Nextel Worldwide Selected as Comms Supplier for Super Bowl LIV, Sprint Litigation Continues
Tuesday, January 21, 2020 | Comments

Nextel Worldwide was selected as a supplier of communications for Super Bowl LIV Feb. 2 in Miami.

As a supplier for the Super Bowl, Nextel’s push-to-talk over cellular (PoC) radios are being offered to companies providing services to the Super Bowl effort, such as transportation and security. So far, one security company has chosen to use the radios during the National Football League (NFL) game and several other providers are considering their use, said Jose Rivera, a partner in Nextel Worldwide.

At press time, Rivera did not know how many radios Nextel would supply to the Super Bowl effort but estimated that it could be anywhere from 100 to more than 300 devices.

Two things were key in Nextel getting selected as a supplier for the Super Bowl: coverage and Nextel’s dispatch and phone app, Rivera said. Nextel’s dispatch app can be downloaded on most smart devices, such as cellphones, laptops and tablets, and gives organizations a varied view into the state of its Nextel radios, including where each equipped officer is and the status of that individual’s radio, he said.

The Nextel radios work on three major wireless networks in the U.S. — AT&T, T-Mobile USA and Verizon — and provide wider coverage than a traditional radio system while providing features such as push to talk (PTT), which helped the company’s products get selected for Super Bowl service providers.

Rivera and partners Jeff Kaplan and Steve Calabrese began trying to bring back the Nextel mark several years ago. So far, the new company has found the most success in the transportation and security markets, as well as service providers such as air conditioning repair, Rivera said.

Kaplan, Rivera and Calabrese’s attempt to start a new Nextel drew a legal challenge from Sprint, which purchased Nextel in 2005. The litigation revolves around the status of Sprint’s ownership of the Nextel trademark.

Rivera, Kaplan and Calabrese argue that under federal trademark law, Sprint abandoned the Nextel trademark because of lack of use. However, Sprint argues that it never abandoned the Nextel trademark because the carrier still uses it on the packaging of certain Sonim Strike phones that it sells, and that the three partners behind Nextel Worldwide are illegally profiting off of its trademark.

In January 2018, Kaplan, who has experience reviving abandoned trademarks through his Retrobrands company, filed an application with the U.S. Patent and Trademark Office (USPTO) for the Nextel Trademark and another one to cancel Sprint’s Nextel Trademark. In response, Sprint filed a lawsuit alleging trademark infringement, counterfeiting and cybersquatting and other claims in the U.S. District Court for the Southern District of Florida. The partners behind Nextel Worldwide countersued, alleging that Sprint was harming their business by referring to them as counterfeiters and thieves.

Sprint also asked the court to implement an injunction against Nextel Worldwide to prevent it from using the Nextel trademark to sell products during the court proceedings. The court denied that motion.

The partners in Nextel Worldwide also filed a motion for injunction, arguing that because of the lawsuit, Sprint had directed a vendor to change its packaging to add the Nextel trademark to make it look like Sprint had been using the trademark. The injunction asked the court to prevent Sprint from continuing that activity.

Magistrate Judge Lurana Snow, who is handling procedural issues in the case, recommended to District Judge Jose Martinez that he deny Nextel’s motion. She said that the motion fails to meet the requirements for a preliminary injunction because it failed to “demonstrate a cause of action” that arises from their counterclaim. Martinez has not ruled on that motion yet.

The case is currently stayed while Martinez considers motions from both parties, and the application with the USPTO to cancel Sprint’s trademark is stayed pending the outcome of the court proceedings.

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