Tuesday, March 06, 2012

Test Your TTAB Judge-Ability: Must Apple Disclaim "LP" in ITUNES LP?

Apple, Inc. applied to register the mark ITUNES LP for computer software, telecommunications services, entertainment services, and software design and development services relating to, inter alia, audio and multimedia content. The Examining Attorney refused registration of the mark without a disclaimer of LP. Applicant appealed. Both the PTO and Apple agreed that LP is an abbreviation for "long playing" vinyl records. How would you rule? In re Apple Inc., Serial No. 77860835 (February 29, 2012) [not precedential].

Examining Attorney Ty Murray contended that LP is descriptive of Apple's goods and services that "will provide the format of an LP record in a digital platform." Consumers would immediately understand that Apple's ITUNES LP digital content includes the same additional elements traditionally sold with LP records: lyrics, photos, and artwork.

Apple argued that LP refers to a very specific analog medium, and because Apple provides only digital content, "it is simply impossible for the unambiguous term 'LP' to be merely descriptive of the digital content."

The Examining Attorney relied on excerpts from dictionaries, websites, and the iTunes website itself to demonstrate the public's understanding of the term LP. Apple's website stated: "The visual experience of the record album returns with iTunesLP."

The Board agreed with the PTO that the evidence shows that LP is understood to mean "more than just the physical format of a 'microgroove photograph record designed to be played at 33 and 1/3 revolutions per minute.' " LP has a broader meaning: it encompasses the additional features typically associated with a long-playing album, such as cover art, song lyrics, liner notes, and band photographs.

Apple's "iTunes LP" service allows customers to purchase not only entire albums, but also additional, including artwork, lyrics, photos, and videos. "Thus applicant is providing to its customers, albeit in digital form, the same visual materials that made the LP record album a 'consuming experience.'" So says Apple's own website, as well as third-party websites.

Therefore the Board agreed with the PTO that ITUNES LP will convey "an immediate idea of a feature of the goods or services, namely that applicant's digital music files will include precisely the kinds of additional materials commonly associated with LP record albums."

We do not find, as applicant urges, that the evidence shows that LP records are so obsolete and long-forgotten that consumers would not recognize the term LP and its associations. On the contrary, applicant’s musically-minded consumers seem well aware of the significance of term LP and are quick to transfer these associations to applicant’s digital content, just as the term album has migrated from 78 rpm records to LPs, to compact discs, and now to digital music.

And so the Board affirmed the refusal to register.

TTABlog comment: How did you do? The Board affirms more than 80% of the mere descriptiveness refusals that it gets its hands on. So the odds were against Apple. Will Apple seek another bite via further appeal? iDoubtIt

Text Copyright John L. Welch 2012.


At 10:26 AM, Blogger John L. Welch said...

Based on a statistical analysis I did of one year's decisions, a few years ago.


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