The Board sustained oppositions to registration of ENHANCED PUSH-TO-TALK for telecommunication services on the ground of mere descriptiveness under Section 2(e)(1), and to AT&T ENHANCED PUSH-TO-TALK for the same services, in the absence of a disclaimer of "ENHANCED PUSH-TO-TALK. (Applicant AT&T had already disclaimed PUSH-TO-TALK in both applications.) Because ENHANCED PUSH-TO-TALK is "highly descriptive" of AT&T's services, the Board found that AT&T's 'impressive advertising and promotional efforts and expenditures, sales numbers, and relative market share" were insufficient to establish acquired distinctiveness in that term. Sprint Communications Company L.P. v. AT&T Intellectual Property II, L.P., Opposition Nos. 91241178 and 91241179 (January 8, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

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AT&T's disclaimer of PUSH-TO-TALK constituted an admission that the term is merely descriptive of its services. The Board observed that "Push-to-talk ('PTT') is a service that essentially turns a cellular phone into a two-way radio. "PTT services utilize a cellular phone network to allow subscribers to use their phones like walkie-talkies anywhere with cellular coverage" so that a user may a user may communicate with another user via the press of a single button.

Opposer's witness testified that AT&T's services offers a number of added features to push-to-talk: "PTT support over 3G and 4G networks, availability of PTT communications over a WiFi network, a desktop, web-based PTT interface, PTT support over a wide variety of devices, and PTT support over a widely-available cellular, as opposed to a proprietary, network." He declined to say that these are "enhancements," but he recognized that "'enhance' ... means [to] improve over something." 

Based on the dictionary definition, the Board found that the term "enhanced" means "to increase or improve in value, quality, desirability, or attractiveness." "It is this "dictionary sense" in which "enhanced" is being used in the telecommunications market, and it is not being used in a source-identifying manner by Applicant."

Third-party registrations for marks that included the word "enhanced" were too few to be persuasive regarding descriptiveness. More persuasive was the number of descriptive uses by AT&T, third parties, and the media of "enhanced push-to-talk" or the combined use of "enhanced" and "push-to-talk" (or the acronym "PTT") in press releases, a patent, advertising materials and press reports. The Board also noted the laudatory nature of "enhanced."

[W]e find each of the words comprising the term "enhanced push-to-talk," "enhanced" and "push-to-talk," is highly descriptive of telecommunication services of the type provided by Applicant. Moreover, when combined, we further find the composite terminology "enhanced push-to-talk" is, at the very least, highly descriptive of a walkie talkie type service provided over a cell phone accompanied by additional features and functionality.

Turning to the issue of acquired distinctiveness, AT&T has used the proposed marks since 2012,  with hundreds of thousands of individual subscribers and tens of thousands of corporate, government entity, and college/university subscribers, resulting in hundreds of millions of dollars in annual revenue from these subscribers. It has spent tens of millions of dollars in promotion and has captured a significant share of the wireless business market. AT&T enjoyed significant media attention when the service was launched.

The Board found that "the nature and number of descriptive uses in the record by Opposer and third-parties of 'enhanced push-to-talk,' 'enhanced' and 'push-to-talk' indicate that use by Applicant has not been 'substantially exclusive' as is required for a showing of acquired distinctiveness." Therefore, "enhanced push-to-talk" is not perceived by consumers as an indicator of a single source.

Moreover, AT&T's length of use of the proposed marks "is outweighed by the other evidence showing that 'enhanced push-to-talk' is highly descriptive, and the absence of any additional direct evidence showing recognition of the wording by consumers as a source indicator for Applicant's telecommunication services"

And so, the Board sustained the opposition as to the ENHANCED PUSH-TO-TALK application and allowed AT&T 30 days within which to submit a disclaimer of "ENHANCED PUSH-TO-TALK" in the other application.

The TTABlog

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