America Online, Incorporated v.  at&tcorporation

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
 AMERICA ONLINE, INCORPORATED,
Plaintiff-Appellant,
v. No. 99-2138 
AT&T CORPORATION,
Defendant-Appellee. 
Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
Claude M. Hilton, Chief District Judge.
(CA-98-1821-A)
Argued: October 30, 2000
Decided: February 28, 2001
Before NIEMEYER and LUTTIG, Circuit Judges, and
Alexander WILLIAMS, Jr., United States District Judge
for the District of Maryland, sitting by designation.
Affirmed in part, vacated in part, and remanded by published opinion.
Judge Niemeyer wrote the opinion, in which Judge Williams joined.
Judge Luttig wrote a concurring and dissenting opinion.
COUNSEL
ARGUED: Maureen Ellen Mahoney, LATHAM & WATKINS,
Washington, D.C., for Appellant. Laura A. Kaster, AT&T CORPO-
RATION, Basking Ridge, New Jersey, for Appellee. ON BRIEF:
Everett C. Johnson, Jr., Minh N. Vu, LATHAM & WATKINS,

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Washington, D.C.; Richard A. Cordray, Grove City, Ohio; Paul T.
Cappuccio, Randall J. Boe, Laura E. Jehl, AMERICA ONLINE,
INC., Dulles, Virginia, for Appellant. Howard Spierer, Judith A.
Archer, AT&T CORPORATION, Basking Ridge, New Jersey;
Edward T. Colbert, KENYON & KENYON, Washington, D.C.; Car-
ter C. Phillips, SIDLEY & AUSTIN, Washington, D.C.; Constantine
L. Trela, Jr., SIDLEY & AUSTIN, Chicago, Illinois, for Appellee.
OPINION
NIEMEYER, Circuit Judge:
America Online, Inc. ("AOL") commenced this action against
AT&T Corporation ("AT&T") for AT&T’s alleged infringements of
three trademarks that AOL claims in connection with its Internet ser-
vices — "Buddy List," "You Have Mail," and "IM." The district court
entered summary judgment in favor of AT&T with respect to each
mark, concluding that, as a matter of law, the alleged marks are
generic and cannot be enforced as the exclusive property of AOL. For
the reasons that follow, we conclude that the question whether
"Buddy List" is a valid mark raises disputed issues of material fact
and therefore cannot be resolved on summary judgment. With respect
to the two other claimed marks, we affirm for the reasons given
herein.
I.
Founded in 1985, AOL is now the world’s largest Internet service
provider, claiming more than 18 million members who pay a monthly
fee for its services. These services include the facility to transmit and
receive electronic mail ("e-mail") and a means to establish real-time
communication ("chat") through "instant messaging."
In connection with its chat service, AOL uses "Buddy List" and
"IM" to describe features of the service. The "Buddy List" enables the
subscriber to create a list of identified screen names employed by
other users with whom the subscriber wishes to communicate and dis-
plays which of those pre-selected users is currently using the AOL
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service. If a "Buddy" is identified by the "Buddy List" as online, the
subscriber may then click a button labeled "IM," which are the initials
of "instant messaging," and initiate a real-time chat session with the
subscriber so identified on the "Buddy List." AOL has used "Buddy
List" and "IM" since at least 1997. It has promoted these terms exten-
sively, and it asserts now that it has a proprietary interest in them. In
addition, with respect to "Buddy List," AOL obtained a certificate of
registration on June 23, 1998, from the Patent and Trademark Office,
indicating that the mark has been registered on the Principal Register
and that AOL has used the mark as a service mark since August 31,
1995.
Also, in connection with its e-mail service, AOL advises its sub-
scribers that they have received e-mail by displaying the words "You
Have Mail," by playing a recording that announces, "You’ve got
mail," and by depicting an icon of a traditional mailbox with the red
flag raised. AOL contends that it has used these marks to describe its
e-mail service since 1992, that it has promoted them extensively, and
that it now has a proprietary interest in them.
AT&T, a competing Internet service provider, uses marks or
phrases similar to those claimed by AOL in connection with its ser-
vice to subscribers. It uses the terms "Buddy List," "You have Mail!,"
and "I M Here."
In December 1998, AOL commenced this action, seeking prelimi-
nary and permanent injunctive relief against AT&T to prohibit it from
using marks similar to those asserted by AOL. In its complaint, it
alleged that AT&T’s use of similar marks violated the trademark dilu-
tion provisions of the Lanham Act, 15 U.S.C. § 1125(c), and infringes
AOL’s marks in violation of 15 U.S.C. § 1114. In addition, it
demanded an accounting of AT&T’s profits, damages, punitive dam-
ages, attorneys fees, and costs. In its answer, AT&T contended,
among other things, that AOL’s asserted marks were "common,
generic terms for the e-mail, instant messaging, communication, and
related services." It filed a counterclaim seeking a declaratory judg-
ment that AOL’s marks are not valid trademarks and requesting an
order directing the Patent and Trademark Office to cancel the registra-
tion for "Buddy List."
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The district court denied preliminary injunctive relief and, follow-
ing discovery, granted AT&T summary judgment on the ground that
all three of the claimed marks were generic and therefore incapable
of functioning as trademarks. The court also directed that a copy of
its order be sent to the Commissioner of Patents and Trademarks "in
order to effect the cancellation of the BUDDY LIST mark." The dis-
trict court rested its decision on evidence in the record obtained from
third-party sources, including Internet dictionaries, published users’
guides to both the Internet and to AOL services, use of the alleged
marks by competitors, and use by AOL of the alleged marks in a man-
ner suggesting their generic character. Although AOL proffered sur-
vey evidence in support of its contention that the marks "You Have
Mail" and "Buddy List" were protected trademarks, the court consid-
ered the survey evidence irrelevant because it had concluded that the
marks were generic and that words used generically cannot become
trademarks by association.
AOL’s contentions on appeal break down into two general argu-
ments. First, it argues that the district court erred when it concluded
that "Buddy List" is generic, despite the fact that it is a federally reg-
istered trademark. It asserts that because the trademark office is an
expert agency to whom Congress has delegated power to administer
the Lanham Act, its decision to register "Buddy List" should be
accorded deference under the doctrine of Chevron v. Natural
Resources Defense Council, Inc., 467 U.S. 837 (1984). Second, AOL
contends that the district court, in concluding that the marks are
generic, failed to apply the "primary significance" test correctly inso-
far as the court focused on usage of the mark in published sources
rather than on the perceptions of the relevant consuming public,
which were evidenced by AOL’s surveys.
II. "Buddy List"
AOL’s principal argument for the validity of "Buddy List" as a
"suggestive" mark rests on the significance of its having obtained a
certificate of registration from the Patent and Trademark Office
("PTO"). It argues that the district court erred in failing to give defer-
ence to the expert decision of the PTO to register the mark without
requiring evidence of secondary meaning.
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To address this argument, we must first recognize the statutory
background against which a certificate of registration issues. When
the Commissioner of Patents and Trademarks, in furtherance of an
application of a registrant, lists a mark on the Principal Register, he
issues a certificate of registration which provides the registrant with
prima facie evidence of (1) the validity of the mark and its registra-
tion; (2) the registrant’s ownership; and (3) the registrant’s "exclusive
right" to use the mark on or in connection with the goods and services
specified in the certificate of registration. See 15 U.S.C. § 1057(b).
And the Commissioner does not register a mark unless it meets the
requirements established by statute. See, e.g., 15 U.S.C. §§ 1051-
1057, 1064. With a certificate of registration, therefore, the registrant
obtains prima facie evidence that its mark is not generic in the eyes
of the relevant public, see 15 U.S.C. § 1064(3), and that its mark is
not "merely" descriptive, but at a minimum is descriptive and has
obtained secondary meaning, see 15 U.S.C. § 1052(e). The Commis-
sioner need not require evidence of secondary meaning if the applied-
for mark is inherently distinctive by being suggestive, arbitrary, or
fanciful. See PTO, U.S. Dep’t of Commerce, Trademark Manual of
Examining Procedure § 1209.01, at 1200-106 (2d ed. rev. 1.1 1997);
see also Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.
1984) (classifying marks into four broad categories of ascending
strength or distinctiveness: (1) generic, (2) descriptive, (3) suggestive,
and (4) arbitrary or fanciful).
AOL argues that the district court erred in failing to accord defer-
ence to this administrative proceeding before the PTO by which the
Commissioner issued a certificate of registration, thus indicating that
it owns a valid suggestive mark in "Buddy List." AOL maintains:
The PTO’s ruling is agency action undertaken with special
expertise within the scope of its delegated authority under
the Lanham Act. As such, its determination is entitled to
substantial deference. See, e.g., Chevron U.S.A., Inc. v. Nat-
ural Resources Defense Council, Inc., 467 U.S. 837, 844
(1984).
The district court acknowledged that "Buddy List" "has been
treated in a suggestive manner" according to some evidence. But it
found that "the only reasonable conclusion which could be drawn
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from the evidence points to generic usage." Of particular importance
to the Court was the fact that "virtually every third party which has
used the phrase, including so many of AOL’s competitors, use it as
a generic phrase." AT&T argues further on appeal that AOL received
"the maximum benefit of the registration afforded by law." It main-
tains that the benefit accorded by AOL’s registration of "Buddy List"
was not "sufficient in light of the overwhelming evidence presented
by AT&T. AT&T’s ‘compelling’ and ‘overwhelming’ evidence of
genericism amply supports the district court’s ruling that no reason-
able jury could find ‘buddy list’ anything other than generic."
Chevron, on which AOL relies so heavily, directs a court, when
reviewing an agency’s interpretation of a statute, to engage in a two-
step process. First, it must determine "whether Congress has directly
spoken to the precise question at issue." Chevron, 467 U.S. at 842.
Only if the statutory language is silent or ambiguous with respect to
the question posed does the court then proceed to the second step —
to determine "whether the agency’s answer is based on a permissible
construction of the statute." Id. at 843. Thus, Chevron deference is a
tool of statutory construction whereby courts are instructed to defer
to the reasonable interpretations of expert agencies charged by Con-
gress "to fill any gap left, implicitly or explicitly," in the statutes they
administer. Id. at 843.
In this case, however, AOL is not asking the court to defer to the
PTO’s interpretation of a particular provision of the Lanham Act, nor
is it asking us to defer to a PTO regulation that arguably controls the
outcome of this case. Instead, AOL is arguing for the application of
Chevron deference to what amounts to a quasi-adjudicatory decision
of the PTO — that "Buddy List" is a suggestive trademark and there-
fore is entitled to protection under the Lanham Act. AOL’s argument
that courts should defer to an agency decision, therefore, would not
appear to be governed by Chevron, which relates to statutory interpre-
tation, but rather by principles governing administrative adjudications
of mixed questions of law and fact. We would expect AOL to have
argued, therefore, that the PTO’s decision to register "Buddy List"
ought not be reversed if supported by substantial evidence. See gener-
ally 5 U.S.C. § 706(2)(e).
This course of argument, however, is foreclosed by the express
terms of the Lanham Act, which vest ultimate adjudication of trade-
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mark disputes in federal courts. Thus, trademark holders who allege
infringement may sue infringers in federal court and obtain either
monetary damages, equitable relief, or both. See generally 15 U.S.C.
§§ 1114-1117, 1121, 1125. More revealing, Congress expressly
vested in federal courts the power to "determine the right to registra-
tion, order the cancelation of registrations, in whole or in part, restore
canceled registrations, and otherwise rectify the register with respect
to the registrations of any party to the action." 15 U.S.C. § 1119.
Moreover, Congress left no doubt that the PTO’s decisions regarding
registrations fall under the supervision of federal courts, as it declared
that such judicial "orders shall be certified by the court to the Com-
missioner, who shall make appropriate entry upon the records of the
Patent and Trademark Office, and shall be controlled thereby." Id.
Finally, Congress plainly stated the limited deference that a certificate
of registration provides: it must be received into evidence but then
only serves as "prima facie evidence of the validity of the registered
mark." See 15 U.S.C. §§ 1057(b), 1115(a). In none of these provisions
conferring on federal courts the power to adjudicate rights under the
Lanham Act does Congress instruct the courts to review registration
decisions of the PTO under a deferential standard. To the contrary,
Congress "has directly spoken" on this issue, specifying a more lim-
ited standard: the agency action is "prima facie evidence" of specified
facts, and no more.
Although we have observed that a district court should not freely
substitute its opinion for that of the PTO, see RFE Indus., Inc. v. SPM
Corp., 105 F.3d 923, 926 (4th Cir. 1997), this observation was not
made because the PTO was entitled to deference, but rather because
its decision to register a mark, without requiring evidence of second-
ary meaning, was "powerful evidence that the registered mark is sug-
gestive and not merely descriptive," id. (emphasis added); see also
Petro Stopping Ctrs. L.P. v. James River Petroleum Inc., 130 F.3d 88,
93 (4th Cir. 1997) (holding that the PTO’s determination is "only
prima facie evidence that the mark is suggestive," and, for that reason,
"may be rebutted").
Accordingly, we conclude that in deciding whether "Buddy List"
was generic, the district court had no obligation to afford Chevron-
type deference to the decision of the PTO. Rather, it was required to
receive the certification of registration for "Buddy List" into evidence
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and treat that certificate as prima facie evidence of the validity of the
mark — and, in this case, as prima facie evidence that it was sugges-
tive.
While the district court acted appropriately in this case in receiving
the certificate of registration of "Buddy List" as prima facie evidence
that the mark was suggestive, it thereafter erred in ignoring that evi-
dence. The prima facie evidence provided by the certificate of regis-
tration was in this case sufficient to establish a question of material
fact that could not be resolved on summary judgment. As the Com-
mittee Note to Federal Rule of Evidence 301 (dealing with presump-
tions) states, "[a] presumption does not vanish upon the introduction
of contradicting evidence . . .; instead it is merely deemed sufficient
evidence of the fact presumed, to be considered by the jury or other
finder of fact." Although evidence rebutting the presumption may
neutralize the presumption itself — i.e., that the burden of proof on
the fact giving rise to the presumption has been met without rebutting
evidence — it does not eliminate from the case the evidence itself that
gave rise to the presumption. Cf. Reeves v. Sanderson Plumbing
Prods., Inc., 120 S. Ct. 2097, 2108 (2000). Thus, through the certifi-
cate of registration, the Commissioner introduces his opinion that the
application of the registrant was sufficient to demonstrate a valid
mark.
But in addition to the evidence provided by the certificate of regis-
tration, the district court observed that the record contained other evi-
dence "that BUDDY LIST® has been treated in a suggestive
manner," and the court itself recognized that this other evidence
"tend[ed] to create a factual dispute." It found this evidence insignifi-
cant, however, because the evidence of genericness was "overwhelm-
ing," and it determined that a reasonable jury could only conclude that
"Buddy List" was generic. In so weighing the evidence, however, the
court violated a basic principle of Rule 56 jurisprudence — that in
determining whether a genuine issue of material fact exists, a court
must view the evidence in the light most favorable to the nonmoving
party.
Because we conclude that the validity of "Buddy List" cannot be
determined on summary judgment in the context of the record evi-
dence presented in this case, we vacate the district court’s rulings on
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"Buddy List," including its order directing the Commissioner to can-
cel the certificate of registration, and remand for further proceedings.
III. "You Have Mail"
The district court concluded that the alleged mark "You Have
Mail" functions primarily to inform AOL subscribers that they have
e-mail, which the court found "is also known as mail." The court con-
cluded that "when the common word or phrase is used as a mark for
its ordinary meaning, the mark is generic." Accordingly, it ruled that
AOL could not enforce "You Have Mail" as a trademark.
AOL argues that there is no evidence in the record that "You Have
Mail" is "primarily perceived by consumers as ‘the common name’
of a service," as would meet the test of genericness stated in Sara Lee
Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996), and Glover
v. Ampak, Inc., 74 F.3d 57 (4th Cir. 1996). It also contends that the
district court erred in disregarding survey evidence that indicates that
"You Have Mail" is associated with AOL. Finally, AOL argues that
the Lanham Act does not exclude common phrases from the scope of
protection — a principle that it contends the district court misunder-
stood.
AOL has not registered "You Have Mail" with the PTO, and there-
fore it must carry the burden of establishing the validity and its own-
ership of the mark as part of its larger burden in a trademark
infringement action. That burden is to prove that it has a valid, protec-
table trademark and that the defendant is infringing its mark by creat-
ing confusion, or a likelihood thereof, by causing mistake, or by
deceiving as to the attributes of its mark. See 15 U.S.C. §§ 1114,
1125; Petro Stopping Ctrs., 130 F.3d at 91. We agree with the district
court that AOL did not meet this burden.
First, the record establishes, without contradiction, that "You Have
Mail" has been used to inform computer users since the 1970s, a
decade before AOL came into existence, that they have electronic
mail in their electronic "mailboxes." AT&T has noted, for example,
that the UNIX operating system, one of the most widely used in the
computer industry, has, since before AOL was formed, displayed the
phrase "You Have Mail" or "You Have New Mail" whenever a user
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has received electronic mail. In the context of computer-based elec-
tronic communications across networked computers, the phrase "You
Have Mail" has been used for the common, ordinary purpose of
informing users of the arrival of electronic mail in their electronic
mailboxes. In addition, books describing how a computer user is
informed that he has e-mail on UNIX similarly reveal the functional
nature of the phrase. For example, the following explanations for the
presence of mail are described with "You Have Mail."
• "When you first log into the system, it will inform you
if you have any mail (i.e., someone has sent you mail).
The system will appear as follows: . . . UNIX . . . you
have mail." Richard Gauthier, Using the UNIX System
108 (1981).
• "Accessing your mail: Immediately upon logging in,
should you have mail, you will see a message indicating:
You Have Mail." Peter M. Birns et al., UNIX for People
242 (1985).
• "When you login your system, you are told whether you
have electronic mail waiting for you. If there is mail
waiting, you’ll see a line like the following: You Have
Mail." Kevin Reichard, UNIX: The Basics 160 (2d ed.
1998).
Furthermore, other companies that provide e-mail services have
used "You Have Mail," or derivations thereof, to notify their subscrib-
ers of the arrival of e-mail messages. Prodigy Communications has
used the spoken phrase, "You Have New Mail," since 1993 in connec-
tion with its online service. Prodigy has also used, but no longer uses,
the phrase "You Have Mail" in the e-mail notification feature of its
Internet service. Netcom, an Internet service provider, uses "You
Have Mail" to inform users that they have e-mail. Qualcomm has
used "You Have New Mail" since the late 1980s in its Eudora Pro and
Eudora Light e-mail programs to notify users of new e-mail. Ban-
yan’s "Beyond Mail Program," offered for intra-company systems,
provides the notice "You Have New Mail" whenever a user receives
e-mail transmitted internally or from the Internet. Care-Mail, a web-
based e-mail provider, uses "You Have New Mail" to notify users
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when they have e-mail and "You Have No New Mail" to inform them
that they have no new mail. "Internet Relay Chat," a software pro-
gram used by the Internet Relay Network, has used "You Have New
Mail" to announce the presence of e-mail messages when its users log
in.
It is significant in the context of this usage that AOL has never reg-
istered "You Have Mail," nor has it attempted to enforce it as a mark
prior to this action.
Second, in addition to the long and uninterrupted use by others of
"You Have Mail," AOL’s own use of "You Have Mail" has been
inconsistent with its claim that the phrase is a trademark. Rather than
describing a service that AOL offers — and indicating that it is
describing such a service — AOL simply uses "You Have Mail"
when the subscriber in fact has mail in the electronic mailbox. Once
the user opens the new message, the phrase "You Have Mail" disap-
pears from the user’s screen. Moreover, if the subscriber does not
have mail when he logs on, the screen does not display "You Have
Mail." AOL’s use of the phrase, conditioned on whether mail is pres-
ent, does not describe AOL’s e-mail service, but rather simply
informs subscribers, employing common words to express their com-
monly used meaning, of the ordinary fact that they have new elec-
tronic mail in their mailboxes.
This functional manner in which AOL uses "You Have Mail" is
consistent with a public perception of the phrase as describing
whether or not mail is in an electronic mailbox, rather than as describ-
ing a service associated with AOL. For example, America Online for
DummiesTM states, "You have two ways to see your new mail. One is
pretty obvious . . . . The obvious one is the big picture button of a
hand holding up some letters, emblazoned with a subtle notation You
Have Mail. (I have seen obvious before and it looked a lot like this.)"
John Kaufeld, America Online for DummiesTM 99 (1995). Similarly,
in Sam’s Teach Yourself, America Online® 4.0 in 24 Hours, the
reader is told, "You’ll know when you sign on if you have mail." Bob
Temple, Sam’s Teach Yourself America Online® in 24 Hours, 24 Fig.
2.10 (1999). The text explains, "America Online announces when
you’ve got mail by saying ‘You’ve Got Mail!’" Id.
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Indeed, AOL itself has made no claim that "You Have Mail" has
been used to indicate anything but the information that the subscriber
has mail. Even in its complaint, it asserts little more, alleging that it
has used "You Have Mail . . . in connection with its automatic e-mail
notification services for AOL Service members." The scope of this
asserted use — to give notice of mail to subscribers — is no broader
than the words’ common meaning.
We agree with the district court that when words are used in a con-
text that suggests only their common meaning, they are generic and
may not be appropriated as exclusive property. Cf. generally 2
McCarthy on Trademark & Unfair Competition § 11:11 (4th ed.
1997) (hereinafter McCarthy) (noting that "common" words may be
used as trademarks when used in an arbitrary, rather than familiar
context). But a debate over whether a word or phrase is being used
in a context that communicates merely its common meaning can
quickly become as metaphysical as the study of language itself. At the
basic level, we can conclude that when a fruit merchant sells fruit as
"apples" or "blackberries," he should never be able to exclude com-
petitors from similarly using the words "apple" or "blackberries" to
sell their fruit. But if the common word "apple" or "blackberry" is
used by a computer merchant in selling computers, we conclude that
the usage, not the word, is so uncommon and therefore "distinctive,"
that the computer merchant should be entitled to exclude other com-
petitors from using "apple" or "blackberry" in the sale of its comput-
ers. While this example readily demonstrates the principle, its
application can become difficult when words or phrases are used in
a context close to their common meaning. And because our dynamic
economy, characterized by extensive creativity and inventiveness,
produces new products and services for which no words of descrip-
tion have previously existed, entrepreneurs and the public are engaged
in a continual tug of war over naming these new products and services
— entrepreneurs wishing to gain some exclusive rights to the names
of their inventions and the public wishing merely to have a conve-
nient term by which to refer to the new product or service to facilitate
communication. The words "Internet," "pixel," "chip," "software,"
"byte," or "e-mail" might well have become marks distinguishing one
entrepreneur’s product or service from all other electronic networks,
screen density aspects, transistorized components, sets of computer
commands, groups of digital information, or electronic communica-
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tions. Yet, because of pervasive use, these terms have become
generic. And even when created words for new products have become
strong marks, the public’s pervasive use of these marks sometimes
creates a real risk that their distinctiveness will disappear, a process
Professor McCarthy terms "genericide," as occurred with earlier
trademarks such as "Thermos," "Aspirin," "Cellophane," and "Escala-
tor."
The task of distinguishing words or phrases functioning as trade-
marks from words or phrases in the "linguistic commons" begins with
the development of an understanding of the common meaning of
words and their common usage and then proceeds to a determination
of whether the would-be trademark falls within this heartland of
meaning and usage. The farther a would-be mark falls from the heart-
land of common meaning and usage, the more "distinctive" the
would-be mark can become. At one level, this determination of word
meaning and usage can be a question of law, but at another, it
becomes a factual question as to what the relevant public perceives.
The dichotomy between the legal question and the factual question is
similar to that which exists in construing contracts — when meaning
and usage are unambiguous, the court construes the contract, but
when they are ambiguous, the factual question must be resolved by
the factfinder.
When a word or phrase does not fall within the heartland of com-
mon meaning and usage, but is nevertheless close, its distinctiveness
is strengthened by the entrepreneur’s use. Thus, words or phrases that
are not directly descriptive of a company, product, or service, but
rather suggest, through operation of the consumer’s imagination, the
company, product or service, can become trademarks. See Pizzeria
Uno, 747 F.2d at 1527-28. Similarly, well-recognized slogans used
without any direct context can, through use, become marks because
with such a generalized application, they are not used in the context
of their common meaning, but rather suggestively. Witness "Just do
it!", see Nike, Inc. v. "Just Did It" Enters., 6 F.3d 1225, 1227 n.2 (7th
Cir. 1993) (assuming, without deciding that Nike has a trademark in
this phrase), and "We try harder," see In re Marriot Corp., 517 F.2d
1364, 1367 (C.C.P.A. 1975) (noting registration of this slogan).
At bottom, the law of trademarks intends to protect the goodwill
represented by marks and the valid property interests of entrepreneurs
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in that goodwill against those who would appropriate it for their own
use. But it likewise protects for public use those commonly used
words and phrases that the public has adopted, denying to any one
competitor a right to corner those words and phrases by expropriating
them from the public "linguistic commons." Enforcing these conflict-
ing policies creates line-drawing problems that are not always easily
solved. See generally 2 McCarthy, § 1:27 (discussing the balance
between the right to protect and the right to use).
In the case before us, the record context of "You Have Mail" per-
mits us to conclude as a matter of law that AOL’s usage of the would-
be mark falls within the heartland of common meaning and usage and
therefore that AOL may not exclude others from using the same
words in connection with their e-mail service. This is indicated by
two significant facts that remain undisputed. First, AOL uses "You
Have Mail" functionally — consistently with that phrase’s common
meaning — to tell its subscribers they have mail. Second, others in
the relevant industry have used and continue to use "you have mail,"
or a similar phrase, to announce the presence of an e-mail message
in an electronic mailbox. AOL has advanced no evidence that it uses
"You Have Mail" in any distinctive manner. We therefore agree with
the district court that AOL may not enforce "You Have Mail" as a
trademark in connection with its e-mail notification service.
AOL argues that its survey evidence indicates an association in the
public’s eye between "You Have Mail" and AOL and that this associ-
ation is sufficient to permit a reasonable factfinder to conclude that
"You Have Mail" is a trademark descriptive of its e-mail service that
has acquired secondary meaning. AOL contends, therefore, that only
a jury can decide whether "You Have Mail" is a trademark. Its evi-
dence for secondary meaning consisted of a random survey of 507
Internet users whose households were "very likely paying to be
receiving an Internet access service or an online service during the
three months following the survey." The 507 respondents were
divided into four groups: Group A, 250 respondents; Group B, 85;
Group C, 86; and, Group D, 86. The respondents in Group A were
first asked whether they had heard or seen the expression "You Have
Mail." Those who answered affirmatively were then asked whether
they associated that expression with one specific Internet or online
service provider, or more than one provider. Those who associated the
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expression with one specific provider were then asked to identify the
particular provider with whom they associated the phrase. Respon-
dents in Groups B, C, and D were asked similar questions about dif-
ferent phrases. Instead of being queried for their reaction to "You
Have Mail," respondents in Group B were asked about "New Mail
Has Arrived"; respondents in Group C were asked about "Mail Is
Here"; and, respondents in Group D were asked about "Mail Call."
The results obtained from the answers given by the respondents in
Groups B, C, and D were termed the "Control Condition," which,
according to the design of the survey, was to provide "an important
baseline against which to judge the strength of people’s associations
with the expression ‘You Have Mail.’"
Out of the group that heard "You Have Mail," 41% of the respon-
dents associated the phrase with a single Internet or online service
provider, and 37% of the respondents associated the phrase with
AOL. In Groups B, C, and D, only 9% of the respondents were able
to associate the phrase they heard with a single Internet or online ser-
vice provider, and only 5% were able to name a specific Internet or
online service provider with which to associate the phrase they heard.
AOL argues that a reasonable jury could conclude from this evidence
that the primary significance to the relevant public of the phrase "You
Have Mail" is to denote its source and therefore that the term is not
generic. See 15 U.S.C. § 1064(3) ("The primary significance of the
registered mark to the relevant public . . . shall be the test for deter-
mining whether the registered mark has become the generic name of
goods or services on or in connection with which it has been used").
At this summary-judgment stage of the proceedings, we must
accept AOL’s assertion that a portion of the public associates "You
Have Mail" with AOL, the most widespread user of the phrase. But
this fact does not reveal that the primary significance of the term
"You Have Mail" to announce the arrival of new e-mail is not the
functional, heartland usage of the phrase. This usage does not distin-
guish AOL’s e-mail service from that of any other service provider
because the phrase "You Have Mail" is used in its commonly under-
stood way — i.e., functionally to convey the common meaning of
words — and not distinctively. AOL’s evidence of association may
establish what is called "de facto secondary meaning," but such sec-
ondary meaning does not entitle AOL to exclude others from a func-
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tional use of the words. See 1 McCarthy, § 7:66. Stated otherwise, the
repeated use of ordinary words functioning within the heartland of
their ordinary meaning, and not distinctively, cannot give AOL a pro-
prietary right over those words, even if an association develops
between the words and AOL. As Professor McCarthy explains, "Even
if a functional feature has achieved consumer recognition (secondary
meaning) of that feature as an indication of origin, the feature cannot
serve as a legally protectable symbol." 1 McCarthy, § 7:66; see also
A. J. Canfield Co. v. Honickman, 808 F.2d 291, 305 (3d Cir. 1986)
(noting, "[t]o the extent that a trademark also communicates func-
tional characteristics, it does not function as a trademark").
We therefore conclude that "You Have Mail" has been and contin-
ues to be used by AOL and by others to alert online subscribers that
there is electronic e-mail in their electronic mailboxes, and no more.
This functional use of words within the heartland of their ordinary
meaning cannot give rise to a trademark for the e-mail service when
it is no more than the announcement of the arrival of a message.
Because AOL has failed to establish its exclusive right to "You Have
Mail," we affirm the district court’s conclusion that AOL may not
exclude others from use of those words in connection with its e-mail
service.
IV. "IM"
Finally, AOL contends that the district court erred in refusing,
based on a finding of genericness, to enforce "IM" as its trademark
for its instant messaging service. The district court, reciting undis-
puted facts, concluded that "IM" is "an initialism" for "instant mes-
sage," and that, despite their management’s admonitions against using
"IM" as a noun or a verb, AOL employees used "IM" as a noun or
a verb in lieu of "instant message," such as in "They had an IM pend-
ing" or "Stop IM’ing me." The court also pointed to books, dictionar-
ies, and glossaries defining "instant message" with the "IM"
designation such as: "instant message, IM for short," or "instant mes-
sage (IM)." It noted that Yahoo!, in promoting its pager service,
claimed that it was providing "IMs." Based on these and similar facts,
as well as the fact that AOL does not claim any proprietary interest
in the phrase "instant messaging," the district court held that "IM
stands for ‘instant message’ (as AOL admits), and because the pri-
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mary significance of ‘instant message’ is to stand for an ‘instant mes-
sage,’ the term . . . is generic."
AOL bases its claim to "IM" on its assertions that "IM" has fre-
quently been associated by the media with AOL and that no other
online or Internet service provider calls its real-time communications
feature "IM." It argues that because it was one of the first companies
to provide "IM," a jury could conclude that "IM" denotes the source,
not the feature. But AOL has offered no evidence to support that con-
tention. It can only contend in a conclusory manner that "IM" is a
trademark rather than simply the product at issue. Accordingly, while
we do not determine that "IM" is generic, we nevertheless agree with
the district court’s decision, based on this record, to deny AOL
enforcement of "IM" as its trademark.
V.
In sum, we conclude that the validity of "Buddy List" cannot be
resolved on summary judgment in view of genuine issues of material
fact. Accordingly, we vacate the district court’s order finding "Buddy
List" generic, as well as its order directing cancellation of the certifi-
cate of registration for that mark, and remand for further proceedings.
With respect to the district court’s rulings denying enforcement of
"You Have Mail" and "IM" as the trademarks of AOL, we affirm.
AFFIRMED IN PART, VACATED IN PART,
AND REMANDED
LUTTIG, Circuit Judge, concurring in part and dissenting in part:
I agree with the majority, and for the reasons it identifies, that a
trial is necessary to determine whether BUDDY LIST® is a protect-
able trademark under the Lanham Act. I also agree, but solely because
of the complete absence of evidence of secondary meaning proffered
by AOL, that AOL has not demonstrated its entitlement to trademark
protection for "IM", the company’s designation for its real-time mes-
saging service.
However, I would not decide the question of whether AOL is enti-
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tled to protection for its unregistered e-mail notification feature that
includes the phrase "YOU HAVE MAIL" because it is my under-
standing that AOL no longer informs its customers that they have e-
mail through use of the phrase "YOU HAVE MAIL." Rather, it now
informs them that they have e-mail with the different message
"YOU’VE GOT MAIL." And, as the district court explicitly found,
it is undisputed that AT&T never has used, and "has claimed no
future plans to use," this phrase to inform its customers of the arrival
of e-mail.*
Without intending in any way to intimate a view on AOL’s entitle-
ment to protection for the e-mail notification feature that includes the
phrase "YOU’VE GOT MAIL" (or perhaps by negative implication,
my view on its entitlement to protection for the phrase "YOU HAVE
MAIL"), I believe — as my questions at argument ought to have sug-
gested — that the feature that includes the phrase "YOU’VE GOT
MAIL" is sufficiently different from the phrase "YOU HAVE MAIL"
in both its grammatical dysfunctionality and likely secondary mean-
ing, and possibly in its genericness as well, as to render a decision on
*Were I to decide this question, I likely would be unable to join in the
majority’s analysis, even were I able to join in its result, for the majority
suggests that words used for their ordinary meaning can never be used
"distinctively." See, e.g., slip op. at 16. It is of course true that "common
words" — or even uncommon words — used in a generic sense will not
be afforded trademark protection; the public has the right to use the com-
mon descriptive name for a product. Perini Corp. v. Perini Construction,
Inc., 915 F.2d 121, 124 (4th Cir. 1990). See also Ale House Manage-
ment, Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 141 (4th Cir. 2000);
Glover v. Ampak, Inc., 74 F.3d 57, 60 (4th Cir. 1996). But it is no less
true that "common words" afforded their "ordinary meaning," may, from
time to time, be deemed distinctive either as a descriptive mark (with
proof of secondary meaning) or as a suggestive mark. Thus, contrary to
the majority opinion, the mere fact that a term or mark describes or sug-
gests a function does not, ipso facto, preclude trademark protection. See
also Qualitex Co. v. Jacobson Co., Inc., 514 U.S. 159, 163 (1995) (color
can become distinctive "much in the way that descriptive words on a
product (say, ‘Trim’ on nail clippers or ‘Car-Freshener’ on deodorizer)
can come to indicate a product’s origin."). Whether "ordinary words"
"also communicate[ ] functional characteristics" may be a starting point,
but it is not the ending point, as the majority presumes.
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its protection a separate matter altogether from a decision as to pro-
tection for the feature that includes the phrase "YOU HAVE MAIL."
Whether AOL is entitled to trademark protection for its current e-mail
notification feature because of its arguable distinctiveness and product
or service association is a question the resolution of which is unneces-
sary as between the parties before us.
I should add that, in declining to address the question of AOL’s
proprietary entitlement to the "YOU HAVE MAIL" message, I am
fully aware of the law of trademark abandonment and the fact that
AOL yet may assert an exclusive right to use of that message. Under
the circumstances — including that the parties have not informed the
court of AOL’s messaging change — and for the narrow purposes of
this litigation only, however, I would deem the standard for abandon-
ment satisfied.
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