Let’s take it back a bit. In January 2017, AT&T applied for registration of the EVOLUTION TO 5G trademark for use in, broadly speaking, telecommunication services. Specifically, AT&T requested that the USPTO register the EVOLUTION TO 5G mark for use in a myriad of classes including telephone and electronics services, retail and online store services, repair services for telecommunications, web-hosting, and technological security.
Initially, the USPTO’s attorneys seemed hesitant to go forward with registration of this mark. In March 2017, it insisted that AT&T clarify the goods and services in which AT&T would be using the EVOLUTION TO 5G mark to ensure that others seeking trademark registrations would be on notice of the mark’s purported use.
While AT&T complied and submitted a new, more detailed application, the USPTO stood its ground. It stated that it would require even more clarification in its second and final denial of the application on September 19, 2017.
When dealing with administrative agencies such as these, there is usually a decision appeals process of some kind. Of course, the same goes for the USPTO’s trademark registration procedure. In response to the Final Action, AT&T fought back and filed a Request for Reconsideration on April 10, 2018.
Accordingly, the Examiner assigned to the case amended the scope of the EVOLUTION TO 5G mark’s application ever so slightly, adding only the bolded portion among a slew of other goods and services described by AT&T:
“. . . Computer services, namely, providing a secure, web-based service featuring technology that enables customers to remotely manage, administer, modify and control home security and home automation devices . . . ”
While it seems like the Examiner added very little language, the application was amended accordingly. Apparently, this small edit was enough to get it through the examination process and finally onward to publication in the Official Gazette on May 22, 2018.
Despite the fact that over a year had gone by since the initial application was filed with the USPTO, AT&T’s battle to get this trademark registered has proved to be ongoing.
The point of publication in the Official Gazette is to ensure that other mark owners are “on notice” regarding registration of new marks. If someone thinks that they will be damaged by registration of a published mark, they are free to oppose it at this stage.
Several took advantage of the opportunity to oppose registration of the EVOLUTION TO 5G mark. On May 17, the USPTO received a letter of protest regarding the mark wherein one concerned protester pointed out the existence of various marks utilizing the term “5G” in the relevant marketplace, including the 5G GIGA mark owned by LG, the MOBILE SAMSUNG 5G mark owned by Samsung Electronics, and the 5G WIFI mark owned by Broadcom.
As the title of this blog post implies, that protester wasn’t the only one to have problems with registration of the EVOLUTION TO 5G mark. On July 23, Sprint filed an opposition to registration of the mark with a plethora of arguments against its registration.
Sprint’s filing gets to the reason for its opposition pretty swiftly. Obviously, the term “5G” is commonly used by telecommunications companies such as Sprint and Verizon to refer to the features of wireless devices, specifically being used as an abbreviated term for “5th Generation”. Because of this common use in the marketplace as well as its use in the mark in question, Sprint argues, AT&T’s EVOLUTION TO 5G mark is “descriptive” and therefore not registrable as a trademark under Federal law.
A mark is descriptive when it merely describes the nature or function of the product of which it is registered for. For example, if you tried to register the APPLE mark for use in selling apples, the USPTO would reject your application pretty fast due to the fact that your APPLE mark would be easily deemed descriptive. Alternatively, the APPLE mark for use in selling computers would not be descriptive (but it would probably be best if you didn’t try that one.)
We’ll have to wait and see what AT&T’s answer is, but it’s likely that the’ll have to prove that the EVOLUTION TO 5G mark is not descriptive. What do you think? Is the EVOLUTION TO 5G mark much too descriptive to warrant registration?
Author, Caroline Womack, is a rising 3L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.