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 LISTR is a protectable 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 messaging service.
However, I would not decide the question of whether AOL is entitled to protec*824tion for its unregistered e-mail notification feature that includes the phrase “YOU HAVE MAIL” because it is my understanding 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 entitlement 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 suggested — 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 meaning, and possibly in its ge-nericness as well, as to render a decision on its protection a separate matter altogether from a decision as to protection for the feature that includes the phrase ‘YOU HAVE MAIL.” Whether AOL is entitled to trademark protection for its current email notification feature because of its arguable distinctiveness and product or service association is a question the resolution of which is unnecessary 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 abandonment satisfied.
Were I lo 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 riever be used "distinctively.” See, e.g., op. at 823. 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 common descriptive name for a product. Perini Corp. v. Perini Construction, Inc., 915 F.2d 121, 124 (4th Cir.1990). See also Ale House Management, 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 suggests a function does not, ipso facto, preclude trademark protection. See also Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 163, 115 S.Ct. 1300, 131 L.Ed.2d 248 (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.