Apple of your eye

Apple Store trademark application drawingHave you ever been to an Apple Store?  I have, and I found it a painful experience.  But that was only because I was at least 20 years older than the average person in the room.  And because the things they sell there really cost a lot of money and work better than my things, which don’t.

Otherwise, it’s very cool.  And very distinctive.

The PTO agrees, and after no small amount of back-and-forth, it’s been widely reported that it has issued a trademark registration for the Apple Store’s layout.

Most of the coverage I’ve seen on this topic has been wretched — not only because it uses the word “trademarked” or describes Apple as “receiving a trademark,” but because it displays the lack of understanding about what trademarks are under U.S. law that such usage betrays.  (No, not going there again, not today.)  But with respect to the granting of a registration for Apple’s trademark — dare I say trademark claim? — I like this piece (cached version — balky server) by law student Deborah Goldman in the Washington College of Law publication, Intellectual Property Brief, which explains the issues well and is rich with links to primary sources.

Deborah notes that the two initial refusals for registration were not based on a lack of distinctiveness or functionality, which you’d expect, but on fairly technical aspects of the application.  These are usually amenable to being overcome with some good draftsmanship, especially since the Examining Attorney will typically let you know what he’s looking for.*  Naturally, lawyers who understand how to take such guidance are something Apple is able to procure:

The first rejection, issued on September 6, 2010, claimed the mark was not “inherently distinctive.” However, this wasn’t a comment on the store’s layout itself, but rather the failure to submit a proper description of what the mark consists of.  The second rejection, issued on August 23, 2011, was also primarily a commentary not on the mark itself but on the procedural elements still missing for registration. Even the rejection on the grounds of failure to show acquired distinctiveness (or “secondary meaning,” pursuant to § 2(f) of the Lanham Act) was a rejection not on the merits of their claim, but on the sufficiency of evidence provided. . . .

The PTO rejected Apple’s application twice for failure to describe a distinctive, non-functional layout. After two and a half years, the description of the mark on the final registration is highly detailed, and does not include any functional features.

As she also notes, “his registration has drawn some particularly harsh criticisms, including that it merely trademarks [Ouch!  Oh, well – RDC] something fundamentally basic to retail, and not anything that is unique to Apple.”  The fact is, however, that the Forbes article she links to as an example of criticism is pretty flabby business, about as incisive on the issue as something in “Dilbert.”  Deborah notes that, in fact, the recognition of trademark rights in retail store layouts was recognized by the Supreme Court in Two Pesos v. Taco Cabana.  It all comes down to distinctiveness, which, in Two Pesos, was deemed inherent, whereas here Apple has had to “settle” for registration based on acquired distinctiveness.

But Apple’s got it here.  One look at the drawing above — the specimen submitted in the application for registration — tells me it’s a depiction of an Apple Store.  It has secondary meaning.  It’s distinctive.  Under Two Pesos, that’s what you need, and Apple’s claimed trademark seems like a legitimate one.  And so, preemptively, it is a trademark, yes, unless and until some final order of a court says it isn’t — and, incidentally, the PTO has registered it.

I see it.

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*  An anonymous commenter called “Jade” notes, snarkily, that the term for an office action that says “no” to a trademark registration application is a “refusal,” not a “rejection,” adding “There is a big difference between the two and anyone interested in IP has to learn it.”  I acknowledge that the term of art used by the PTO is a “refusal” for trademarks, whereas in patents we see the word “rejection,” but I am not sure of the big distinction to Jade is referring in a context where only trademarks are being discussed.  If it’s good enough for the Federal Circuit, see, e.g., In re Shinnecock Smoke Shop, 571 F.3d 1171, 1175 (Fed. Cir. 2009) (“Applicant assumes that, unlike him, the successful applicants were non-Indians and that this is the reason why his applications were rejected whereas theirs were not”); In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1339 (Fed. Cir. 2003) (“Boulevard appealed the [section 2(a)] rejection to the TTAB”), In re California Innovations, Inc., 329 F.3d 1334, 1342 (Fed. Cir. 2003) (“As a preliminary issue, this court may affirm or reverse a rejection of an application with respect to only a portion of the goods identified) –“rejection” is good enough for me too.

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Author:Ron Coleman

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