Federal Court (E.D. Va.) Reverses TTAB Decision: Apple's REALITY COMPOSER and REALITY CONVERTER Not Merely Descriptive of Developer Software

On cross-motions for summary judgment, the U.S. District Court for the Eastern District of Virginia reversed the Board's decision [TTABlogged here] sustaining an opposition to registration of the marks REALITY COMPOSER and REALITY CONVERTER for downloadable software used by developers working on other software applications to produce and/or edit three-dimensional effects in augmented reality (“AR”). The Board found the marks to be merely descriptive of the goods, but new evidence submitted by Apple, including four expert reports, convinced the district court that that the marks "are both suggestive and have acquired secondary meaning." Apple, Inc. v. Zerodensity Yazilim Anonim Sirketi, 2025 U.S.P.Q.2d 1024 (E.D. Va. 2025).

Suggestiveness: Apple's linguistics experts opined that "ordinary speakers of American English - including those with backgrounds in science and technology - will not readily understand how these terms relate to Apple's product[s] ..." and that there is "no semantic link" between "reality" and "composer" or "converter" such that consumers would consider the marks descriptive. There was no third-party use of these marks. "Particularly compelling" was the expert evidence of a survey of 561 software developers, in which no one described the tested products using the phrases at issue.

[P]laintiff's experts describe how Apple’s marks are used in ways that are not descriptive (e.g., as a brand name), and no competitor uses these phrases or variations of them to describe their competing products. In sum, the evidence in this record establishes that Apple’s marks are suggestive and therefore registrable.

Secondary Meaning: According to the court, a "stronger reason" to rule in favor of Apple was the evidence establishing secondary meaning. Apple did not claim acquired distinctiveness under Section 2(f) in the TTAB proceeding, but here it pointed to more than five years of continuous and substantially exclusive use as prima facie evidence of secondary meaning. In addition, Apple provided media, consumer, and other internet user data, as well as search results showing that the terms at issue are "nearly always used as branded terms in association with Apple by the media."

And so, the court reversed the Board's decision and directed the USPTO to register the two marks.

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TTABlogger comment: If you've got the dough, review by way of civil action is the way to go.

Text Copyright John L. Welch 2025.