Friday, September 30, 2011

Finding Apple's 2(f) Evidence Insufficient, TTAB Affirms Mere Descriptiveness Refusal of MULTI-TOUCH for Handheld Devices

The Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark MULTI-TOUCH for handheld mobile digital electronic devices [think iPhone - ed.]. Apple's evidence of acquired distinctiveness was insufficient to carry this "highly descriptive" mark over the registration goal line. In re Apple Inc., Serial No. 77219819 (September 23, 2011) [not precedential].

Apple did not dispute that MULTI-TOUCH is descriptive of its goods, but argued that the mark has achieved acquired distinctiveness under Section 2(f).

Examining Attorney April K. Roach contended that MULTI-TOUCH identifies a type of touchscreen that "allows a user to manipulate and control the functions of an electronic device by using more than one finger simultaneously." Various webpages and articles showed that multi-touch "not only identifies the technology, but also describes how a user of the goods operated the device." The Board therefore agreed that MULTI-TOUCH is highly descriptive of a feature of the identified goods.

The Board observed that "more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be unlikely to believe that it indicates source in any entity."

Apple had used the MULTI-TOUCH mark for only two and one-half years. Its evidence consisted mostly of webpages and articles describing the iPhone.

This evidence established that iPhone is a very successful product that has generated much interest among potential purchasers. However, as the examining attorney correctly pointed out, the applied-for mark is not IPHONE, it is MULTI-TOUCH.

None of the articles submitted by Apple used "multi-touch" in a trademark manner. The mark is not used on the goods, or on packaging for the goods. The Board was therefore "not sympathetic" to the argument that the success of the iPhone translates to acquired distinctiveness for the term MULTI-TOUCH.

The Board noted that MULTI-TOUCH mark appears at Apple's website on pages describing the operation of the device. There was no evidence as to how long the term was used on the website, or the number of visitors there. There were no user manuals of record, little advertising, no evidence of in-store demonstrations, and no evidence regarding national tv commercials mentioning MULTI-TOUCH. There were no affidavits, declarations, depositions, or other evidence showing the nature and extent of Apple's use of the mark, and no evidence of advertising expenditures in connection with the mark. "Simply put, the record contains little direct or circumstantial evidence that purchasers of applicant's goods view MULTI-TOUCH as a distinctive source indicator."

In light of the highly descriptive nature of MULTI-TOUCH, the Board "would need substantially more evidence (especially in the form of direct evidence from customers)" to find acquired distinctiveness.

And so the Board affirmed the Section 2(e)(1) refusal to register.

TTABlog comment: Will Apple take a second bite of the apple? If it seeks review of the Board's decision under 15 USC 1071(b), it can submitted additional evidence. Will Apple try to bolster the feeble record regarding acquired distinctiveness?

I note that Amazon's new Kindle Fire features a "Multi-Touch Display." Will Apple stand for that?

Text Copyright John L. Welch 2011.


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