Hi, I’m a Mac… and I’m NYC

If you can tell your ass from your elbow, perhaps you can also tell these logos apart!The New York Daily News reports on a trademark spat between Apple Computer and the City of New York (a.k.a. “The Big Apple” for those of you in Cupertino, California who don’t know that). New York recently launched its GreeNYC campaign (link), and filed an intent-to-use application for the green apple infinity symbol shown above. Apple Computer has taken offense and filed an opposition before the Trademark Trial and Appeal Board (TTAB) to try and prevent NYC from registering its symbol.

Apple’s Claims

Apple claims that the GreeNYC logo will cause confusion in the marketplace, and thus people will buy GreeNYC’s products thinking that they are associated with Apple; any defects in GreeNYC’s products will damage Apple’s reputation; and, that the GreeNYC logo will dilute Apple’s ability to distinguish its goods in the marketplace with an Apple logo. Complaint here.

With respect to the likelihood of consumer confusion claim, I’m not buying it. If you can tell your ass from your elbow, you can tell those logos apart. I would feel differently if GreeNYC were selling computers with that logo on them, but that is not one of GreeNYC’s goods. They intend to provide, for the most part, educational services and public relations materials. They will also provide schwag, such as t-shirts and hats, etc.

The dilution claim is a little more persuasive. It at least passes the “are you kidding me?” test. Apple has a very strong trademark, probably one of the most valuable brands in the world. Dilution law protects famous brands from encroachment by other brands on to their turf. While most trademark law is about protecting consumers from confusion, dilution law recognizes that brand owners have a property interest in their marks, and that property interest should not be diminished. (I have my issues with this, but this is not the post in which to discuss them).

Note that I said “a little more persuasive.” Not much…

I do respect the fact that they think that they have to protect their brand. In most cases, a company’s brand is the most important asset it owns. Apple’s current crop of computers, phones, and music players will be obsolete in 18 months. Their patents will expire. But, the brand can theoretically live forever — and consumers will continue to buy the next generation of Apple products due to Apple’s strong brand-identity efforts.

But this case stretches credibility a bit. Apple does “own” the marketplace when it comes to the familiar and famous silver apple logo pictured above. Apple also has a right to keep other companies from selling music players with a picture of an apple on them – in such a circumstance, consumers might get confused. Nevertheless, Apple does not “own” every single possible symbol that is based on that particular fruit. Look at it this way, the Boston Bruins use a stylized “B” for their logo, as do the Boston Red Sox. Life sure goes on for both teams, doesn’t it?

NYC Bites Back

Did you know that Apple is in the housewares business? Apple’s registration 73566772 is for mugs, drinking glasses, dishes, and wine glasses. Apple claims that it sells such goods in interstate commerce, but I’ve never seen nor heard of an Apple wine glass — and according to NYC’s counterclaim, Apple does not sell such goods. If NYC is correct, then at least one of Apple’s trademark registrations may be in jeopardy due to fraud.

“Fraud…” such an ugly word, isn’t it? But, that term takes on a special meaning at the trademark office. If you claim in a trademark application that you sell “dogs, cats, and hamsters,” but you never actually put any hamsters on the market, then your registration is void due to fraud and subject to cancellation. See Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).

Conclusion

With respect to the counterclaim, that is relatively simple. Either Apple uses its logo on that junk or it doesn’t. If it doesn’t the registration is canceled. Naturally, that doesn’t mean that the opposition to NYC’s registration goes away, it just weakens it a bit and gives Apple’s intellectual property counsel a black eye.

With respect to the opposition itself, Apple shouldn’t prevail. I can’t even imagine George W. Bush, let alone an actual human, being stupid enough to be confused when looking at the two logos. As far as the dilution claim goes, it passes the smell test, but if the TTAB holds that Apple’s turf has expanded so far that it can stop the Big Apple from using a logo representing a stylized apple, then perhaps the judges on duty that day would be confused after all.

9 Responses to Hi, I’m a Mac… and I’m NYC

  1. Steve W says:

    You forgot to mention Apple’s corporate address: 1 Infinite Loop.

  2. Mike says:

    I can make my elbow fart!

  3. That is true that Apple’s corp. address is 1 Infinite Loop. How is that relevant?

    It might be neat-o if Apple claimed TM rights in the address, but I don’t see it applying here.

    Thoughts?

  4. Mike says:

    The Green NYC trademark is an infinite loop. Apple’s address in 1 infinite Loop! Which came first?

  5. I dig… I like the argument!

    Your honor, to compound the confusion, much of the relevant marketplace knows of Apple’s corporate headquarters’ address, One Infinite Loop. In fact, this is so well known that it has acquired secondary meaning in the marketplace. This *coupled with* the use of an apple symbol AND an infinity symbol tends to suggest a far greater likelihood of confusion than if NYC had used a mere apple drawing alone.

    Not a bad argument… too bad Apple’s lawyers didn’t think of it!

  6. Byron says:

    You say you recognize Apple’s need to protect its brand, but you clearly demonstrate a complete ignorance of how such protection is achieved. Believe it or not, it doesn’t matter if Apple wins or loses this case. Filing the complaint by itself proves Apple has not ABANDONED its trademark, thereby making it strong against TRUE infringement in the future. If they didn’t file this complaint, future infringers could successfully argue that not doing so constitutes Apple abadonment of its mark. Your neglect to mention this VERY important fact either proves you don’t know what your talking about or are just more interested in hoping on the bitch about Apple bandwagon than you are about informing the public of the true legal issues behind the case. Either way, bad journalist, no biscuit.

  7. I think that you need to go back to your trademark law professor and demand a refund, Byron. He or she must have been an academic who never practiced (sadly, this describes most intellectual property professors).

    Filing the complaint does not prove that Apple abandoned its trademark. Take a look at 15 USC s 1127: A mark is abandoned if its use has been discontinued with no intent to resume such use. Intent not to resume can be inferred by three years of consecutive non-use.

    Nobody could argue (with any degree of seriousness) that failure to file this opposition is evidence that Apple has abandoned its mark.

    Now gimme that biscuit, biyotch! (j/k) :)

  8. Eliakim says:

    The last laugh will be had by the one who wins and no blog will determine that. That’s — very simply — why they filed the lawsuit… LOL…

  9. Naturally. Just to be precise though, it isn’t technically a lawsuit, but a trademark opposition.

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