Sprint Sues Two Florida Companies over Nextel Trademark
Tuesday, June 26, 2018 | Comments
A legal battle over Nextel trademarks is underway. Sprint filed a lawsuit against Florida-based Nextel World (NW) and Retrobrands alleging trademark infringement, among other claims, after Retrobrands filed an application seeking to cancel Sprint’s remaining Nextel trademarks.

Court documents reveal two starkly different perspectives on the case. Sprint sees NW’s and Retrobrands’ efforts as an attempt to steal and profit from a well-known consumer brand using counterfeit Nextel branding, while the two companies view their efforts as the revival of a well-known brand that has been discarded and abandoned by its former owner.

Nextel was originally founded as FleetCall in 1987 and later changed its name to Nextel in 1993. In 2005, Sprint and Nextel merged. Sprint shut down the Nextel iDEN network in 2013.

The two Nextel trademarks in dispute in the case cover “telecommunications services” and “equipment used in providing telecommunications services.” On its website, NW offers devices such as smartphones and two-way radios and service plans under the Nextel brand.

The current legal dispute began in 2016 when Steve Calabrese, owner of NW, filed a trademark application for the Nextel name and a logo with black lettering on a yellow background with a black bar on the right side of the logo — nearly identical to the original Nextel logo.

NW then began marketing and selling products under the Nextel brand and exhibited at the 2017 International Wireless Communications Expo (IWCE) in Las Vegas. At the same time, NW began developing a network of dealers to sell its Nextel-branded products.

At IWCE 2017, Sprint heard from attendees who were confused that the Nextel booth was so far away from the Sprint booth. Sprint then reached out to NW and told it to stop using the Nextel brand.

In July 2017, Calabrese received an initial response from the U.S. Patent and Trademark Office (USPTO) saying that his application was refused because of its similarities to the two existing Nextel trademarks. Calabrese responded to that letter arguing that Sprint had abandoned the two Nextel trademarks because in 2012 Sprint announced it was shutting down the network and moving away from the Nextel brand.

Additionally, because it had been nearly five years since the trademarks had been used, they were likely abandoned under Florida law, Calabrese said in his response. In its own response, the USPTO moved forward with refusing the application, saying that at that point, the existence of trademark was enough to prove the validity of the trademark registration.

However, evidence and arguments over the abandonment of a trademark could be relevant to a proceeding to cancel a registered trademark before the USPTO Trademark Trial and Appeal Board (TTAB), the USPTO denial letter said.

In October 2017, Sprint provided evidence of its trademark to NW, and NW ceased using the Nextel brand. As late as this February, Sprint received notification from NW’s attorney that it was no longer using the Nextel brand, according to Sprint court documents.

However, between October and February, Calabrese contacted Jeff Kaplan, owner of Retrobrands, after doing research on reviving brands. Since 2012, Retrobrands has revived more than 10 brands, such as Tender Vittles pet food and Chipwich ice cream sandwiches, which were abandoned by their previous owners, Kaplan said.

To harness Retrobrands’ experience, the companies decided that Retrobrands would apply for the Nextel trademark and then lease it to NW, Kaplan said. Retrobrands filed an application for the Nextel trademark Jan. 29 and a day later filed an application with the TTAB seeking to cancel Sprint’s remaining Nextel trademarks.

Sprint responded in April with its lawsuit, alleging trademark infringement, counterfeiting and cybersquatting among other claims. Retrobrands’ application for the Nextel trademark is suspended pending the outcome of the cancellation proceeding, which is suspended pending the outcome of the lawsuit.

As part of its lawsuit, Sprint filed a motion seeking a preliminary injunction against NW and Retrobrands to prevent the two companies from using the Nextel brand and logo on their products or promoting those products under the Nextel brand and logo.

Retrobrands and NW filed an opposition to the motion for the injunction arguing that they are legally using the Nextel trademark because they determined it had been abandoned. The two asked that if the judge implements the injunction that Sprint be required to post a $1 million bond. In the event that Retrobrands and NW win the case, that money would then go to those companies to help ameliorate damage done by the injunction.

“If an injunction happens, we’re out of business,” Kaplan said.

In its court filings, Sprint argued that a $1 million bond was not necessary and that an injunction would not hurt the two companies because they could sell the products under a different brand.

In a phone interview, Kaplan characterized Sprint’s lawsuit as an attempt to “bleed him dry” and prevent him from moving forward with the trademark cancellation and application.

“They’re going to be sorry that they started this because I have the funds to fight them,” he said.

Kaplan said he is confident that the TTAB will rule in favor of Retrobrands and NW in the cancellation hearing.

“When it’s abandoned, it’s abandoned,” he said. “There’s no case.”

Sprint did not respond to a request for comment on the case.

Retrobrands and NW filed a counterclaim to Sprint’s lawsuit, arguing that Sprint is harming their businesses by referring to them as counterfeiters and thieves and asking the court to declare that Sprint abandoned the Nextel trademark and that the two companies did not infringe the trademark.

In its lawsuit, Sprint argued that Retrobrands and NW have co-opted the goodwill of Nextel brand to sell what it calls counterfeit products that are of lesser quality than the original Nextel products.

By using the Nextel trademark, which is irrevocably tied to Sprint in the public consciousness, the two companies are harming Sprint because of the confusion it causes to consumers, Sprint said in its original filing. For example, negative impressions of NW and Retrobrands’ Nextel-branded products could come back and harm Sprint’s reputation because of Sprint’s well-known connections to Nextel, the filing said.

“… Consumers immediately associate the famous Nextel mark with Sprint and therefore will immediately ascribe to Sprint any faults, defects or other issues and disappointments with defendants’ counterfeit Nextel-branded products, which as noted above, are low-quality knock-offs that do not meet the quality standards Sprint requires for rugged products and in fact, do not even operate using a genuine instantaneous, two-way radio technology,” Sprint’s filling said.

Additionally, Sprint said that NW’s and Retrobrand’s use could pose a public-safety threat because Nextel is a well-known brand among critical responders and lives could be in danger if those organizations buy a subpar product thinking it is an actual Nextel product.

Sprint also argued that it is still using the Nextel brand in connection to a few Sonim Technologies smartphones that it sells. A photo included in Sprint’s filing shows one of the Sonim products that Sprint says is sold under the Nextel brand. On the back of the box is the phrase “Nextel Inspired.” Sprint argued that this shows it is still using the brand, while Retrobrands and NW argue that “inspired” does not prove the use of a brand as many off brands use that term to show consumers that their product is similar to a name brand.

In their TTAB cancellation application and filings in the lawsuit, Retrobrands and NW argued that Sprint has abandoned the Nextel trademark. The two companies cited evidence including 2012 and 2013 news articles about the Nextel network’s shutdown and Sprint executives saying they had no intention to bring back Nextel, the lack of earnings or subscribers attributed to Nextel in Sprint’s financial reports for the past five years, and the omission of Nextel on a list of owned trademarks included in Sprint reports for the past two years.

Under U.S. trademark law, a trademark becomes abandoned if it is not “used in commerce” for a consecutive period of time, generally three years.

NW and Retrobrands also took issue with Sprint’s contention that their products are subpar, pointing to Calabrese’s 30 years of experience in the communications sector and the fact that he owns several patents related to push to talk (PTT).

The judge has not made a decision on the preliminary injunction yet, and there is not a specific timeline for that decision. Discovery in the lawsuit will begin following that decision, and a jury trial is anticipated in mid-2019.

If the legal battle concludes in their favor, NW and Retrobrands hope to take advantage of a growing PTT market that they see as missing a major brand name, Kaplan said. The two companies view Nextel, which was the first company to make PTT commercially available nationwide, as that major name brand.

If the cases are decided in their favor, Retrobrands and NW plan to seek partnerships with large companies such as AT&T, Verizon and Motorola Solutions that can help widely market its products and services.

Kaplan said that the companies have had discussions with other companies about the Nextel brand, but those companies do not want to move forward yet because of the ongoing legal battle. NW has also lost a number of its original distributors following legal threats from Sprint, Kaplan said.

“It’s a tremendous brand,” Kaplan said. “There’s so much that can be done with it. We just have to get through these legal obstacles with Sprint.”

Would you like to comment on this story? Find our comments system below.


 
 
Post a comment
Name: *
Email: *
Title: *
Comment: *
 

Comments
On 7/3/18, Joe said:
Remember the fiasco when Nextel tried to trademark push to talk and PTT?

On 6/27/18, Jim said:
Based on statements made by Sprint executives in 2012 and 2013 and the omission of Nextel on a list of owned trademarks included in Sprint reports for the past two years, compounding multiple years of non-use, it's probably over for them ... done. Calabrese has a great product. I tried Nextel World (NW) at IWCE, and using the worldwide GSM network, it has more reliable coverage than Sprint Nextel ever had.

Site Navigation

Close