Monday, December 07, 2015

TTAB Affirms Refusal of IPOD for User Manuals: Not Goods in Trade

The Board affirmed a refusal to register the mark IPOD for printed materials and publications "sold or distributed in connection with handheld mobile digital media devices," on the ground that Apple's specimens of use (user manuals) did not show the term in use as a trademark for "goods in trade." In re Apple, Inc., Serial No. 78521891 (November 13, 2015) [not precedential].

The Trademark Act defines a trademark as something being used "to identify and distinguish his or her goods" and "to indicate the source of the goods." These definition "carry the necessary implication that a prerequisite to obtaining a trademark is that the subject matter to which it applies must be goods."

"Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be 'goods in trade.'" In re Thomas White, Int'l, Ltd., 1006 USPQ2d 1158, 1161 (TTAB 2013) (investment reports not goods in trade). The question, then, was whether Apple's printed materials qualified as "goods in trade." Incidental items like letterhead, invoices, and business forms which bear an entity's trademark do not generally qualify as goods in trade.

Apple argued that its printed materials fill the bill because they bear the mark, are transported in commerce, and have utility to consumers of its products. Examining Attorney Sui Duong maintained that the materials are provided only incidentally with the iPod device, are not sold or distributed independently of the device, and have no viable existence apart from the device.

To determine whether an item is merely incidental to a primary product or service, we consider such factors as whether it: (1) is simply a conduit or necessary tool useful only in connection with the primary goods or services; (2) is so inextricably tied to and associated with the primary goods or services as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the primary goods or services., 103 USPQ2d at 1676 (items incidental to services not independent goods in trade).

Apple contended that should be limited to services, but the Board observed that the case is not so limited. The general question is always the same: "what is being offered for sale?"

The Board concluded that all three factors support the refusal. The materials are paper inserts (provided in the same boxes as the goods) that provide nothing more than elementary guidance to iPod purchasers but not other consumers. There was no evidence that the materials are sold independently. And there was no evidence that consumers patronize Apple stores seeking these inserts.

Applicant's substitute specimens, consisting of third-party manuals for iPod accessories and compatible apparatus, suffered from the same deficiencies as the original specimens.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2015.


At 9:31 AM, Anonymous Anonymous said...

No, this appeal was dead on arrival.

At 12:23 PM, Anonymous Anonymous said...

Probably not a new one, but WYHF? (Would you have filed?)

Don't ask me how to pronounce it.

At 1:01 PM, Blogger Barbara said...

Even more fundamentally, would you have applied?

At 1:54 PM, Anonymous Anne Gilson LaLonde said...

This seems to have been a waste of money. Apple tried many different arguments, but this was never going to fly. Are they facing some sort of infringement of their manuals? Wonder why this was so hard-fought.

At 9:36 PM, Blogger Douglas White said...

The Board got it wrong IMHO. The PTO ID manual shows an acceptable listing of goods to be "Computers and instructional manuals sold as a unit," but, even when one does sell manuals together as a unit with one's computers, one nevertheless is allowed to ignore the manuals and just list "computers." It follows that one should also be able to sell computers and manuals together but identify the goods only as "manuals." To put it another way, how else could it be that "Computers and instructional manuals sold as a unit" is an acceptable ID of goods in trade, but "Computers and cardboard boxes, plastic bags and twist ties sold as a unit" is not?

While the Board noted that the manual is of no practical use without the IPOD "computer," for many the computer is of no practical use, at least initially, without the manual. Both are items that are costly to make and both are of real and separate monetary value to the consumer.

For example, used electronic goods for sale on the Internet ordinarily sell for more if the listing states "manual included." Furthermore, countless original manuals are indeed sold as separate items on Ebay and elsewhere as replacements for lost manuals. Accordingly, the Board's evaluation of the third factor (no "independent value") appears erroneous - at least as to manuals in general.

In this regard, a third-party manual entitled "IPOD the missing manual" is currently for sale on Amazon, as well as "IPHONE the missing manual." Without a Class 16 registration, Apple may well be out of luck against these.

At 7:30 AM, Anonymous Anonymous said...

Some brand owners don't back down. They usually win.

At 1:15 PM, Anonymous Anonymous said...

Douglas White, can a consumer purchase an instructional manual from Apple?

At 5:38 PM, Blogger Douglas White said...

Yes. In fact, 100% of Apple's customers already do. After millions of such sales, Apple has come to be recognized as the sole source of APPLE brand manuals.

At 11:39 PM, Anonymous Anonymous said...

Can you provide a link where I can purchase a manual from Apple? Not together with a laptop, phone, tablet or watch. Just the manual.

At 4:43 PM, Anonymous Anonymous said...

Apple does make its ipad manuals available for download: Therefore, it would seem that there is a separate demand for Apple manuals beyond the demand for manuals that come with its products. The same cannot normally be said for letterhead, invoices, and business forms which are clearly incidental to the sale of a product.

At 10:13 PM, Blogger Douglas White said...

Anon, I'm pretty sure you no more want to buy a manual without an electronic device than I want to buy a device without a manual. Nevertheless, here is your link: Put a manual/IPOD "sold together as a unit" at the special package price in your cart. At checkout, type the following in the special instructions box: "Hold the IPOD."


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