Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 DATANATIONAL CORPORATION
BELLSOUTH CORPORATION - ASSOCIATION OF NORTH AMERICAN DIRECTORY PUBLISHERS;
REUBEN H. DONNELLEY CORPORATION; DONNELLEY INFORMATION PUBLISHING, INC,; US
WEST, INC. AND CHRISTIAN PUBLISHING & SERVICES, INC.
BELLSOUTH CORPORATION - MULTI-LOCAL MEDIA CORPORATION
BELLSOUTH CORPORATION - CELLULAR DIRECTORY CORPORATION
BELLSOUTH CORPORATION - CONTEL CORPORATION
BELLSOUTH CORPORATION - GEORGE EDWARD BRUMLEY, DBA THE GEORGE BRUMLEY COMPANY
BELLSOUTH CORPORATION - SCOTT WILCOX, DBA TELCO DIRECTORY PUBLISHING
BELLSOUTH CORPORATION - GTE DIRECTORIES CORPORATION
BELLSOUTH CORPORATION - NORTH AMERICAN DIRECTORIES, INC.
BELLSOUTH CORPORATION - TELCOM DIRECTORIES, INC.
BELLSOUTH CORPORATION - YELLOW PAGES--NATIONWIDE EDITION DIRECTORY, INC, AND
U.S. PRINTING DIRECTORY, INC.
BELLSOUTH CORPORATION - UNITED TELECOMMUNICATIONS, INC.; CAROLINA TELEPHONE AND
TELEGRAPH CO.; UNITED INTERMOUNTAIN TELEPHONE COMPANY; UNITED TELEPHONE COMPANY
OF THE CAROLINAS; UNITED TELEPHONE COMPANY OF FLORIDA; DIRECTORIESAMERICA,
INC.; COMMUNITY TELEPHONE DIRECTORIES, INC.; NATIONAL SUBURBAN DIRECTORIES,
Opposition No. 78,650; 78,849; 78,850; 78,929; 79,163; 79,239; 79,397; 79,398;
79,399; 79,400; 79,644; 79,645
March 4, 1991
Before Sams, Rice and Seeherman
BellSouth Corporation has applied to register a "walking fingers" design mark for classified telephone directories. The application is one for concurrent use, and requests registration for the telephone exchange areas in the States of North Carolina, South Carolina, Georgia, Florida, Alabama, Mississippi, Louisiana, Tennessee, Kentucky and the Commonwealth of Puerto Rico in which applicant is certified to provide wireline telecommunications services. [FN1]
This proceeding concerns oppositions filed by 24 opposers in 12 oppositions against the application. The Board found that there was general uniformity in the allegations in the notices of opposition, namely that opposers have used the applied-for walking fingers design in the geographic area for which applicant seeks registration; that applicant does not have the exclusive right to use the walking fingers design in the geographic area claimed by applicant; that the walking fingers design has become a generic designation for information directories; that the walking fingers design is in the public domain; that the design therefore does not, and is incapable of, functioning as a mark for classified telephone directories; and that applicant has acquiesced to the use of the walking fingers design by others and is now estopped to claim the exclusive right to use it in the geographic area claimed by applicant. Accordingly, after applicant filed answers in all the oppositions denying the salient allegations the Board granted applicant's motion to consolidate proceedings with respect to the 24 opposers and the 12 oppositions indicated above. [FN2]
*2 This case now comes up on opposers' motion for summary judgment on, inter alia, the pleaded ground that the applied-for walking fingers logo does not function as a trademark. Applicant has opposed the motion, and opposers have filed a brief in reply, to which applicant has filed a surreply. [FN3] Both opposers and applicant have submitted extensive evidence in support of their respective positions. [FN4]
The granting of a motion for summary judgment is appropriate where there exist no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ. P. 56.
In this case, there is no genuine issue of fact that applicant BellSouth Corporation was formed on or about January 1, 1984 as a result of the divestiture of American Telephone & Telegraph Company (AT & T). Six other regional companies which were formed in connection with the divestiture (Baby Bells), and whose areas are outside the geographic area for which registration has been sought, have been named by applicant as excepted users. Prior to the divestiture, telephone service in the United States was rendered both by former Bell operating companies and by independent telephone companies; and, since divestiture, service continues to be rendered by the regional companies, certain surviving Bell companies, and independent companies. More than 200 of these independent companies' certificated exchange areas are located within the nine states which also include geographic areas for which applicant seeks registration (i.e., those telephone exchange areas within the nine states in which applicant is certified to provide wireline telecommunications services), although applicant's papers indicate that it does not claim the areas of these independent companies. The various telephone companies, including the former Bell operating companies and other independent telephone companies, have long published classified directories for their own certificated areas. Applicant (through the Bell operating companies for which it now is a holding company) began using the applied-for version of the walking fingers logo in its certificated areas in 1978. [FN5]
There is no genuine issue of fact that many different entities have used and continue to use the walking fingers logo on classified telephone directories, and that directories bearing the logo and originating with different entities have been distributed throughout the United States. These entities include, in addition to the excepted users named by applicant, independent telephone companies and independent telephone directory publishing companies. The affidavit of Edward G. Blackman, executive vice president of the Yellow Pages Publishers Association (YPPA), states that his organization is a trade association whose members include virtually all publishers of yellow pages telephone directories in the United States, some of which are telephone companies or which publish on behalf of local telephone companies, while others are independent publishers which are unaffiliated with any telephone company. Each member sends YPPA a current copy of each directory it publishes, and YPPA maintains these directories in its library. With his affidavit Mr. Blackman has submitted copies of the covers of some 6,200 then-current directories (dated generally 1988 or 1989). According to the affidavit of Steven Granville, who undertook an analysis of these copies, approximately 5,900 use the walking fingers logo on the front cover, and another 300 use the logo somewhere in or on the directories. The copies submitted to the Board indicate a wide variety of publishers of the directories, including independent telephone companies, independent companies not affiliated with any telephone company, and Baby Bells. [FN6]
*3 Moreover, there is no genuine issue of fact that independent telephone companies and independent telephone directory publishing companies have been using the walking fingers logo on their classified telephone directories for many years. Some examples, [FN7] as detailed in the affidavits submitted by opposers, include:
(1) B & B Publishing Co., Inc., an independent telephone directory publisher which is a predecessor of opposer DataNational, began using the logo in 1984 on directories it published and distributed in Oklahoma and Arkansas, and such directories continue to be published.
(2) The logo was used by Oklahoma Telephone Directory, Inc., an independent telephone directory publisher, prior to 1981.
(3) Telcom Directories, Inc., a publisher of classified directories, began using the walking fingers logo in 1984 on directories distributed to various businesses located in each state of the United States.
(4) United Telecommunications, Inc. owns local exchange carriers in Florida, Illinois, Indiana, Kansas, Michigan, Minnesota, Missouri, New Jersey, North Carolina, Ohio, Oregon, Pennsylvania, South Carolina, South Dakota, Tennessee, Texas, Virginia, Washington, Wisconsin and Wyoming. Since 1975 a substantial portion of the telephone directories it has caused to be published have borne the walking fingers logo on their covers.
(5) Thumb Advertising Company d/b/a Michigan Directory Company of Pigeon, Michigan, an independent telephone directory publisher, has used the walking fingers logo since 1983 on the covers of all the telephone directories it has published and distributed in Michigan.
(6) GTE Directories Corporation, an opposer herein, has used the walking fingers logo since at least 1973 on the covers of the telephone directories it publishes. This company publishes directories for both GTE Corporation subsidiary telephone operating companies and for other independent telephone companies. The directories are located in approximately 32 states, including Alaska, Alabama, California, Florida, Georgia, Iowa, Idaho, Illinois, Indiana, Kentucky, Minnesota, Missouri, Montana and Nebraska.
(7) Home Owners Guide of Florida, Inc. d/b/a Local Blue Book of Fort Lauderdale, Florida, an independent telephone directory publisher, has used the walking fingers logo since 1978 on the covers of all Local Blue Book directories it distributes in Florida.
(8) Old Heritage Advertising and Publishers, Inc., an independent telephone directory publisher, distributes directories in Alabama, Arkansas, Colorado, Illinois, Indiana, Iowa, Kansas, Michigan, Mississippi, Missouri, Nebraska, New Mexico, Tennessee Wisconsin and Wyoming, and began using the walking fingers logo in 1975 on the directories.
(9) Yellow Book of Pennsylvania, Inc., an independent telephone directory publisher, began using the walking fingers logo in 1977 on the covers of all the directories it distributes in Pennsylvania.
Moreover, there is no genuine issue that other Baby Bells or their operating companies have treated the walking fingers logo as being free for any company to use to identify its directory as containing yellow pages. For example, a Bell Atlantic brochure (Bell Atlantic Corporation is listed as an excepted user in applicant's application) states that "It's OK for any publisher to use the famous walking fingers symbol." An affidavit by a vice president at US WEST Direct, which is a wholly owned subsidiary of opposer US West, Inc. (the latter company has been named as an excepted user by applicant), states that this company has never objected to the widespread use of the walking fingers logo by independent competitive directory publishers because, inter alia, the logo has been, since its inception, in the public domain.
*4 Opposers have also submitted numerous affidavits by those involved in the telephone directory trade in which these persons state that the walking fingers logo is an industry-wide symbol which has the generic meaning of yellow pages.
Applicant has not provided any evidence which contradicts opposers' evidence that the walking fingers logo is generic or does not function as a mark outside of applicant's claimed geographic area. In fact, applicant essentially concedes the widespread use of the logo in the rest of the United States.
For purposes of deciding this motion, we will make a distinction between applicant's claimed territory (consisting of the telephone exchange areas in Puerto Rico and the nine southeastern U.S. states in which applicant is certified to provide wireline telecommunications services, but excluding 200- some independent telephone companies scattered throughout these nine states) and the rest of the country, hereafter referred to as the "nonterritory". [FN8] Based on the undisputed facts detailed above, we conclude that the walking fingers logo does not function as a mark in the nonterritory. Because of the myriad uses of the logo by many different publishers for virtually all directories disseminated in the nonterritory, we find as a matter of law that in the nonterritory the logo fails to function and cannot function as a trademark which identifies and distinguishes the source of the classified directories. That is, because the public is accustomed to seeing the walking fingers logo on all classified telephone directories, wherever it may encounter them, it will not regard the logo as a trademark but merely as an informational symbol which denotes yellow pages. See, In re Melville Corp., 228 USPQ 970 (TTAB 1986); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) and cases cited therein.
Although applicant has conceded the widespread use by others outside its certificated area, i.e., the area claimed in its application, applicant asserts that in a concurrent use application, use of the mark by others outside of the territory for which the applicant seeks registration is of no significance. Applicant characterizes the issues here as whether the mark functions as a trademark and whether applicant has made substantially exclusive use of that mark in its claimed territory.
Applicant's position is incorrect as a matter of law. Before an applicant may obtain a concurrent registration he must first satisfy the requirements for registration which apply to any application, whether restricted or unrestricted. For that reason, an application for concurrent use is examined ex parte for registrability in the same manner as is any application. See, J. McCarthy, Trademarks and Unfair Competition § 20.22 (2d ed.1984). Thus, the use by third parties of the walking fingers as a designation for any classified telephone directory, and the ability of the logo to function as a trademark, whether it be inside or outside the territory claimed by applicant in its concurrent use application, is relevant to our inquiry.
*5 Applicant has attempted to avoid the registrability problem of the logo, namely that the walking fingers symbol does not function as a mark, by gerrymandering the territory claimed in its application. In effect, applicant has created its own definitions of both legitimate users of the symbol and infringing users, and then has tortuously delineated a territory in which it asserts it is the only legitimate user, and where the logo is perceived as its mark. The fallacy of applicant's manipulation of the concurrent registration provision is obvious when one examines the territory which applicant has claimed. Although applicant has defined an area consisting of portions of nine states located in the southeastern part of the country, within the envelope of these nine states applicant has acknowledged some two hundred pockets where applicant claims no rights, and where applicant characterizes the third-party uses as being by concurrent users. The attached map, submitted with the affidavit of opposers' witness Cindy Johnson, graphically displays some of these pockets of so-called concurrent users in seven of the states.
The concurrent registration provision is an exception to Section 2(d) of the Trademark Act, which normally prohibits the registration of marks which are likely to cause confusion or mistake or to deceive with respect to a registered or previously used mark or trade name. The purpose of the concurrent registration provision is to provide for the situation in which two or more persons who may have become entitled to use the same mark by reason of their lawful concurrent use may each be entitled to register the mark under suitable conditions and restrictions. S.Rept. No. 2266 [To Accompany S. 2540], 83d Cong., 2d Sess. 8 (1954).] Thus, concurrent registration is designed to accommodate situations in which more than one entity has proprietary rights in a mark, but not in situations like the present one, in which a party wishes to appropriate a term which arguably is associated with the party in a particular area, but is generic or otherwise incapable of functioning as a mark, in the rest of the United States. [FN9] The concurrent registration proviso in Section 2(d) deals with the concept of likelihood of confusion between marks used as marks by more than one party. However, the present case has nothing to do with likelihood of confusion between marks.
Apparently in an attempt to fit this situation into a concurrent registration mold, applicant has argued that each company which provides telephone service has typically published for its particular certificated area a classified yellow pages section of a directory, identified by the walking fingers logo, and that the subscribers in the particular certificated area have come to associate the logo with the local telephone company for that area. Thus, applicant treats the entire United States as a patchwork of concurrent users of the logo, each user being a telephone company and its area of use being the area in which it is authorized to provide telephone service.
*6 The difficulty with this argument is that it does not address the uncontroverted evidence of use of the logo on directories distributed in the nonterritory by publishing companies which do not provide telephone service, nor the affidavit evidence that the logo (at least in the nonterritory) is the generic symbol for yellow pages. [FN10] Moreover, two of the companies which applicant has specifically identified as concurrent users, Bell Atlantic and US West, treat the logo not as a trademark, but as a non-proprietary symbol, and applicant has not demonstrated that any so-called excepted user uses the symbol as a trademark.
In conclusion, because there is no genuine issue of fact that, at least in the nonterritory, the walking fingers logo is used by a myriad of different parties on virtually every classified telephone directory which is distributed in this area, the logo does not and cannot function as a mark in the nonterritory and, therefore, as a matter of law the logo cannot be registered by applicant for the geographically restricted territory where it arguably is associated with applicant as a mark. [FN11] Accordingly, the oppositions are sustained, and concurrent registration to applicant is refused. In view of our decision herein, we have not addressed the other grounds as to which opposers seek summary judgment. [FN12]
J. D. Sams
J. E. Rice
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/520,225, filed February 1, 1985, alleging dates of first use at least as early as 1974. In the papers submitted as part of the application file applicant has identified 8 users of the mark outside the claimed geographic area, consisting of six regional holding companies created as a result of the divestiture of AT & T, and two former Bell operating companies which survived divestiture. Applicant has also indicated that within the claimed nine state geographic area there are independent telephone companies which "are known to have been lawfully using the mark for classified telephone directories in the respective telephone exchange areas wherein such independent telephone companies are certified to provide wireline telecommunications services." Neither the specific geographic areas of these independent telephone companies, nor an identification of these lawful users, has been provided. Accordingly, should applicant ultimately prevail, the application will be remanded to the Examining Attorney in order that applicant may provide the defined geographic area for which it seeks registration, specifically indicating the excluded areas of the particular telephone company users and also identifying such concurrent users by setting forth their names and addresses. Trademark Rule 2.42.
FN2. Opposition No. 79,396 by Ameritech Publishing, Inc. was not consolidated because Ameritech's position is based on different factual and legal issues.
FN3. Applicant has objected to opposers' reply as unnecessary and inappropriate because applicant's papers opposing the motion for summary judgment raised no new issues and because opposers' reply has raised new matters. As applicant has recognized, it is within the discretion of the Board as to whether it will accept reply briefs. In this case, in view of the breadth of this proceeding in terms of the number of oppositions, the Board believes the reply brief would be of benefit, and has therefore considered it. For the same reason, we have considered applicant's surreply, although the Board's general policy is to discourage the filing of both reply and surreply papers.
FN4. With their moving papers opposers have submitted 37 affidavits, with exhibits, while applicant has submitted 4 affidavits, with exhibits, as part of its opposing papers. This evidence fills five large boxes.
FN5. We note that applicant used a very similar stylized version of the logo beginning in 1974, and other more realistic depictions of walking fingers going back to 1962 or 1963.
FN6. The directories submitted include some published by applicant or its related companies, but these comprise a relatively small number of directories.
FN7. There are many more examples detailed in the numerous affidavits filed by opposers.
FN8. Applicant has submitted evidence that demonstrates a genuine issue as to whether the walking fingers logo is associated with applicant within its operating area. However, the existence of such a genuine issue does not preclude the granting of summary judgment because, as detailed infra, whether or not the applied-for design is associated with applicant within the area claimed for concurrent registration is not an issue of material fact.
FN9. For purposes of deciding this motion, we have treated the walking fingers logo as a design associated with applicant in its claimed territory, since the survey evidence presented by applicant raises a genuine issue of fact as to whether the logo is associated with applicant in that territory.
FN10. Again, for purposes of deciding this motion we have limited our consideration of the evidence of third-party use and genericness to the nonterritory, since applicant asserts that any use within its claimed territory is recent and infringing, and that applicant has taken steps to halt it.
FN11. Our decision herein is limited to the holding that applicant does not meet the requirements for concurrent registration under the federal trademark statute; we make no comment as to whether applicant has any other bases for protection of the logo in its area of use.
FN12. Opposers' Donnelley Information Publishing Inc. and Reuben H. Donnelley Corporation's motion to admit certain documents from a court proceeding, which motion was opposed by applicant, is denied as moot, since the documents were submitted in support of the other grounds.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Administrator, Trademark Trial and Appeal Board
*7 The enclosed map was inadvertently omitted as an attachment to the opinion. (see page 11).