CAT | counterfeit
7 Comments · Posted by Bob Brill in acquired distinctiveness Section 2(f), assertion of use Section 1(a), business sense, copyrights, counterfeit, design patent, design trademark, family of trademarks, trade secrets, utility patent, word trademark
Trademarks are source identifiers, as in branding. Utility Patents and Trade Secrets protect ideas. Design Patents cover ornamental designs for functional items. Copyrights protect expressions of ideas. A same object can be protected by one or more of these intellectual property “buckets.”
So long as use continues and the remaining requirements are met, trademarks have no expiration date, unlike patents and copyrights. Wouldn’t it be great to take an aesthetically-pleasing design implementation among a variety of available structures, and run it under trademark protection?
Among the staples of working knowledge is Apple has products marketed under a family of iPod® trademarks. The innards of a sample one of these trademarks are that it is a Word Mark “IPOD” on the goods: “Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, and audio files; computer software for use in organizing, transmitting, manipulating, and reviewing text, data, and audio files on portable and handheld digital electronic devices.” The current basis of the mark is an assertion of use under Section 1(a) (15 U.S.C. §1051(a)). Sure, the meteoric sales are great, though the mechanics of registering the mark were unsurprising, leading to successful Trademark Registration Number 3089360 on May 9, 2006.
Black Raspberry Chip
How about that shape? Wanna knockoff, bought from the product display counter of a peddler’s inner coat lining? Hey, Apple contributed tasteful selection to the design. Patents are also part of the protection strategy, though the additional snap deterrence against aesthetic theft would be beneficial. Check out this trademark:
Apple originally filed the trademark application on July 10, 2006 as an assertion of use under Section 1(a) (15 U.S.C. §1051(a)) and then switched the basis to acquired distinctiveness under Section 2(f) (15 U.S.C. §1052(f)) upon review of remarks from the Trademark Examining Attorney.
Apple’s original application described the trademark as follows: “The mark consists of the design of a portable and handheld digital electronic media device. The matter shown in broken lines, indicating the location of device connectors, is not part of the mark.” In addition, Apple’s original application described the goods as follows: “Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files.”
Digesting the Trademark Examining Attorney’s feedback, Apple amended the description of the mark to further detail the device as “comprised of a rectangular casing displaying circular and rectangular shapes therein arranged in an aesthetically pleasing manner.” Keeping its silo intact for pursuit of trademark protection, Apple strove to distance its intended design mark from the notion of functionality, in contrast to patenting:
Although Applicant disagrees with the Examining Attorney’s conclusion that Applicant’s rectangular video screen design is functional, Applicant nevertheless enters the following disclaimer:
“No claim is made to the exclusive right to use ‘a rectangular shape for a video screen’ apart from the mark as shown.”
Since the Trademark Examining Attorney had found no conflicting marks, Apple seized the opportunity to advance its cause by loading in evidence of acquired distinctiveness of the design mark. For example, the submitted Declarations of customers included statements such as:
For me, Apple’s distinctive clean and modern design distinguishes Apple’s goods from its competitors.
I am not aware of any competitors of Apple in the digital device market that use similarly arranged design elements in uncluttered arrangements similar to those of Apple’s iPod products.
In short order upon review of Apple’s responsive filing, the Trademark Examining Attorney approved Apple’s design mark for Publication on the Principal Register, following the usual Publication for Opposition, leading to successful Trademark Registration Number 3365816 on January 8, 2008.
Text Copyright © 2008 Bob Brill