New York Business Litigation Lawyer Blog
Late in 2015, Apple’s trademark application for “IPOD,” as used in connection with the pamphlet or instruction manual that accompanies an iPod, was found by an appeals panel to not be “used in commerce” in connection with any good, and denied registration by the United States Patent and Trademark Office (“USPTO”). The brief discussion of how this decision was reached is instructional as to what an applicant must establish to satisfy the “use in commerce” element that is part of a trademark application process.
Apple had filed for a trademark for the IPOD mark as used on its iPod instruction manual inserts. The USPTO denied Apple’s application, finding that the manual was merely instructional and not used in commerce as a “goods in trade.” Apple appealed.
The Trademark Trial and Appeal Board (“TTAB”) discussed generally the qualifications necessary for the issuance of a trademark registration. As part of that, the applicant must show either a use or intend to use of a good in commerce. Because a trademark is put in place by an owner of a good “‘to identify and distinguish” that good and to indicate its source, those goods must be “used” in commerce. This ties that good to the producer in the marketplace and allows that producer to alone be associated with a specific good. To do that, it must be deemed a “good in trade” or commerce. Apple’s IPOD pamphlets were not stand-alone goods in trade, but simply sold “incidental” to the iPod itself. As such, the IPOD mark as used on the pamphlet did not qualify for registration. The same refusal would be issued if an application sought protection for letterhead, for example.
Apple argued that because the pamphlets are exchanged or transported in commerce bearing the IPOD mark and that consumers understand the iPod brand, it should be eligible for registration. This, however, did not overcome the fact that the pamphlets were never sold individually but always with the iPod, as a means to use it, rendering them incidental to the iPod itself. Also relevant was the fact that Apple is not in the business of selling pamphlets.
The TTAB thus affirmed the refusal to issue a registration for the IPOD mark when used on the pamphlets.