Motorola Mobility, Inc., Motorola Trademark Holdings, LLCv.Nextel Communications, Inc.

Trademark Trial and Appeal Board

Jun 18, 2012

No. 91200355 (T.T.A.B. Jun. 18, 2012)

jk Mailed: June 18, 2012

Opposition No. 91200355

Motorola Mobility, Inc.,
Motorola Trademark Holdings,
LLC

v.

Nextel Communications, Inc.

Before Seeherman, Holtzman and Bergsman,
Administrative Trademark Judges.

By the Board.
This opposition involves the application filed by Nextel
Communications, Inc. (“Nextel”) to register the sound mark
described as follows:
The mark is a sound. The 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.

(“1800 Hz sound” or “sound”) for the following services in
International Class 38:
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,
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91200355

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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 service.1

Motorola Mobility, Inc. and Motorola Trademark Holdings,
LLC. (“Motorola”) oppose registration on the grounds of 1) mere
descriptiveness and lack of distinctiveness, 2) failure to
function as a mark, 3) functionality, 4) issue preclusion and
claim preclusion, 5) non-use, and 6) fraud on the USPTO.
Decision in Opposition No. 91164353
While Nextel’s application was suspended in examination,
the Board decided Opposition No. 91164353, brought by Nextel
against registration of Motorola’s 1800 Hz sound, or “chirp”
sound - the same sound that Nextel seeks to register for
services in the application opposed herein - for goods, namely,
“cellular telephones and two-way radios” in International Class

1 Application Serial No. 78575442, filed February 25, 2005, based
on use of the mark in commerce pursuant to Trademark Act § 1(a),
claiming a date of first use anywhere and date of first use in
commerce of May 16, 1997, and claiming acquired distinctiveness
pursuant to Trademark Act § 2(f).
The parties’ briefs indicate that the 1800 Hz sound is an
operational alert tone or “chirp” which is emitted by wireless
communications devices, manufactured by Motorola or others, to
signal the user of a certain status or condition, namely, to
signal the “talk permit” status of two-way radio communications
over Nextel’s network.
Opposition No. 91200355

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9. See Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d
1393 (TTAB 2009) (“Opposition No. 91164353”). The Board
sustained that opposition:
1) with respect to “two-way radios,” applying the
preclusive (issue preclusion) effect of its decision sustaining
Opposition No. 91161817 (Nextel Communications, Inc. v.
Motorola, Inc. (TTAB February 27, 2008)), wherein the Board
found that Motorola’s applied-for sound, described as
…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

failed to function as a mark for said goods. Nextel
Communications Inc. v. Motorola Inc., 91 USPQ2d at 1399; and
2) with respect to “cellular telephones,” finding that the
1800 Hz sound was an operational alert tone that was not
inherently distinctive and had not acquired distinctiveness for
these goods. Id at 1408. In particular, the Board found that
Motorola had not provided sufficient evidence that consumers
recognize the sound as a source-identifier for said goods, and
that evidence of Nextel’s contemporaneous use of this sound in
connection with promoting its services for nearly as long as
Motorola rebutted Motorola’s contention of substantially
exclusive use of the sound as a mark. Id.
The instant opposition
On December 8, 2011, the Board denied Nextel’s motion
seeking dismissal for failure to state a claim upon which
Opposition No. 91200355

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relief may be granted, which motion was directed to Motorola’s
functionality, claim and issue preclusion, and fraud claims.
In that same order, the Board allowed the parties to file
cross-motions for summary judgment on the issue of res judicata
and/or collateral estoppel. These claims are based on the
Board’s sustaining, in Opposition No. 91164353, Nextel’s
opposition to registration of the sound for Motorola’s goods.
It is Motorola’s position that the Board’s decision in that
opposition operates to bar Nextel’s registration of the sound
as a mark for its telecommunications services, while Nextel
seeks judgment that the decision in Opposition No. 91164353
does not act as a bar. This proceeding is now before the Board
for consideration of the cross-motions, which are fully
briefed.2
Summary judgment standard
Summary judgment is appropriate where the movant shows
that there is no genuine dispute as to any material fact and
that it is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). Summary judgment is appropriate in
preclusion cases. See Zoba Int’l Corp. v. DVD Format/LOGO
Licensing Corp., 98 USPQ2d 1106, 1108-09 (TTAB 2011).
To prevail on its motion, Motorola must prove that
there is no genuine dispute of material fact that the

2 As a preliminary matter, Nextel’s unopposed motion for leave to
file an amended answer is granted. Its amended answer, filed
January 31, 2012, to the notice of opposition is entered.
Opposition No. 91200355

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elements of claim preclusion, or issue preclusion, are
satisfied such that the Board’s decision in Opposition No.
91164353 operates to bar registration of the 1800 Hz sound
as a mark for Nextel’s services. Correspondingly, to
prevail on its motion, Nextel must prove that there is no
genuine dispute of material fact that the elements of claim
preclusion, or issue preclusion, are not satisfied and thus
the decision in Opposition No. 91164353 does not bar
registration of the sound as a mark for its services.3
Res judicata (claim preclusion)
While our primary reviewing court advises that “[c]aution
is warranted in the application of preclusion by the PTO,” see
Mayer/Berkshire Corp. V. Berkshire Fashions, Inc., 424 F.3d
1229, 76 USPQ2d 1310, 1314 (Fed. Cir. 2005), it is within the
Board’s discretion to apply preclusion where it is warranted.
See Parklane Hosiery Co., Inc. v. Shore, 439 U.S. 322 (1979).
Application of the doctrine of claim preclusion to bar a
subsequent claim is appropriate when:
(1) there is an identity of parties or their privies;
(2) there was an earlier final judgment on the merits
of a claim; and
(3) the second claim is based on the same set of
transactional facts as the first and should have

3 Motorola moves for leave to use testimony of Mr. Peter
Aloumanis of Motorola, Inc., and of Mr. Mark Schweitzer of Nextel
Communications, Inc., taken in Opposition No. 91164353.
Similarly, Nextel moves for leave to use testimony of Mr.
Schweitzer, taken in Opposition No. 91164353. Said motions are
unopposed, and are granted solely for the purpose of the cross-
motions for summary judgment. See Trademark Rule 2.127(a).

Opposition No. 91200355

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been litigated in the prior case.

See Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d
1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006); Jet, Inc. v.
Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856
(Fed. Cir. 2000).
Regarding the first element, on summary judgment the
parties do not dispute that there is an identity of parties
or their privies.
The second element is met, as the Board entered a final
decision on the registrability of the sound for Motorola’s
“cellular telephones and two-way radios.”
However, the third element of claim preclusion is not
met inasmuch as the instant opposition is not based on the
same set of transactional facts that were before the Board
in Opposition No. 91164353. In that proceeding, the core
issue before the Board (the issue which was not precluded by
the decision in Opposition No. 91161817) was whether the
sound had inherent or acquired distinctiveness as a mark
with respect to Motorola’s “cellular telephones.” The Board
made no finding as to whether the sound had acquired
distinctiveness as a mark as used in connection with any of
Nextel’s services. In discussing the probative value of two
consumer surveys submitted therein, the Board noted
…we make no finding herein that the chirp has acquired
distinctiveness in connection with opposer’s services
(that issue is not before us)…,

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and in discussing evidence of advertisements wherein the
sound is played, it noted
Again, we make no finding as to whether the chirp
serves as a trademark for opposer’s services as that
issue is not currently before us.

Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d at

1403, 1408.

The Board had before it evidence of use of the sound by
Nextel in connection with its services. However such
evidence was presented in order to rebut Motorola’s
assertion that the sound had acquired distinctiveness as a
mark for Motorola’s “cellular telephones,” and in particular
to rebut Motorola’s assertion that its use of the sound had
been substantially exclusive. As noted above, the Board did
not rule with respect to whether the sound was inherently
distinctive, or had acquired distinctiveness as a mark for
Nextel’s services. The effect of the transactional facts
underlying the issue in the instant opposition – whether the
sound functions as a mark as used in connection with certain
or all of the services identified in Nextel’s application –
was not presented in Opposition No. 91164353, and was not an
issue that needed to be litigated therein.
Accordingly, the elements of claim preclusion are not
satisfied with respect to the decision in Opposition No.
91164353 so as to bar Nextel’s registration of the 1800 Hz
sound for its identified services.
Opposition No. 91200355

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Collateral estoppel (issue preclusion)
In the absence of claim preclusion, the related
principle of collateral estoppel may bar relitigation of the
same issue in a second action. See Mayer/Berkshire Corp. v.
Berkshire Fashions Inc., 76 USPQ2d at 1312.
Regarding whether issue preclusion, or collateral
estoppel, is applicable based on a district court's
decision,
[t]he doctrine of collateral estoppel ... normally
will bar the relitigation of an issue of law or
fact that was raised, litigated, and actually
decided by a judgment in a prior proceeding
between the parties, if the determination of that
issue was essential to the judgment, regardless of
whether or not the two proceedings are based on
the same claim.

NLRB v. United Technologies Corp., 706 F.2d 1254, 1260 (2d
Cir. 1983). The application of collateral estoppel
requires:
(1) identity of an issue in the current and a prior
proceeding;
(2) actual litigation of that issue in the prior
proceeding;
(3) necessity of a determination of the issue in
entering judgment in the prior proceeding; and
(4) a full and fair opportunity existed, for the party
with the burden of proof on that issue in the
second proceeding, to have litigated the issue in
the prior proceeding.

See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 76
USPQ2d at 1313.
For the same reasons that Opposition No. 91164353 and
the instant opposition are not based on the same set of
Opposition No. 91200355

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transactional facts, the first element of issue preclusion
is not met. There is no identity of issues inasmuch as the
issues resolved in Opposition No. 91164353 differ materially
from those presented in the instant opposition.
The issue that is now before the Board is the
registrability of the sound for some or all of Nextel’s
identified services. This requires the Board to ascertain
whether the sound can be inherently distinctive as a mark
for the services, and if not found to be so, whether it has
acquired distinctiveness as a mark for the services.
In asserting issue preclusion in its motion, Motorola
argues that “given the inseparable nature of Motorola’s
iDEN® Goods and Nextel’s iDEN® Services, the ‘issues’ of
whether the Chirp Tone functions as a mark, whether it is
inherently distinctive, and whether it has acquired
distinctiveness are identical” (Motorola’s brief, p. 20).
However, this is Motorola’s own characterization of the
relatedness of its goods and Nextel’s services. The Board
did not find the parties’ goods and services to be
“inseparable,” and in fact made no separate finding as to
their relatedness or unrelatedness.
In particular, the Board found that the sound, when
used in connection with “cellular telephones,” cannot be
inherently distinctive as a mark; it did not consider
evidence on the issue of whether the sound is inherently
Opposition No. 91200355

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distinctive as a mark for any of Nextel’s services in
connection with which the sound is emitted as part of the
actual operation of those goods. The Board turned next to
the issue of acquired distinctiveness, finding that the
evidence did not demonstrate that the sound had acquired
distinctiveness as a mark for “cellular telephones.” In
noting that Nextel’s use of the sound invalidates Motorola’s
claim of “substantially” exclusive use, the Board stated
that the services were “closely related to applicant’s
goods.” Nextel Communications, Inc. v. Motorola, Inc., 91
USPQ2d at 1408. However, the determination of the lack of
acquired distinctiveness of the sound as a mark for
“cellular telephones” turned on the Board’s consideration of
a body of evidence going to that issue, and furthermore did
not extend to Nextel’s services. Consequently, the premise
on which Motorola bases its argument that there is an
identity of issues fails.
Turning to the second and third elements of issue
preclusion, inasmuch as there is no identity of the issue
which the Board determined in Opposition No. 91164353, and
that which is now before us – whether the sound has inherent
or acquired distinctiveness as a mark for Nextel’s services
- it follows that the latter was not actually litigated, and
was not necessary for the determination that the sound was
not registrable for “cellular telephones.”
Opposition No. 91200355

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Finally, the Board found relevant the evidence of
Nextel’s contemporaneous use of the sound, such as in
advertisements for its services, in ascertaining whether
such use could rebut Motorola’s claim that its use of the
sound was “substantially” exclusive, and concluded that
Nextel’s use, along with other deficiencies in Motorola’s
evidence, defeated Motorola’s claim of acquired
distinctiveness. However, inasmuch as the registrability of
the sound for Nextel’s services was not at issue, Nextel did
not have a full and fair opportunity to litigate this in
Opposition No. 91164353. Thus, the fourth element of issue
preclusion has not been met.
Accordingly, the elements of issue preclusion are not
satisfied with respect to the decision in Opposition No.
91164353 so as to bar Nextel’s registration of the 1800 Hz
sound for its identified services.
In summary, Nextel has demonstrated that there is no
genuine dispute of material fact that the elements of
neither claim preclusion, nor issue preclusion, are met
here. In view thereof, Nextel is entitled to judgment as a
matter of law with respect to Motorola’s claim that the
Board’s prior decision in Opposition No. 91164353 bars
Nextel’s registration of the 1800 Hz sound for Nextel’s
identified Class 38 services. With respect to Motorola’s
preclusion claims, set forth in Paragraphs 27 through 30 of
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the notice of opposition, judgment is entered in favor of
Nextel.4
Schedule
Proceedings are resumed with respect to Motorola’s
remaining claims. Conferencing, disclosure, discovery and
trial dates are reset as follows:
Deadline for Required Discovery
Conference 7/20/2012
Discovery Opens 7/20/2012
Initial Disclosures Due 8/19/2012
Expert Disclosures Due 12/17/2012
Discovery Closes 1/16/2013
Plaintiff's Pretrial
Disclosures due 3/2/2013
Plaintiff's 30-day Trial Period
Ends 4/16/2013
Defendant's Pretrial
Disclosures due 5/1/2013
Defendant's 30-day Trial Period
Ends 6/15/2013
Plaintiff's Rebuttal
Disclosures due 6/30/2013
Plaintiff's 15-day Rebuttal
Period Ends 7/30/2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.

4 The evidence submitted in connection with the cross-motions for
summary judgment is of record only for consideration of those
motions. To be considered at final hearing, any such evidence
must be properly introduced in evidence during the appropriate
trial period. See, e.g., Drive Trademark Holdings LP v. Inofin,
83 USPQ2d 1433, 1438 n. 14 (TTAB 2007); Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
Opposition No. 91200355

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Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.