Tuesday, July 20, 2010

Test Your TTAB Judge-Ability: Are These Two Fruit Designs Confusingly Similar?

Apple, Inc. opposed an application to register the design mark shown below left, claiming likelihood of confusion with its registered and famous mark shown below right, the marks being for legally identical goods and services. So how would you decide? Apple, Inc. v. Echospin, LLC, Opposition No. 91171592 (June 29, 2010) [not precedential].

The Board began by finding the Apple logo to be a famous mark in light of Opposer's staggering revenue and advertising figures, extensive media coverage, and favorable survey results. It concluded that Apple "has shown significant market exposure, revenue, and overall fame amongst the relevant public."

Of course, because the goods and services involved are legally identical, the Board must presume that they travel in the same channels of trade to the same prospective customers.

And so it all came down to the marks, with Apple entitled to a broad scope of Section 2(d) protection for its famous mark. Moreover, since the goods and services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant argued that its mark is an orange, not an apple:

In fact, the evidence . . . . clearly shows that Echospin picked the orange logo to make that very distinction, that Echospin is the no-Apple, the opposite of Apple, an alternative to Apple, and an improvement over Apple.

The Board sagely took this as an admission that Applicant's mark "is shaped like a fruit."

In considering the apple and the orange, the Board noted that a side-by-side comparison is not the appropriate approach. "The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks."

The Board found the marks "quite similar in concept and style, both being simple, abstract representations of fruit, rather than photographic pictures thereof.

Furthermore, opposer’s mark contains a bite in the upper right section of the fruit. Applicant’s mark contains a series of small, white circles in the same area of its fruit, thereby creating a similar commercial impression of a missing piece of the fruit. Finally, opposer’s mark is in the shape of an apple, with a short, detached leaf at the top, pointed to the right. Applicant’s mark is also by admission a fruit, with two short, detached leaves at the top, one of which is quite similar in size and direction to that in opposer’s mark.

Keeping in mind that a famous mark "casts a long shadow which competitors must avoid,"the Board found that the marks have similar connotations and commercial impressions.

And so the Board sustained the opposition.

TTABlog comment: Keep this case in mind the next time someone complains that you are comparing apples to oranges. Anyway, I don't think Applicant's mark looks like an orange. It looks more like an apple, or maybe a butterfly landing on a donut with jimmies.

Text Copyright John L. Welch 2010.


At 9:44 AM, Anonymous Jessica said...

Fungus or pawprints? Yes. Similar commercial impression of a missing piece of the fruit? Not at all.

At 4:04 PM, Anonymous Randall Hull said...

The likelihood of confusion (apologies to Ron Coleman) is apparent. In the mind of the end use, who is not benefitted by a side by side comparison as referenced in the opinion, distinction is not assured. It is also apparent the applicant intended to 'surf the wake' of the Apple logo and brand.

I found it curious that the TTAB opinion includes an incorrect year for first use of the Apple logo in commerce under Class 9. The date of April 30, 1964 is impossible as the founders would have been in elementary school at that time. It is likely they mistyped 1976.

At 5:49 PM, Anonymous Rob said...

The Board's rule of thumb seems to be: If the Section 2(d) claim is brought by a Fortune 500 company, then likelihood of confusion exists.

At 7:57 PM, Anonymous Marta Randall said...

The Apple logo is so famous, so ubiquitous, so well-known, that I think your average consumer, seeing the applicant's mark, would be struck by the difference between the two -- more so than if the Apple logo were not as famous. There doesn't have to be a side-by-side comparison because the Apple logo is alive in everyone's memory.

Apple doesn't seem to vary its logo: no side views, top views, bites taken from the other side, more than one leaf, no leaf -- like Dewar's, the Apple logo never varies. So it's not as though consumers are looking for approximations of the Apple logo.

I think the Board was wrong, wrong, wrong. Further, I'm beginning to think that some marks can be so well-known (especially logo marks) that consumers can immediately sense distinctions. And what does that do to 2(d) arguments?

At 12:48 PM, Blogger Ben D. Manevitz said...

I'm usually grumpy about non-precedential opinions. Except this time. This decision was so wrong. Ick.

At 3:30 PM, Anonymous Trademark Attorney Arizona said...

I thought it was a bowling ball with hives or sweat. It would have been nice to see Applicant just submit a brief with nothing but the cliche "like comparing apples to oranges." Signature line. Done.

At 8:38 PM, Anonymous Justin Wei said...

In other words, the board is saying "Apple will be the only company who can use a fruit as its logo". This is so wrong.

Can ANYONE possibly confuse this logo with Apple's?

At 2:04 PM, Blogger Catherine said...

I agree - there is no likelihood of confusion, almost the opposite: Clearly, Applicant's mark is intended to bring to mind the famous mark so as to point out that Applicant is different, "apples to oranges." To me this seems more an issue of parody, more like "Chewy Vuitton", so any potential damage to Apple is more dilution than l.o.c.

The Dupont analysis does not work well with these cases because they are not really about confusion at all, rather they are about trading on the fame of another's mark, and concepts of parody and fair use have no constitutional foundation outside copyright jurisprudence. Yet it feels wrong that Apple's mark should reach any stylized depiction of fruit on these goods. Where do you see the law going with these cases, Jon?


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