Apple recently suffered a loss in its seemingly unending series of legal actions. The TTAB denied Apple registration of its icon used on its mobile devices to access a user’s music collection. The goods which the mark identifies are described by Apple as “[c]omputer software for use in reviewing, storing, organizing, and playing pre-recorded audio content, sold as a feature of handheld mobile digital electronic devices comprised of digital audio and video players, handheld computers, personal digital assistants, and electronic personal organizers, in International Class 9.
The Trademark Examiner denied registration based on section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), stating that Apple’s mark is likely to cause confusion with a mark already registered with the United State Patent and Trademark Office. The mark in question is registered to the current owner of “myspace” which I thought died years ago long with my dial up connection and N’Sync’s popularity. The USPTO granted the trademark to the registrant, ilike inc, in August 2008. ilike describes its mark as services “providing temporary use of nondownloadable software for adding music and video profiles on the internet, for listening toMP3’s and for sharing MP3’s and music playlists with others”.
While it is clear from a side by side comparison that these two marks look very similar this action provides an excellent example of how the TTAB compares marks and determines whether there is a likelihood of confusion between the marks. Also, it gives us hope that just because you are a large company like Apple you cannot simply be granted a trademark because your use is superior and more recognizable than a registered mark, even if that other mark has fell into the depths of internet obscurity.
Without further ado here are the common factors trademark examiners and TTAB judges will consider in determining a likelihood of confusion. These factors are taken from In Re E. I. du Pont De Nemours & Co., 476 F. 2d 1357.
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression and the strength of the registered mark.
In applying this factor no one element is determinative in finding there is a likelihood of confusion but at times one factor may prove critical. In this case it was not whether an average person could easily point out the differences between these marks when subjected to a side by side comparison, but rather if they are similar in terms of commercial impressions that source confusion is likely to result. The TTAB determined here, that the marks leave a general impression in the average consumer and therefore may cause confusion between the marks.
- The similarity or dissimilarity and nature of the products and services described in the application and registration
This factor is rather straightforward and requires little explanation. The TTAB determined that regardless of the fact that Apple’s mark allows a user to process audio content is too similar to the registrant’s mark that provides access to non-downloadable music content.
- The similarity or dissimilarity of likely-to-continue trade channels and classes of consumers
Important to this factor is whether consumers will come in contact with the mark under the same circumstances as the registered mark (think time, place, manner). For example, are they going to go the store and see them on the shelf together? Are the products even sold in the same retail outlets? The TTAB determined that the same consumers, people listening to digital audio, we likely to encounter both marks and therefore give rise to confusion between the marks.
- Conditions of sale (degree of consumer care)
This factor is concerned with the level of care and sophistication the consumers of relevant products use in making purchasing decisions. I.e. do consumers carefully consider their options when making a decision to use these products or are purchases made more on impulse? Here, Apple claimed that users of registrants mark and applicant’s mark are sophisticated. The TTAB disagreed and said there is not a high level of care by the consumers who encounter either the registrants or the applicants; therefore, the factor did not weigh in Apple’s favor.
- Nature and extent of any actual confusion
While providing proof that there has been no actual confusion between the marks in the time they were concurrently used is important, the proof must show that there has been a significant amount of time the marks were concurrently used. In this case the TTAB said that a significant period of time has not passed and therefore Apple’s argument of an absence of actual confusion is no strong enough to overcome the other factors mentioned by the TTAB.