*3 LUTTIG, Bеfore NIEMEYER and Judges, WILLIAMS, Circuit and United Judge States District for the District of Maryland, sitting by designation. if part, part, Affirmed vacated in and by published remanded opinion. Judge opinion, NIEMEYER wrote the in which WILLIAMS, Judge joined. Judge a concurring LUTTIG wrote and dissenting opinion.
OPINION NIEMEYER, Judge: Circuit (“AOL”) Online, America Inc. com- menced this action AT T Corpo- & (“AT T”) ration & for AT alleged & T’s infringements of three trademarks claims connection with its Internet “Buddy List,” “You Have services— and “IM.”'The district court entered sum- mary judgment in favor of AT & T with respect mark, that, to each concluding as a law, matter alleged ge- marks are neric cannot be enforced as the exclu- property sive of AOL. For the reasons that follow, we conclude that the question “Buddy whether List” is a valid mark rais- disputed es issues of material fact and therefore cannot be resolved on summary judgment. With respect to the two other marks, claimed we affirm for the reasons ARGUED: Maureen Mahoney, Ellen given herein. Watkins, D.C., &
Latham Washington, for Appellant. Raster, Laura A. AT & T Cor- I. poration, Basking Ridge, Jersey, New Appellee. Founded AOL is ON BRIEF: now the Everett C. John- son, Jr., Vu, largest Minh world’s Watkins, provider, N. Latham Internet service & D.C.; Washington, Cordray, claiming Richard more than A. 18 million members City, Ohio; Grove Paul T. Cappuccio, pay who a monthly fee for its services. facility prohibit using to trans- it from marks similar to include the These services (“e-mail”) mail complaint, mit and receive electronic those asserted In its it AOL. a means to establish real-time commu- alleged that AT & T’s use of similar marks (“chat”) through messag- “instant nication provisions dilution violated the trademark ing.” Act, 1125(c), Lanham 15 U.S.C. infringes AOL’s marks violation of service, with its chat connection addition, 1114. In demand- “IM” to describe “Buddy List” and uses AT accounting profits, ed an & T’s “Buddy the service. The features of to create a list of damages, punitive damages, attorneys enables the subscriber employed by fees, answer, screen names other identified and costs. In its AT & T the subscriber wishes to users with whom contended, among things, other that AOL’s displays which of those communicate “common, asserted marks were *4 currently using the pre-selected users is e-mail, messaging, terms for the instant “Buddy” by service. If a is identified AOL communication, and related It services.” online, “Buddy List” as the subscriber seeking filed a a declaratory counterclaim “IM,” click a button labeled may then judgment marks are not that AOL’s valid messag- which are the initials of “instant requesting an trаdemarks and order di- initiate a real-time chat session ing,” and recting Trademark the Patent and Office on the with the subscriber so identified registration “Buddy to cancel the List.” “Buddy “Buddy List.” AOL has used in- preliminary The district court denied pro- and “IM” since at least 1997. It has and, junctive following discovery, relief extensively, moted these terms and it as- summary AT T granted judgment & on proprietary that it has a interest serts now that all three of the ground claimed addition, respect in to them. with incapa- and therefore generic marks were List,” “Buddy AOL obtained a certificate functioning ble of as trademarks. The 23, 1998, registration on June from the copy that a of its order court also directed Office, indicating Patent and Trademark of Patents be sent to the Commissioner that the mark has been on the and “in order to effect the Trademarks Principal Register and that has used AOL cancellation of the BUDDY LIST mark.” August mark since as service 31,1995. on The district court rested its decision obtained from third- the record Also, in connection with its e-mail ser- sources, party including Internet dictionar- vice, subscribers that AOL advises its ies, published guides to both the users’ by displaying have received e-mail services, Internet and to AOL use of the Mail,” by playing a re- words “You by competitors, by and use alleged marks mail,” announces, got cording that “You’ve alleged marks a manner AOL by depicting an icon of a traditional Al- suggesting generic their character. flag the red mailbox with raised. AOL survey evidence in though proffered AOL contends that it has used these marks that the marks 1992, support of its сontention describe its e-mail service since “Buddy “You Have Mail” and List” were promoted extensively, it has them trademarks, proprietary it now has a interest them. the court consid- protected be- survey evidence irrelevant ered T, competing AT & Internet service concluded that the marks cause had provider, phrases uses marks or similar gener- and that words used were by those claimed connection by ieally cannot become trademarks asso- its service to subscribers. It uses the ciation. List,” Mail!,” “Buddy terms “You have ' “I M Here.” appeal contentions on break AOL’s First, it general arguments. down into two 1998, In December AOL commenced when it action, argues that the district court erred per- seeking preliminary and “Buddy generic, List” is injunctive AT & T to concluded that manent relief despite federally regis- the fact that it is mark is not “merely” descriptive, but at a tered trademark. asserts because descriptive minimum is and has obtained expert office is an agency the trademark secondary meaning, see 15 U.S.C. delegated power Congress whom 1052(e). The Commissioner need- not Act, Lanham its decision to administer the require secondary evidence of if meaning “Buddy List” should be accorded register applied-for mark is inherently distinc- deference under the doctrine of Chevron v. tive being suggestive, arbitrary, or fan- Council, Inc., Natural Resources Defense PTO, Commerce, Dep’t ciful. See U.S. 2778, 104 S.Ct. 81 L.Ed.2d U.S. Trademark Manual Examining Proce- (1984). Second, AOL contends that (2d 1209.01, dure at 1200-106 ed. rev. 1.1 court, concluding the district 1997); see also Corp. Pizzeria Uno apply “pri- failed to generic, marks are (4th Cir.1984) Temple, mary correctly test significance” insofar (classifying catego- marks into four broad usage the court focused on of the mark strength ries of ascending or distinctive- published per- sources rather than on the (1) (2) (3) generic, ness: descriptive, sug- ceptions consuming public, of the relevant (4) fanciful). gestive, arbitrary which surveys. were evidenced AOL’s argues that the district court erred II. “Buddy List” in failing to accord deference to this ad- proceeding ministrative before the PTO principal argument for the *5 which the Commissioner issued a certifi- validity a “Buddy “suggestive” of List” as registration, cate of indicating thus that it mark significance having rests on the of its owns a valid registration suggestive “Buddy obtainеd a certificate of from (“PTO”). the Patent and Trademark Office List.” AOL maintains: argues that the district court erred ruling agency PTO’s action un- failing expert give deference to the deci special expertise dertaken with within sion register of the PTO to the mark with scope the of delegated authority its un- out requiring secondary evidence of mean such, der the Lanham Act. As its deter- ing. mination is entitled to substantial defer- See, e.g., ence. Chevron U.S.A. Inc. v. argument,
To address this
we must
Council,
recognize
statutory
first
Natural Resources
background
the
Defense
Inc.,
837,
which a certificate of registration
844,
2778,
467 U.S.
104 S.Ct.
issues. When the
of Pat
(1984).
Commissioner
This course of merely descriptive,” id. suggestive and not express is foreclosed terms of the added); Act, adjudica- (emphasis Stopping Lanham see also Petro which vest ultimate Inc., “that BUDDY tained other evidence River Petroleum James L.P. v. Ctrs. Cir.1997) (4th (holding suggestive that in a has been treated LISTR “only prima manner,” recognized determination and the court itself the PTO’s sugges- the mark is that facie evidence to create “tend[ed] that this other evidence reason, “may be rebut- tive,” and, for that dispute.” It found this evidence a factual ted”). however, because the evi- insignificant, “overwhelming,” genericness of was dence Accordingly, we conclude jury it that a reasonable determined gener “Buddy List” was deciding whether only “Buddy List” was could conclude ic, obligation to court had no the district evidence, generic. weighing so to the deci Chevron-type deference afford however, princi- the court violated basic Rather, required it was sion of the PTO. jurisprudence in de- ple of Rule 56 registration —that the -certification receive of ma- termining genuine whether a issue and treat “Buddy List” into evidence exists, court view the terial fact must facie evidence of the prima as certificate to the case, light most favorable and, in this as validity of the mark — party. sugges nonmoving it that was prima facie evidence tive. validity Because we conclude on “Buddy List” cannot be determined ap the district court acted While summary judgment the context in receiving in this case propriately case, presented in this we record evidence “Buddy registration certificate of rulings the district on “Bud- that the mark was vacate court’s prima facie evidence ignoring List,” erred in dy including directing it thereafter its order suggestive, prima facie evidence that evidence. The to cancel the certificate of Commissioner registration provided by the certificate pro- and remand for further registration, to establish a was in this case sufficient ceedings. fact that could not be
question of material
summary judgment. As the
resolved on
III.
‘You Have Mail”
Rule of Evi
to Federal
Committee Note
court concluded that
district
The
presumptions)
(dealing with
dence 301
mark ‘You
Mail” func
alleged
states,
presumption does not vanish
“[a]
primarily to inform
subscribers
tions
upon
contradicting
evi
the introduction
e-mail,
which the court
...;
merely
deemed
dence
instead
mail.”
court
found “is also known as
presumed, to
of the fact
sufficient evidence
that “when
common word or
concluded
*7
jury or other finder
be considered
phrase
ordinary
is used as a mark for its
rebutting
of fact.”
Although
meaning,
generic.”
the mark is
Accord
presumption
presump
may neutralize
it
that
could not enforce
ingly,
ruled
AOL
i.e.,
proof
the burden of
on
tion
that
itself —
“You Have Mail” as a trademark.
presumption
has
giving
the fact
rise to
that
argues
there is no evidence
rebutting evidence—it
been met without
“pri
record that
Have Mail” is
“You
from the case the evi
does not eliminate
presump marily perceived by
rise to the
consumers as ‘the
gave
dence itself that
service,”
Plumbing
tion.
v.
Reeves
Sanderson
common name’ of a
as would
Cf.
Prods., Inc.,
133, 120 S.Ct.
530 U.S.
genericness
the test of
stated in
meet
Sara
(2000). Thus,
2108, 147
L.Ed.2d
Corp. Kayser-Roth Corp.,
Lee
through
registration,
the certificate of
(4th Cir.1996),
Ampak,
and Glover v.
that
opinion
his
Commissioner introduces
(4th Cir.1996).
Inc., 74
F.3d 57
also
application
was suffi
registrant
of the
that the
court
contends
district
erred
cient to
a valid mark.
demonstrate
disregarding survey evidence that
indi
cates that ‘You Have Mail” is associated
But
provided
in addition
the evidence
Finally,
argues
AOL.
registration,
the certificate
the dis-
Act does not exclude common
trict court
that the record con- Lanham
observed
(cid:127)
“Accessing your mail:
scope
protection
Immediately
from the
phrases
—a
in,
upon logging
you
court
should
that it contends the district
principle
mail, you
message
will see a
indicat-
misunderstood.
ing: You Have Mail.” Peter M. Birns
Have
AOL has not
“You
(1985).
al.,
People
et
UNIX for
PTO,
therefore it must
Mail” with the
(cid:127)
you log
your system,
‘When
you
carry
establishing
the burden of
the validi
you
are told whether
have electronic
ownership
part
mark
ty and its
waiting
you.
mail
for
If
mail
there is
larger
infringe
its
burden
a trademark
waiting, you’ll see a line like the
prove
ment action. That burden is
following: You
Mail.”
Kevin
valid, protectable
trademark and
Reichard,
(2d
UNIX:
Basics 160
infringing
that the defendant is
ed.1998).
confusion, or a
by creating
likelihood
Furthermore,
companies
other
that pro-
thereof,
mistake,
by causing
byor
deceiv
vide e-mail services have used “You Have
ing as to the attributes of its mark. See 15
thereof,
or derivations
to notify
1114, 1125;
§§
Petro Stopping
their subscribers of the arrival of e-mail
Ctrs.,
agree
821 can, all use, or service from other electronic net- direct context through become works, density aspects, screen transistor- with marks because such a generalized components, computer application, ized sets of com- they are not used in the con mands, information, groups of digital or text оf their common meaning, but rather' Yet, electronic communications. suggestively. it!”, because Witness “Just do see use, Nike, pervasive of these terms have Enters., become Inc. v. “Just Did It” 6 F.3d (7th Cir.1993) generic. And even when created words (assuming, n. for new products strong have become deciding without that Nike has a trade marks, public’s pervasive the use of these mark in phrase), harder,” this try and “We marks creates a real sometimes risk that see In re Corp., Marriott (C.C.P.A.1975) disappear, pro- their distinctiveness will (noting registration of McCarthy “generi- cess Professor terms this slogan). cide,” as occurred with earlier trademarks bottom, At the law of in- trademarks “Thermos,”
such as “Aspirin,” “Cello- protect goodwill represented the tends phane,” and “Escalator.” by marks and property the valid interests
The task of distinguishing words or of entrepreneurs in goodwill phrases functioning as trademarks from those who appropriate would it for their phrases “linguistic words or com- own use. protects But it likewise pub- development with begins of an lic use commonly those used words and mons”. understanding of the common meaning phrases of public adopted, deny- and usage words their common ing any and then competitor one a right to corner proceeds ato determination of whether the those phrases words and by expropriating would-be trademark within falls heart- public them from “linguistic commons.” meaning usage. land of and The farther a Enforcing these conflicting policies creates would-be mark falls from the heartland line-drawing problems always that are not common meaning usage, and the more easily solved. generally See McCarthy, “distinctive” would-be mark can be- § 1:27 (discussing balance between the level, come. At one this determination of right protect use). right meaning word usage question can be a us, In the case before the record context law, another, but at it becomes factual of “You Mail” permits Have us to conclude question as to what public relevant aas matter law that usage perceives. dichotomy the le- between would-be mark within falls the heartland of gal question and question the factual meaning common and usage and therefore similar to that which exists in construing may not exclude others from contracts —when meaning and usage are using the same words in connection with unambiguous, the court construes the con- their e-mail service. This is indicated tract, but when ambiguous, are significant two facts that remain undisput- factual question must be by the resolved First, ed. AOL uses “You Have Mail” factfinder. functionally- consistently with — When a word or phrase’s does meaning common tell its sub- —to not fall Second, within the heartland of common scribers they have mail. others meaning usage, but the relevant industry nevertheless have used con- close, its strengthened by mail,” distinctiveness is “you tinue to use or a similar Thus, entrepreneur’s phrase, use. or presence words to announce e- phrases are not directly descriptive mail in an message electronic mailbox. product, service, a company, but rаther AOL has advanced no evidence that it uses suggest, through operation of the consum “You any Have Mail” in distinctive man- imagination, company, product er’s or ner. agree We with the therefore district service, can become trademarks. See Piz court that AOL not enforce “You Uno, zeria 747 F.2d at Similarly, 1527-28. Mail” as trademark in connection well-recognized slogans used without its e-mail notification service. *10 phrase the with AOL. survey evi dents associated that its argues
AOL D, B, C, only 9% of the re- Groups pub the an association dence indicates the spondents were able to associate Have Mail” and “You eye lic’s between single with a Internet phrase they heard is sufficient that this association AOL and provider, only 5% or online service tо factfinder con permit a reasonable or specific were to name Internet able Mail” is a trademark Have clude that ‘You provider with which to asso- online service service that has descriptive of its e-mail argues phrase they ciate the heard. AOL meaning. con secondary acquired from jury that a reasonable could conclude therefore, tends, only jury can de primary significance this evidence Have Mail” is a trade “You cide whether phrase “You public to the relevant of the secondary meaning for mark. Its Mail” is to denote its source and Have survey of 507 Inter a random consisted of generic. therefore that the term is not “very were whose households net users 1064(3)(“The primary sig- See U.S.C. an recеiving be Internet likely paying to registered of the mark to the nificance during an online service access service or ... public relevant shall be the test for following survey.” the months the three determining whether the divided into respondents were The 507 or goods has become the name A, respondents; Group groups: four on or in connection with which it services and, D, C, 86; B, 85; Group Group Group used”). has been Group A respondents in were 86. The summary-judgment stage At this heard or seen they had first asked whether proceedings, accept we must of the AOL’s Have Mail.” Those expression the “You portion public assertion that a of the asso affirmatively were then who answered AOL, ciates “You Have Mail” with the expres they whether associated asked widespread phrase. user of the But most specific Internet or online sion with one primary this fact does not reveal that the provid more than one provider, service Mail” significance of the term ‘You Have expression er. Those who associated to announce the arrival of new e-mail is then specific provider were asked one functional, usage heartland not provider with particular to identify the phrase. usage distinguish This does not phrase. whom Re associated e-mail service from that of oth B, C, and D were spondents Groups provider er service because the about questions asked similar different commonly “You Mail” is used in Have phrases. being queried Instead way i.e., functionally understood to con — Mail,” respon Have their reaction to “You vey meaning the common of words—-and about Group distinctively. dents in B were asked “New not AOL’s evidence of asso Arrived”; ciation what is called “de respondents Group Mail establish Has secondary meaning,” but sec Here”; and, such C were “Mail Is asked about facto ondary meaning does entitle not respondents D were asked about Group others exclude from functional use of “Mail from the Call.” The results obtained 1 McCarthy, words. See 7:66. Stated respondents given by answers otherwise, repeated ordinary use B, C, Groups D were termed the functioning words within the heartland of which, Condition,” according “Control ordinary meaning, their and not distinc provide design survey, was to tively, give proprietary right cannot aAOL which impоrtant “an baseline words, if an over those even association judge people’s associations strength develops ” between the words AOL. As Mail.’ expression with the You Have McCarthy explains, “Even if a Professor ‘You group Out of the that heard functional feature has achieved consumer respondents associated 41% of the (secondary meaning) of that recognition or online single origin, with a Internet the fea feature as indication of protectable provider, respon- legally service ture cannot serve as a and 37% of *11 7:66; symbol.” McCarthy, see also AOL bases its claim to “IM” on its Honickman, A.J. Co. assertions “IM” frequently been Canfield (3d Cir.1986) (noting, “[t]o associated the media with AOL and extent that a trademark also communi- that no other online or Internet service characteristics, cates functional it not does provider calls its real-time communications trademark”). function aas feature “IM.” It argues that because it was one of companies “IM,” the first provide therefore conclude that “You
We jury Mail” has been and continues to be used could conclude that “IM” denotes source, AOL and others to alert online not the feature. But AOL has subscribers there is electronic e-mail offered no support evidence to that conten- mailboxes, in their electronic and no more. tion. It can only contend in conclusory functional This use of words within the manner that “IM” is a trademark rather ordinary heartland of their meaning can- than simply product at issue. Accord- give not rise to a trademark for the e-mail ingly, while we do not determine that “IM” service when is no more than an- generic, we nevertheless agree with the nouncement of the arrival of a message. decision, district court’s based on this rec- Because AOL has failed to establish its ord, to deny AOL enforcement of “IM” as right exclusive to “You Have we its trademark. affirm the district court’s conclusion that AOL not exclude others from use of V. those words in connection its e-mail sum, we conclude that the validity of service. “Buddy List” cannot be resolved on sum- mary judgment in genuine view of issues IV. “IM” of material fact. Accordingly, we vacate Finally, AOL contends that the district court’s order finding “Buddy in refusing, district court erred based on a generic, as well as its directing order finding genericness, “IM” enforce as cancellation of the registra- certificate of its trademark for messaging its instant mark, tion for that and remand for further court, service. The district reciting undis proceedings. respect With to the district facts, puted “IM” concluded that is “an rulings denying court’s enforcement of that, initialism” for “instant message,” and “You Have Mail” and “IM” as the trade- despite their management’s admonitions AOL, marks of we affirm. verb, using “IM” as a noun or a employees used “IM” aas noun or a PART, AFFIRMED IN VACATEDIN verb in lieu of message,” “instant such as PART, AND REMANDED. “They pending” “Stop had an IM
IM’ing pointed LUTTIG, me.” The court also Judge, Circuit concurring books, dictionaries, glossaries defining part dissenting part: message” “instant with the “IM” designa I agree majority, with the and for the tion such as: message, “instant IM for identifies, reаsons it that a trial is neces- short,” (IM).” message or “instant It not sary to determine whether BUDDY Yahoo!, promoting ed pager protectable LISTR is a trademark under sendee, providing claimed that it was the Lanham Act. I also agree, solely but facts, “IMs.” Based on these and similar as because of complete absence of evi- well as the fact that AOL does not claim secondary meaning proffered by dence of any proprietary “in interest AOL, that AOL has not demonstrated its messaging,” stant the district court held entitlement protection to trademark (as that “IM message’ stands for ‘instant “IM”, company’s designation for its admits), primary and because the real-time messaging service. significance of ‘instant message’ is to stand However, for an I not messаge,’ ques ‘instant the term ... would decide the generic.” tion of protec whether AOL is entitled to question association is a the resolution e-mail notification vice unregistered for its
tion unnecessary “YOU includes of which is between feature under my it is HAVE MAIL” because us. parties before longer informs its that AOL no standing that, declining I to address should add *12 through they have e-mail that customers proprietary of AOL’s entitle- question HAVE MAIL.” phrase “YOU use of the to the “YOU HAVE MAIL” mes- ment Rather, that informs them it now sage, fully I am aware of the law of trade- message the different e-mail with mark abandonment and the fact that AOL And, MAIL.” as dis ‘YOU’VE GOT yet may right assert an exclusive to use of found, undisputed it is explicitly trict court message. that Under the circumstances-— used, T and “has that AT & never in- including parties that have not usе,” this plans future to claimed no messaging the court of formed customers of the ar phrase to inform its change purposes for the narrow —and rival of e-mail.* however, litigation only, I would deem way inti- intending Without the standard for abandonment satisfied. pro- entitlement to mate a view on AOL’s notification feature tection for the e-mail phrase includes the “YOU’VE GOT (or implica- perhaps by negative
MAIL”
tion, protec- my view on its entitlement MAIL”), HAVE tion for the “YOU America, UNITED STATES of argument at my questions I believe—as Plaintiff-Appellee, ought suggested to have the feature —that v. phrase “YOU’VE GOT includes the Tracy GARNETT, Michael from the sufficiently MAIL” is different Defendant-Appellant. MAIL” both its phrase ‘YOU HAVE grammatical dysfunctionality likely No. 99-4818. secondary meaning, possibly ge- Appeals, Unitеd States Court of well, to render a decision nericness as Fourth Circuit. separate matter alto- protection on its protection gether from a decision as 8, Argued Dec. 2000. ‘YOU the feature includes 13, Decided March 2001. is entitled HAVE MAIL.” Whether AOL protection to trademark for its current e- ar-
mail notification feature because of its
guable product or distinctiveness and ser-
* question, likely descriptive Were I I lo decide this would deemed distinctive either as a majority’s analysis, join (with be unable to in the proof secondary meaning) or as result, join even I in its for the were able Thus, suggestive contrary mark. to the majority suggests that words used for their majority opinion, the mere fact a term or ordinary meaning rieverbe used "distinc can suggests mark describes or a function does See, tively.” e.g., op. at 823. course not, facto, precludе protec- ipso trademark true that even uncom "common words”—or Qualitex tion. See also Co. v. Jacobson Prod- mon words—used in a sense will not Co., Inc., 159, 163, U.S. ucts 514 115 S.Ct. protection; public be afforded trademark 1300, (1995) (color L.Ed.2d 131 248 can be- right descriptive has the to use the common way come distinctive "much in the that de- product. Corp. name for a Perini v. Perini product (say, scriptive words on a 'Trim' on Construction, Inc., 121, (4th 915 F.2d clippers nail er) or 'Car-Freshener' on deodoriz- Cir.1990). Management, See also Ale House product's origin.”). can come to indicate a House, Inc., Raleigh Inc. v. Ale "ordinary Whether words” "also communi- (4th Inc., Cir.2000); Ampak, Glover functional characteristics” be a (4th ] Cir.1996). F.3d But it is no less cate! starting point, ending point, but it is not the true that "common afforded their "or words” time, dinary meaning,” may, majority presumes. from time to be as the