In a battle of the apples, computer, iPod and iPhone giant Apple Inc.Â (“Apple”)Â 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 & CompanyÂ (NYC), NewÂ York Cityâ€™s marketing and tourism organization, filed several applicationsÂ with the U.S. Patent & Trademark Office (PTO) for registration ofÂ itsÂ apple design alone and in combination with the words â€œgreenycâ€ and â€œnyc.gov/planyc2030.â€Â 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 developmentÂ and public service announcements on sustainable growth to sweatshirts, t-shirts and capsÂ to beverage glassware, dishes and plates.Â
InÂ 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). Â Apple contends that the City’s apple is too similar to its ownÂ appleÂ design in “appearance and commercial impression”Â and would cause consumer confusion and erode the distinctiveness of its iconic apple.Â According to Apple’s complaint, its trademarks (twelve of which are cited in the complaint) have priority dating back to the late 1970’s andÂ bothÂ NYC’sÂ design and its own “consist of an apple with a stylized detached and convex leaf element angled upwards.”Â
Last week NYC filed an Answer and a counterclaim for cancellation ofÂ Apple’s trademark Registration No. 1,401,237Â 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.Â TheÂ ‘237 RegistrationÂ is the only markÂ cited in Apple’s complaint that consists ofÂ a tracedÂ apple (see below) rather than the more prevalent solid appleÂ pictured above on the left.Â
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.Â With the tracedÂ apple mark out of the case, NYCÂ would only be up against the solid apple.Â 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 andÂ NYC’s stem).Â 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 fightÂ and reporting on it as it develops.Â Â Â