IP Law Daily, TRADEMARK—TTAB: Apple refused registration of IPOD mark for user manuals incidental to iPod device, (Dec 7, 2015)

By Cheryl Beise, J.D.

A trademark examining attorney properly rejected Apple Inc.’s application to register the mark IPOD for “printed materials and publications” on the ground that Apple’s specimens of use did not show the applicant’s mark in use in connection with “goods in trade.” The Trademark Trial and Appeal Board agreed that the brochures, pamphlets, and leaflets submitted with the application were “merely incidental” to Apple’s iPod digital media device (In re Apple Inc., November 13, 2015, Heasley, D.).

Apple, Inc. (“applicant”) sought registration on the Principal Register of the mark IPOD (in standard characters) for “Printed materials and publications, namely, brochures, pamphlets, and leaflets, all relating to computer software, computer hardware, and multimedia apparatus and instruments and sold or distributed in connection with handheld mobile digital media devices” in International Class 16. Apple originally filed an intent-to-use application on November 23, 2004 under Sections 1(b) and 44(d) of the Trademark Act. In 2010, Apple amended its application, electing to file under Section 1(a) of the Trademark Act, claiming first use in commerce since at least as early as November 10, 2001. With its Statement of Use filed July 12, 2013, Apple submitted as specimen a photograph of its iPod Quick Start Guide.

The trademark examining attorney rejected Apple’s specimen, contending that its user manual did not show the mark’s use in commerce as it was merely instructional material included with applicant’s electronic goods. Apple disagreed, but amended its description of goods. The examining attorney again refused registration. Apple then submitted the full iPod Quick Start Guide, in order to show that the specimen contained “more than ‘basic’ information.” It also submitted substitute specimens bearing the “Made for iPod” logo, which Apple licenses to third-party electronics sellers for use in their manuals and publications. The examining attorney issued a final refusal to register under Sections 1, 2 and 45 of the Trademark Act, on the ground that Apple’s brochures, pamphlets, and leaflets did not show use of the IPOD mark in connection with “goods in trade.” Apple appealed.

The sole issue on appeal was whether Apple’s printed materials and publications—namely, brochures, pamphlets, and leaflets—constituted “goods in trade” or whether they were “merely incidental” to the iPod handheld mobile digital media device, in connection with which the materials were sold or distributed.

To determine whether an item is merely incidental to a primary product or service, the Board considers whether it: (1) is simply a conduit or necessary tool useful only in connection with the primary goods or services; (2) is so inextricably tied to and associated with the primary goods or services as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the primary goods or services. Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012).

Apple contended that the Lens.com factors were limited to the facts of that case, in which computer software was merely a conduit for services. The Board disagreed. “[T]he ‘goods in trade’ refusal is not limited to articles supporting services; it extends equally well to incidental articles accompanying principal goods,” the Board said. The Board explained that the “goods in trade” refusal addresses a question that is always the same: namely, “what is being offered for sale?” That determination is made on a case-by-case basis.

In this case, the Board found that all three Lens.com factors supported the conclusion that Apple’s brochures, pamphlets, and leaflets were incidental to its primary good in trade: the iPod. The specimens were paper inserts providing nothing more than elementary guidance to new iPod purchasers, but not other consumers. They were shipped in the same box as the iPod device itself. There was no evidence that Apple advertised, sold, or distributed the inserts separately. “Applicant’s paper inserts are useful only in connection with the iPod device; they are so inextricably tied to and associated with the iPod device as to have no viable existence apart therefrom; and they are not sold separately and have no independent value apart from the iPod device,” the Board said.

Apple’s substitute specimens of third-party print materials displaying the “Made for iPod” composite mark suffered from the same deficiencies as the original specimens, according to the Board, “as there was nothing in the record to show that they had independent, intrinsic value as goods in trade.”

The refusal to register was accordingly affirmed.

The case is Serial No. 78521891.

Attorneys: Jason M. Vogel and Philip A. Rosenberg (Kilpatrick Townsend & Stockton LLP) for Apple, Inc. Sui Duong, Trademark Examining Attorney, USPTO.

Companies: Apple, Inc.

Cases: Trademark USPTO