Comparing Apples and Apples: Computer Giant Takes On New York’s Eco-Marks

apples_final1.jpg

In a battle of the apples, computer, iPod and iPhone giant Apple Inc.  (“Apple”) is fighting the Big Apple’s attempt to get federal trademark registrations for its “green” apple logo (above right) for various goods and services, including promoting environmentally-friendly policies and practices and sustainable growth.

In May of 2007, NYC & Company (NYC), New York City’s marketing and tourism organization, filed several applications with the U.S. Patent & Trademark Office (PTO) for registration of its apple design alone and in combination with the words “greenyc” and “nyc.gov/planyc2030.”  NYC is seeking the registrations in several classes for various goods and services ranging from publications for promoting environmentally-friendly policies and practices in business, tourism and economic development and public service announcements on sustainable growth to sweatshirts, t-shirts and caps to beverage glassware, dishes and plates. 

In January, Apple filed an opposition to two of NYC’s trademark applications (when the PTO has decided that a trademark application can be registered, the mark and related information is published and parties who believe they would be damaged by the registration have a prescribed period to oppose registration).  Apple contends that the City’s apple is too similar to its own apple design in “appearance and commercial impression” and would cause consumer confusion and erode the distinctiveness of its iconic apple.  According to Apple’s complaint, its trademarks (twelve of which are cited in the complaint) have priority dating back to the late 1970’s and both NYC’s design and its own “consist of an apple with a stylized detached and convex leaf element angled upwards.” 

Last week NYC filed an Answer and a counterclaim for cancellation of Apple’s trademark Registration No. 1,401,237 for mugs, dishes, drinking glasses, beer steins and wine glasses (‘237 Registration) on the basis that Apple was not using the mark for those goods at the time of its trademark application and that its statement of use was therefore false.  The ‘237 Registration is the only mark cited in Apple’s complaint that consists of a traced apple (see below) rather than the more prevalent solid apple pictured above on the left. 

NYC’s strategy seems to be first to knock out the traced apple trademark, which is closer in appearance to its own traced design than Apple’s solid apple logo.  With the traced apple mark out of the case, NYC would only be up against the solid apple.  Then it could argue that its design is not similar in overall appearance and commercial impression due to significant differences such as the traced outline and the two internal white spaces (of course there are other distinctions, such as Apple’s bite and NYC’s stem).  I like the City’s chances of prevailing better if it can excise the traced apple from the case, and I’ll be watching this fight and reporting on it as it develops.   

outlineapple.gif

 

Eric Lane Avatar

Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.