Apple Denied! TTAB Upholds Refusal to Register MULTI-TOUCH

Posted by | September 28, 2011 | General | No Comments



Apple is known for innovation.  Above on the left is Apple’s revolutionary touch-screen device.  Above on the right is a portion of the patent for this device.  Apple’s introduced the iPhone on January 9, 2007 (has it only been five years?).  On the very same day, it filed a federal trademark registration application for MULTI-TOUCH.  Since I know you’re dying to know, the IPHONE trademark registration application was filed on September 26, 2006, although not by Apple.  It was filed by a company named Ocean Telecom Services, which applied based on its foreign registration of the IPHONE mark in Trinidad and Tobago.  Ocean Telecom merged with Apple on October 5, 2007, and Apple took over ten pending IPHONE trademark registration applications from Ocean Telecom.

But enough about IPHONE, what about MULTI-TOUCH?  Well, Apple’s journey through the USPTO ihopes of registering MULTI-TOUCH ended on September 23, 2011 when the USPTO’s Trademark Trial and Appeal Board affirmed the refusal to register MULTI-TOUCH.

The Board began its analysis by stating that its primary reviewing court, the Federal Circuit, has stated that “the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.”  The Board then devoted 6 pages of its opinion to the evidence of descriptiveness proffered by the USPTO Examining Attorney.  Even more devastating for Apple, the Board found that, “The record does not reveal that MULTI-TOUCH has been used on the goods or even on packaging for the goods.”  Thus, the Board greatly discounted Apple’s evidence of its extensive sales success of the iPhone since such evidence tended to prove brand recognition of the IPHONE mark, but not of MULTI-TOUCH.  The Board also found (and took none too kindly to the fact that),” . . . applicant makes several statements in its brief which are not supported by evidence.”

Ultimately, applicant did not submit other types of evidence which the Board typically considers in determining acquired distinctiveness.  As the Board stated:

[framed_box] Specifically, there are no affidavits, declarations, depositions, or other appropriate evidence showing the extent and nature of the applicant’s use of MULTI-TOUCH, advertising expenditures in connection with the use of MULTI-TOUCH, letters, or statements from the trade and/or public in the record.  We know nothing about the quantity, frequency and scope of any advertising of MULTI-TOUCH. [/framed_box]

The Board concluded that, “simply because the applied-for term has been used in association with a highly successful product does not mean the term has acquired distinctiveness.”

C’mon Apple.  How many times have you done this before?  How could you fail to submit proper evidence?  Unless that is, such evidence doesn’t exist . . .

Descriptive terms can become trademarks upon a showing of “acquired distinctiveness” or “secondary meaning” (think brand recognition).  Sales figures are helpful in proving this, but even more important is evidence of use of the mark, “impressions” made by the mark and a demonstrable correlation between the mark and the sales figures.



About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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