utilized its 911 Hz chirp as well as the other tones emitted
by its radios in order to allow users to aurally recognize
the operational features they denote without having to look
at the radios during operation. (Klein Discovery
Deposition, 42:21-43:14; Klein Testimony 38:19-39:14).
Applicant refers to this capability as “hands on, eyes off”
operation of its radios. (Id.).
Operational tones are not unique to applicant’s goods.
Two-way radios manufactured by applicant’s competitors also
emit a number of tones to signify various operations.
(Klein Disc. Deposition, 92:14-94:15, Exhibit L; Rasmussen
Opposition No. 91161817
13
Testimony, 24 :8-25 :22). These include tones, which like
applicant’s chirp serve to alert users when a channel is
available for communication, as well as tones to alert users
when no such channels are available for communication.
(Rasmussen Testimony, 24:8-25:4; 42:14-19).
Applicant does not advertise its two-way radios by
means of any broadcast media. (Klein Testimony 95:14-19).
Similarly, applicant’s print advertisements and promotional
material for its two-way radios make no reference to its 911
Hz chirp. (Id. at 95:20-96:19). As a result, potential
consumers neither hear nor are alerted to the 911 Hz chirp
in any traditional advertisements. Rather, in addition to
being audible during use of applicant’s goods, the chirp is
encountered by potential consumers in the following
circumstances. First, the chirp is heard along with the
other operational tones common to applicant’s two-way radios
during live user training and in audio-visual training
materials used therewith. (Id. 81:1-4). Second, the chirp,
while not audible, is referred to along with the other
operational tones emitted by applicant’s two-way radios in
the text of user manuals and other documentation therefor.
(Klein Discovery Deposition, Exhibit I). Third, the chirp
is audible during trade shows and demonstrations by sales
representatives of applicant’s two-way radios. (Id. at
103:23-104:1).
Opposition No. 91161817
14
As has been frequently stated, “Before there can be
registration, there must be a trademark.” In re Bose
Corporation, d/b/a Interaudio Systems, 546 F.2d 893, 192
USPQ 213, 215 (CCPA 1978). The starting point for our
analysis is Section 45 of the Trademark Act, as amended,
where “trademark” is defined as “any word, name, symbol, or
device, or any combination thereof used by a person…to
identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others
and to indicate the source of goods, even if that source is
unknown.” 15 U.S.C. §1127. This section further provides
that a mark shall be deemed to be in use in commerce on
goods when “it is placed in any manner on the goods or their
containers…and the goods are sold or transported in
commerce.” Id. Thus, the mark must be used in such a
manner that it would readily be perceived as identifying the
specified goods and distinguishing a single source or origin
for the goods. See In re Safariland Hunting Corp., 24
USPQ2d 1380 (TTAB 1992); and In re Aerospace Optics, Inc.,
78 USPQ2d 1861 (TTAB 2006).
A critical element in determining whether matter sought
to be registered is a trademark is the impression the matter
makes on the relevant public. “Implicit in the statutory
definition of a ‘trademark’ set forth above is a requirement
that there be a direct association between the matter sought
Opposition No. 91161817
15
to be registered and the goods identified in the
application, that is, that the matter is used in such a
manner that it would be readily perceived as identifying
such goods.” In re N.V. Organon, 79 USPQ2d 1639, 1649 (TTAB
2006). Thus, in a case such as this, the critical inquiry
is whether the asserted mark would be perceived as a source
indicator. See In re Brass-Craft Mfg. Co., 49 USPQ2d 1849
(TTAB 1998); and In re Volvo Cars of North America Inc., 46
USPQ2d 1455 (TTAB 1998). To be a mark, the matter must be
used in a manner calculated to project to purchasers or
potential purchasers a single source or origin for the
goods. See In re Volvo, supra.
In this case, it is undisputed that applicant’s 911 Hz
chirp serves as an alert tone informing users of applicant’s
two-way radios that a channel is available for
communication. It is also undisputed that the only time
consumers of applicant’s two-way radios hear the chirp is
during use of such radios as the designated auditory signal
that a channel is available for communication. In other
words, the 911 Hz chirp is only heard during operation of
this particular feature of applicant’s goods.5 Moreover, it
is undisputed that the two-way radios manufactured by
applicant’s competitors also emit a tone to signal the

5 The asserted use of the 911 Hz chirp during live training and
at trade shows is through demonstrations of applicant’s radios.

Opposition No. 91161817
16
availability of a channel for communication. It further is
undisputed that both applicant’s two-way radios and those of
its competitors emit numerous tones, each of which signals
the operation of a feature thereof. Thus, on this record we
find that applicant’s 911 Hz chirp is merely one of many
tones emitted by various two-way radios to denote the
operation of a particular feature thereof.
Applicant asserts that the 911 Hz chirp is a “dual-
purpose trademark” that is “emitted from Applicant’s goods
when a channel becomes available for communications” and
also “informs the user that he is using a MOTOROLA®
product.” (Brief, p. 17). Applicant explains that the
chirp is used in connection with its two-way radios in the
following way:
The tone is from a Motorola product branding it
audibly. It ties in the customer experience of
this is a voice product, the most important thing
is voice, and I need a robust solution, and then
there is this branded radio that has Motorola
written all over it that is presenting this tone.
It’s the only product that is producing this tone
and it’s certainly the only two-way product that
produces this tone. And we have produced that
same tone in these two-way products now for-
consistently for a long period of time.

(Klein Testimony 16:21-17:8). Specifically with regard to
the chirp’s purported trademark significance, applicant
asserts as follows:
…[t]he sales folks will use the tone to indicate…
“Press the button, see, you always have the
opportunity for communication.” It’s the Motorola
trademark of always there. It’s an indication.
Opposition No. 91161817
17
It’s not just, “Here, feel this device and feel
it.” They’re getting feedback that helps them
know, “I’m always getting through,” that kind of
feeds into the experience.

(Id. at 28:9-21 emphasis added). Applicant refers to such
exposure by potential consumers to the 911 Hz chirp as
“experiential advertising” of its goods occurring primarily
at trade shows. (Brief, p. 32). Applicant claims that such
“‘experiential’ advertising methods that involve getting the
product into the consumers’ hands so they can hear the 911
Hz Mark and understand its significance as both an alert
tone and a trademark” (Id. at 34) are more effective than
traditional promotional methods for its goods.
However, applicant’s “experiential advertising” fails
to support use of its 911 Hz chirp as a mark for several
reasons. 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. As applicant’s witness states above:
“It’s an indication…They’re getting feedback that helps them
know, “I’m always getting through….” Thus, applicant’s own
sales personnel utilize the 911 Hz chirp during
demonstrations of its goods to denote its primary function,
namely, to signify the availability of a reliable channel
for communication. Applicant’s assertion that its chirp
Opposition No. 91161817
18
serves a trademark function during these demonstrations
rings hollow given that such demonstrations tout the chirp
as an indication that a channel is available and that the
user can rely on that availability, not as a source
identifier for its goods.
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. (Klein Testimony 18:23-19:2). Essentially,
applicant suggests that because the 911 Hz chirp emanates
from two-way radios bearing numerous of its marks, users or
potential users thereof will ascribe a source identifying
function to the chirp. However, applicant cites to no
authority for its contention that the presence of other
marks on its goods will elevate a feature-specific sound
such as its chirp to a trademark, especially when
applicant’s own sales demonstrations emphasize the primary
significance of the chirp as a signal that a communications
channel is available for use.6

6 We note that applicant commissioned a survey in support of its
argument that its 911 Hz chirp has acquired distinctiveness as a
trademark. While as indicated below we are not reaching the
issues of inherent or acquired distinctiveness, we nonetheless
have considered applicant’s testimony and evidence on those
issues for support of its contention that the 911 Hz chirp
functions as a mark. Much of this testimony and evidence,
including the survey and its results, were filed under seal. We
may briefly state that we did not find additional support for
Opposition No. 91161817
19
In short, the record simply does not support
applicant’s claim that it uses the 911 Hz chirp as a
trademark. There is no evidence, for example, that
applicant has attempted to promote recognition by consumers
or potential consumers of the 911 Hz chirp as a trademark
either in its printed advertisements, training manuals or
classes, at trade show demonstrations, or on its website.
(Id. at 102:14-107:1). Further, applicant acknowledges
there is no evidence that it indicates to consumers or
potential consumers that its 911 Hz chirp is intended to
serve as a trademark for its goods. (Id.). To the contrary
and as discussed above, applicant’s promotional materials
and live demonstrations focus on the chirp as an operational
alert signal denoting the availability of a communication
channel. Thus, as used by applicant, the chirp appears to
signal the availability of a feature of its goods, rather
than indicating the source thereof. See, for example, In re
Moody’s Investors Services, Inc., 13 USPQ2d 2043, 2048-9
(TTAB 1989). As noted, applicant’s radios emit a dozen or
more sounds to indicate various features, although it
admitted at oral argument that none of these other tones are
trademarks. But applicant does not explain why the 911 Hz
chirp would be viewed any differently than the various other

applicant’s contention that its 911 Hz chirp functions as a mark
among these submissions.

Opposition No. 91161817
20
tones produced by its radios, i.e., as simply an indication
that a particular feature of the radio is available or
functioning.
We observe that the primary purpose of the 911 Hz chirp
as an alert tone to signify the availability of a channel
does not per se preclude it from serving as a source
identifier for applicant’s goods. However, in order for the
chirp to function as a mark, applicant must first take the
necessary actions to use and promote it as such. See
Section 45 of the Trademark Act, supra. The “mere intent
that a term function as a trademark is not enough in and of
itself, any more than attachment of the trademark symbol
would be, to make a term a trademark.” In re Manco Inc., 24
USPQ2d 1938 (TTAB 1992) (THINK GREEN failed to function as a
mark for, inter alia, mailing and shipping cardboard boxes).
See also In re Volvo, supra (DRIVE SAFELY failed to function
as a mark for automobiles and structural parts therefor); In
re Remington Products, Inc., 3 USPQ2d 1714 (TTAB 1987)
(PROUDLY MADE IN THE USA failed to function as a mark for
electric shavers and parts thereof); and In re Morganroth,
208 USPQ 284 (TTAB 1980) (NATUR-ALL-IZE YOUR HAIR COLORING
failed to function as a mark for hair styling salon
services).
Nor does the fact that applicant may be the first and
only user of the 911 Hz chirp qualify such a tone as a mark.
Opposition No. 91161817
21
“Even assuming the applicant’s mark is an artistically
creative, unique symbol, it is well settled that not all
unique symbols qualify for the Lanham Act’s protection.” In
re Illinois Bronze Powder & Paint Co., 188 USPQ 459, 462
(TTAB 1975). Accordingly, while applicant’s applied-for
chirp may be unique in the sense that only applicant’s two-
way radios emit such a tone, the record demonstrates that
such a chirp is not unique in the sense that it has an
“original, distinctive, and peculiar” character which
conveys a trademark significance. See, e.g., In re E S
Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992).
Based upon the foregoing we conclude that applicant’s
911 Hz chirp fails to function as a mark under Trademark Act
Sections 1, 2 and 45 as used in connection with its two-way
radios.
Inherent and Acquired Distinctiveness
Having determined above that applicant’s 911 Hz chirp
fails to function as a trademark, we need not and do not
reach the issue of whether the proposed mark is inherently
distinctive or has acquired distinctiveness.
DECISION: The opposition is sustained on the ground
that applicant’s designation fails to function as a mark,
and registration to applicant is refused.
Opposition No. 91161817
22
* * * *

Concurring opinion by Bucher, Administrative Trademark
Judge:

The late Judge Nies always made her points so well:

“Trademarks are useful tools of a competitive
society, providing consumers with the means for
choosing from among different producers. The
tenet which precludes recognition of functional
designs as trademarks is one of the balance
points. Our society is better served if
functional containers (as well as functional
product designs and highly descriptive or generic
terms) remain available for use among
competitors. To the extent this causes a modicum
of confusion of the public, it will be tolerated.
There is, indeed, no overriding requirement in
the law that comparable goods be distinguishable
in the marketplace. On the other hand, a
merchant who wishes to set himself apart has no
dearth of means to do so. One who chooses a
commonplace design for his package, or one
different from competitors only in essentially
functional features, even if he is the first to
do so, must expect to have to identify himself as
the source of goods by his labelling or some
other device.”

In re Water Gremlin Company, 208 USPQ 89, 91 (CCPA 1980).

* * * *

Based upon the way this case was litigated, I agree
with my colleagues that we must sustain this opposition for
precisely the reasons Judge Cataldo has delineated. Yet I
fear that the litigants have tried this opposition in a way
that ignored the chirping elephant in the room.
The Motorola “chirp” is an operational feature of its
hand-held, portable, two-way radio transceiver. The record
is clear that the transceiver “chirps,” and that the chirp
Opposition No. 91161817
23
alerts the user to an open channel. Among a dozen or more
sounds the radio emits is the involved tone or chirp. This
alert tone is broadcast at a specific frequency, having an
on/off cadence measured in milliseconds. Yet such tones are
ubiquitous in handheld, portable transceivers and cellular
telephones, for as applicant admits, wireless devices for
commercial and personal usage manufactured by unnamed
competitors emit a variety of similar operational tones
having unknown frequencies and varying cadences.
Fortunately, for more than six decades the magnificent
infrastructure of our Trademark Act has proven pliable
enough to extend trademark protections well beyond words and
symbols.7 We have gone places that Senator Lanham never
envisioned.8 However, when confronted with a novel, non-
traditional trademark, the decision-maker is compelled to
focus upon whether exclusive use of this claimed feature

7 TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S.
23, 58 USPQ2d 1001 (2001); Brunswick Corp. v. British Seagull,
35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514
U.S. 1050 (1995); In re Owens-Corning Fiberglas Corporation, 774
F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Inwood Laboratories,
Inc., v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1
(1982); and In re Morton-Norwich Products, Inc., 671 F.2d 1332,
213 USPQ 9 (CCPA 1982).

8 In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir.
2006); In re N. V. Organon, 79 USPQ2d 1639 (TTAB 2006); and In re
Clarke, 17 USPQ2d 1238 (TTAB 1990).

Opposition No. 91161817
24
“would put competitors at a significant non-reputation based
disadvantage.”9
The record shows that both Motorola and Sprint/Nextel
have pending applications before the United States Patent
and Trademark Office for their respective alert tones. When
during ex parte examination the United States Patent and
Trademark Office’s Examining Operations failed to make any
“functionality” inquiries, these major players evidently
both made a strategic decision to bypass this particular
concern as well.
In the event the above issue (e.g., whether or not
Motorola’s exclusive use of the 911 Hz chirp is consistent
with the preservation of effective competition among the
manufacturers and merchants of a defined set of these hand-
held wireless devices) is thoroughly litigated before the
appropriate tribunal, the focus should then turn to whether
or not the feature actually functions as a mark. Like
flavor, single color and scent, an operational radio tone
should never be deemed inherently distinctive. As the
Supreme Court reaffirmed in Wal-Mart Stores Inc. v. Samara
Brothers Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), the
involved tribunal should adopt a predictive inquiry (in the

9 Qualitex Co. v. Jacobson Prods. Co. 514 U.S. 159, 165,
34 USPQ2d 1161, 1164 (1995); and Valu Eng’g, Inc. v. Rexnord
Corp., 278 F.3d 1268, 1277, 61 USPQ2d 1422, 1430 (Fed. Cir.
2002).

Opposition No. 91161817
25
instant case, for a sound mark) adopted by the predecessor
to our primary reviewing court for making trade dress
determinations. Seabrook Foods, Inc., v. Bar-Well Foods,
Ltd., 568 F.2d 1342, 196 USPQ 289 (CCPA 1977). In fact, an
analogy to the Seabrook test provides a good overlay for the
evidence discussed at length in the majority opinion herein.
Provided the matter is indeed capable under the Seabrook
test of being readily recognized by consumers as a source
indicator, deferred recognition should remain the law, and a
registration should issue only upon a substantial showing of
acquired distinctiveness. In re D.C. Comics, Inc., 689 F.2d
1042, 215 USPQ 394, 402 (CCPA 1982) (Nies, J., concurring).
Whether this showing came forward during ex parte
examination or as a result of an adversarial proceeding,
sustained promotional efforts encouraging prospective
consumers, for example, to “listen for the Motorola chirp,”
would bolster the case. The demonstration of a successful
penetration of the marketplace with such advertising
campaigns would support a showing of acquired
distinctiveness as a source indicator for this alleged dual-
use chirp. At such a juncture, direct evidence of consumer
perceptions drawn from a valid survey that could withstand
the adversary process should help the proponent of
registrability overcome further challenges.

- o O o -