Still want Nextel ‘push to talk’? Brand attempts a comeback — but not at Sprint

Do you remember these old brands?

How far back does your brand awareness stretch? An industry is counting on it to reclaim “abandoned” trademarks like these.
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How far back does your brand awareness stretch? An industry is counting on it to reclaim “abandoned” trademarks like these.

Nextel — the other name behind the 2005 merger that bedeviled Sprint — is making a comeback alongside Tender Vittles, Tidy Wipes, Hai Karate and Drixoral.

Retrobrands USA, a Florida-based company, claims Sprint abandoned the Nextel brand in 2013. So it’s fair game, and Retrobrands has grabbed it.

Just as it has claimed other brand names abandoned by previous owners, Retrobrands’ owner Jeff Kaplan says.

“Sprint, I’m sure, is going to fight me on this,” Kaplan said. “I hope they don’t have any interest.”

Turns out, Sprint still cares about Nextel.

“We are aware of the situation and plan to respond,” spokeswoman Lisa Belot said in an email. “While it is no longer one of our primary brands, we maintain ownership, sell handsets under the Nextel brand and currently have no plans to sell it.”

Kaplan, advised of the response, said he’d do more research. He also said Sprint will have to show more than “token use” to reserve the Nextel trademark.

Their battle will play out at the U.S. Trademark Trial and Appeal Board, which is part of the U.S. Patent and Trademark Office. It’s where Kaplan staked his claim to Nextel on Jan. 29 and included an example of how he’s using the brand already.

Kaplan didn’t wait for a ruling.

He licensed the Nextel brand to another Florida business that has begun offering familiar push-to-talk features on rugged wireless devices aimed at construction crews and others who remember the old Nextel’s services.

The new Nextel Inc. website lists 14 dealers, but the product is missing one key feature, according to Kaplan. He said he’s told his licensee to add the Nextel “chirp” to devices.

White Cloud jackpot

Claiming abandoned brands has become an industry, thanks in part to the success of one brand of toilet paper.

“That’s what got me into this,” Kaplan said, referring to White Cloud toilet paper.

Procter & Gamble had abandoned the White Cloud brand in the 1990s to focus on its more successful Charmin toilet paper brand. A company called Paper Partners claimed the White Cloud brand and licensed it to Walmart, where White Cloud has become a market leader.

Jackpots like that might be rare, but many brands have been claimed and taken to market by other than their original owners.

Iconic Candy in Great Neck, N.Y., sells Reed’s and Regal Crown candies and has filed Trademark Board proceedings involving Power House, Turkish Taffy, Butternut and other brands.

A Chicago man claimed the Cingular cellular brand in 2104 on the grounds that AT&T had abandoned it after a 2007 purchase of BellSouth Corp. Mark Thomann, through Dormitus Brands, already sells prepaid calling cards under the Cingular name, though AT&T hasn’t given up the fight.

“We are still litigating that today,” said Joseph Gioconda, a trademark attorney representing Thomann and his company.

AT&T declined to comment through a company spokesman.

Gioconda said his client also has claimed the Slice brand, formerly a soda containing juice and sold by PepsiCo. The new Slice will be a flavored seltzer water, Gioconda said, and won’t hit store shelves until late this year.

In the Nextel case, Kaplan spotted the trademark’s pending expiration.

He recently filed his claim to own the Nextel brand and petitioned to have Sprint’s Nextel claim canceled. A docket on the cancellation proceeding is publicly available through the Trademark Board. According to a schedule in the proceeding, Sprint has 40 days to answer. A trial schedule shows a dispute could last into August 2019.

Use it or lose it

Kaplan said regulation of trademarks operates on a use-it-or-lose-it standard.

Maintaining a brand requires periodic filings and evidence that the brand is still in use or declarations that the owner intends to resume use, Kaplan said. Lacking that, the trademark essentially expires. Kaplan said the law doesn’t allow a trademark owner to simply park it to prevent others from using it.

Trademark Board filings show Kaplan’s Retrobrands has taken action involving Chiclets, Pearl Drops, Freshen-Up, Bromo Seltzer and other brands.

His company’s website includes a brand portfolio, some of which have been licensed or sold to others for products. The list includes Victrola, Tegrin, Chipwich, Dash, Mr. Microphone, Sani-Flush, Hi-Q and Aspergum.

Kaplan sees potential for the Nextel brand in part because of the loyalty of its users after the merger with Sprint in 2005.

Sprint had hoped to migrate the Nextel customers onto the Sprint network but struggled to offer an acceptable push-to-talk technology. It meant Sprint Nextel Corp., as it was known until mid-2013, had to maintain two wireless networks, and the added costs became a burden when competing against rivals AT&T, Verizon and T-Mobile.

The merger became known as one of the worst of its time, though some argue that Sprint’s problems grew from a series of mistakes.

Shareholder lawsuits tied to the merger badgered Sprint as recently as 2016 when the company settled the last of that litigation.

At least one brand owner has pursued Kaplan beyond the trademark proceedings by suing in U.S. District Court. Unilever sued over Kaplan’s claims on Sunsilk, a haircare brand, and the case was settled. Unilever still lists Sunsilk among its brands.

Perhaps anticipating a battle, the new Nextel website includes information to find a FierceWireless report in 2014 in which Sprint said it was not bringing back the Nextel brand.

The site’s home page also says the company disclaims any affiliation with “Sprint Corporation or its defunct wholly owned subsidiary Nextel Communications.”

Mark Davis: 816-234-4372, @mdkcstar