BellSouth Corp. v. DataNational Corp.

• Decision Date: 26 July 1995
• Docket Number: No. 91-1461,91-1461
• Citation: 35 USPQ2d 1554,60 F.3d 1565
• Parties: BELLSOUTH CORPORATION, Appellant, v. DATANATIONAL CORPORATION; Association of North America Directory Publishers; Reuben H. Donnelley Corporation; Donnelley Information Publishing, Inc.; US West, Inc. and Christian Publishing & Services, Inc.; Multi-Local Media Corporation; Cellular Directory Corporation; Contel Corporation; George Edward Brumley, d/b/a The George Brumley Company; Scott Wilcox, d/b/a Telco Directory Publishing; Telcom Directories, Inc.; North American Directories, Inc.; GTE Directories Corporation; Yellow Pages--Nationwide Edition Directory, Inc. and U.S. Printing Directory, Inc.; 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, Inc., Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1565

60 F.3d 1565

35 U.S.P.Q.2d 1554

BELLSOUTH CORPORATION, Appellant, v.DATANATIONAL CORPORATION; Association of North America Directory Publishers; Reuben H. Donnelley CorporationDonnelley Information Publishing, Inc.; US West, Inc. and Christian Publishing & Services, Inc.; Multi-Local Media Corporation; Cellular Directory Corporation; Contel Corporation; George Edward Brumley, d/b/a The George Brumley Company; Scott Wilcox, d/b/a Telco Directory Publishing; Telcom Directories, Inc.; North American Directories, Inc.; GTE Directories Corporation; Yellow Pages--Nationwide Edition Directory, Inc. and U.S. Printing Directory, Inc.; 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, Inc., Appellees.

No. 91-1461.

United States Court of Appeals Federal Circuit.

July 26, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Sept. 29, 1995.

Anthony B. Askew, Jones, Askew & Lunsford, Atlanta, GA, argued for appellant.With him on the brief was Stephen M. Schaetzel.Also on the brief were Sandra J. Evans, Bellsouth Corp., Atlanta, GA and Vincent L. Sgrosso, Bellsouth Advertising & Pub. Corp., Atlanta, GA, of counsel.

Baila H. Celedonia, Cowan, Liebnowitz & Latman, P.C., of New York City, argued for appellees.Also on the brief were Paul F. Kilmer, Gadsby & Hannah, of Washington, DC, Howard B. Weinreich, Volt Information Sciences, Inc., New York City, Josephine Lea Iselin, Lankenau & Bickford, New York City, Lawrence E. Abelman and Nancy J. Mertzel, Abelman, Frayne, Rezac & Schwab, New York City, Kevin G. Smith, Kimmel, Crowell & Weaver, of Arlington, VA, and Robert D. Hovey, Hovey, Williams, Timmons & Collins, Kansas City, MO.

Before ARCHER, Chief Judge, ^*RICH, and MAYER, Circuit Judges.

Opinion for the court filed by Chief Judge ARCHER.Circuit Judge MAYER dissents without opinion.

ARCHER, Chief Judge.

BellSouth Corporation(BellSouth) appeals from a decision of the Trademark Trial and Appeal Board(board) of the Patent and Trademark Office(PTO) sustaining the opposition of DataNational Corporation and twenty-three other opposers (opposers) on summary judgment and refusing BellSouth's concurrent use registration of a "Walking Fingers" logo as a design mark for classified telephone directories.We affirm.

I.

In the early 1960's, American Telephone & Telegraph Company(AT & T) and its subsidiary regional operating companies that made up the Bell System began using the slogan "Let Your Fingers Do The Walking" with the "Walking Fingers" logo on their classified telephone directories.The regional Bell System operating companies published telephone directories covering their respective geographic regions.The companies sold advertising space in the commercial listings or "Yellow Pages" portion of the directories and gave the directories to their customers without charge.The slogan and logo were the subject of a nation-wide advertising campaign.

The "Walking Fingers" logo has undergone changes since its introduction but the conventional one at issue here was first introduced in the early 1970's.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Although the logo is undoubtedly familiar to many, AT & T never filed a trademark registration application for this most famous version of the "Walking Fingers" logo.In fact, the record is quite clear that AT & T never treated the logo as a trademark at all.Instead, prior to the divestiture of BellSouth in 1984, AT & T allowed any and all competing publishers of telephone directories to use the logo on their own directories.

AT & T and its operating companies were not the only publishers of telephone directories prior to their divestiture by AT & T. Independent (i.e., non-Bell) telephone companies and directory publishers also published telephone directories and sold advertising space in commercial listings.AT & T freely allowed these different source publishers to use the logo.The record is clear that AT & T consciously chose not to enforce any proprietary rights it might have had in the "Walking Fingers" logo at issue.¹The "Walking Fingers" logo has since been adopted and used by most companies who publish classified telephone directories.

II.

BellSouth was formed in 1984 as a result by the divestiture of AT & T. BellSouth is the holding company for two of the twenty-two former Bell System operating companies, Southern Bell and South Central Bell.Southern Bell and South Central Bell are certified to provide wireline telecommunications service in certain areas of the states of North Carolina, South Carolina, Georgia, Florida, Alabama, Mississippi, Louisiana, Tennessee, and Kentucky, and the Commonwealth of Puerto Rico.

In 1985, BellSouth applied for a concurrent use registration for the "Walking Fingers" design mark for classified telephone directories.BellSouth requested a registration that covered the certificated areas in the nine states in which its subsidiaries operate.It identified eight excepted users of the mark outside the claimed geographic area, consisting of the six regional holding companies created as a result of the divestiture and two former Bell System operating companies that survived the divestiture (the "Baby Bells").

Twelve different oppositions by twenty-four different opposers were filed in response to BellSouth's application.Opposers moved for summary judgment on several grounds, including that the mark had become a generic designation for information directories.Opposers filed affidavits and evidence in support of the motion.Among this evidence was trade association data showing that of the 6,200 classified telephone directories published in the 1988-89 time frame, approximately 5900 used the "Walking Fingers" logo on the front cover and another 300 use the mark somewhere in or on their directories.The evidence demonstrated that the publishers of the directories included the Baby Bells, independent telephone companies, and independent publishers not affiliated with a phone company, and that many of these publishers had been using the mark since the late 1970s.The classified areas were often overlapping.Other evidence filed demonstrated that excepted users Bell Atlantic Corporation and U.S. West, Incorporated, consider the logo to be in the public domain, free for any publisher's use.In response, BellSouth provided consumer surveys showing that many customers in its service area identified the logo with BellSouth, not with classified directories generally.

In light of this evidence, the board granted summary judgment denying registration, agreeing with the opposers that the mark had become a generic indicator of the yellow pages without regard to any particular source.In its decision, the board assumed arguendo that the logo could operate as a trademark in the "claimed territory" in the nine state region ² where BellSouth operated and focused its analysis on the rest of the country, the "nonterritory."After reviewing the evidence proffered in support of and opposing the summary judgment motion, the board noted that "[t]here 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," that "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," and that "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."The board concluded that the logo was generic as to the nonterritory and that, as a matter of law, it followed that BellSouth's registration for the claimed territory within the nine state geographic area must be denied.The board held:

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.

In its reconsideration decision affirming its earlier decision, the board clarified its position on concurrent use proceedings.The board stated that:

concurrent use registrations are appropriate where a term or logo is used in a proprietary manner by more than one party, and each party uses the term as its trademark in separate parts of the United States in circumstances where those trademark uses are not likely to cause confusion.A concurrent use registration, however, is not appropriate where the uses in the unclaimed territory (the nonterritory) are generic uses.

BellSouth appeals the decision of the board on the grounds (1) that the board committed factual and legal error in concluding the logo was generic in the nonterritory and (2) that assuming arguendo that the logo is generic in the nonterritory, this does not foreclose a concurrent use registration for the territory claimed by BellSouth.

III.

In reviewing the board's grant of summary judgment, we apply the same standard as the board, the standard of Federal Rule of Civil Procedure 56.Institut National Des Appellations D'Origine v. Vintners...