Thursday, May 17, 2012

"VIDEO POD" for Video Projectors Merely Descriptive and Confusingly Similar to "IPOD," Says TTAB

The Board sustained Apple Inc.'s opposition to the mark VIDEO POD for video projectors [VIDEO disclaimed], finding it merely descriptive of the goods and, alternatively, likely to cause confusion with the famous mark IPOD for handheld digital devices. Although Applicant Sector had yet to use its mark, the evidence showed that its products were intended to be pod-shaped. Moreover, the Board found that Applicant's video projectors were "highly related" to Apple's goods. Apple, Inc. v. Sector Labs, LLC, Opposition No. 91176027 (March 19, 2012) [not precedential].

Evidentiary rulings: The Board rejected the comments of various bloggers who harshly criticized Apple for even filing this opposition. Sector claimed that these comments buttressed its position that confusion is unlikely here. The Board was unimpressed by the bloggers:

[i]t is commonplace in the cyberworld for public officials and commercial establishments to be maligned by intemperate users of the blogosphere who hide behind anonymity or pseudonymity as a cloak of protection. [Ouch! - ed.]

The Board also excluded certain documents that Applicant Sector introduced during its testimony period, but which documents had never been produced during discovery. Sector failed to provide substantial justification for withholding these documents, and the Board ruled that would not only be unfair to allow the documents into evidence, but it would countenance "the very type of unfair trial practice that the Federal Rules and the Board's precedent are meant to prevent."

Sector objected to many of Apple's unpleaded registrations, but the Board pointed out that they were submitted only to show the relatedness of the goods, not to establish priority. And so they were admissible for that limited purpose.

Finally, Applicant objected to the errata sheet submitted by Apple's main witness, but the Board found that the thirteen minor changes in 135 pages of transcript were not substantive.

Mere descriptiveness In its discovery responses, Sector repeatedly referred to its video projectors as "pod-shaped" or having a "pod-like appearance." However, Sector later changed course, with its President feebly claiming that, in choosing its mark, he was inspired by "parallels between his dream of a family of video products and 'pods' of whales, or even a scene involving an 'escape pod' from the movie 2001. A Space Odyssey (1968)." The Board found these tardy explanations "most unconvincing." It concluded that VIDEO POD is merely descriptive of a pod-shaped video player, and it sustained the opposition under Section 2(e)(1).

Giant pod, cast of "Invasion of the Body Snatchers"

Likelihood of confusion: For the sake of completeness, the Board considered Apple's Section 2(d) claim. Since 2001, Apple has sold more than 250 million IPOD devices, spending nearly 3 billion dollars for advertising and promotion. Based on these and other facts, the Board concluded that IPOD is a famous mark for likelihood-of-confusion purposes. [Note that on the issue of Section 2(d) fame, the Board considered evidence up to the date of trial - ed.]

As the fame of a mark increases, the degree of similarity between the marks necessary to support a likelihood of confusion declines. The Board found the marks to be similar, since the word "video" is descriptive of Applicant's goods and the applied-for mark incorporates the most prominent part of Apple's mark.

As to the goods, Apple could not argue that it's IPOD device was capable of displaying videos as of Applicant's 2003 filing date. Apple argued that video projectors were within it's natural zone of expansion, but the Board chose not to go down that road. Instead, it focused on the relatedness of the involved goods as of 2003, finding that the goodwill from Apple's music players "would carry over into the area of video projectors."

That is, the reasonably prudent consumers familiar with opposer’s IPOD device in February 2003 – had they seen an electronic video device being sold under VIDEO POD – would have confused its source. This direction from audio to video was clearly not a distinct departure from Apple’s digital media empire. Specifically, the dozens of articles in this extensive record lauding the iconic nature of the IPOD media player reinforce the idea that Apple, throughout the tenure of the late Steve Jobs, has been on the cutting edge of technology and consumer trends.

Moreover, Sector conceded that its video projectors were to be designed to be compatible with Apple's IPOD media player devices. Thus even without a "strict overlap" of the involved goods, and without resorting to the natural area of expansion doctrine, the Board found a close relationship between the parties' respective goods.

Finally, the Board found IPOD to be a conceptually strong mark, a coined and fanciful term as applied to Apple's goods. There was no evidence of third-party use of the word "POD" in connection with similar electronic devices, and Apple has consistently acted to protect its IPOD mark.

And so the Board found confusion likely and it sustained Apple's Section 2(d) claim.

TTABlog comment: Someone should write an article about the differing cut-off dates for evidence on various issues: fame under Section 2(d), fame for dilution, relatedness of the goods, etc.

Text Copyright John L. Welch 2012.


At 9:51 AM, Anonymous Rob said...

The deteriorating quality of Board analysis is alarming. The trademark judge vetting process is obviously inadequate. (And don't get me started on the interlocutory attorney vetting process.) I agree with the Board that the mark is descriptive; in fact, it's borderline generic. But to say that it's likely to cause confusion with Apple's mark?! How exactly?

At 10:40 AM, Anonymous Anonymous said...

@ Rob: Quality analysis of a LofC case within the comments of a frequent Board critic might well include disagreement with the panel's incorrect resolution of particular du Pont factors.


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