For those of you who have read some of my previous blog posts, you already know of my love-hate relationship with Apple.  Well, the following story has tipped the scales more towards hate.  On July 17, 2008, Apple applied to register APP STORE as a trademark for “retail store services featuring computer software provided via the internet and other computer and electronic communication networks” and “retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics” (Serial No. 77525433).  After reviewing the application, the Trademark Examining Attorney assigned to the application refused registration of APP STORE on the basis that the mark is merely descriptive of the services rendered by Apple.  The Trademark Examining Attorney specifically noted that the term “app” is “defined as a computer application” and that the definition of the word “store” is “a place where merchandise is offered for retail sale to customers.”  The Trademark Examining Attorney concluded that the combination of those two descriptive terms did not create any “new non-descriptive meaning” and would be “immediately understood as describing a feature, function, purpose or use” of Apple’s retail store services featuring computer software.  Sounds right to me.

In its response to the Trademark Office’s rejection, Apple halfheartedly argued that (1) the word “app” is not merely descriptive because it could be an abbreviation for words other than “application,” such as “apparatus,” “appendix,” and “appointed,” and (2) the word “store” is not merely descriptive because the iTunes App Store is not a traditional brick-and-mortar store or online retail store.  Finally, Apple rather humorously argued that its APP STORE mark “creates a clearly recognizable double entendre” in that APP would “be immediately recognized as a variant of the applicant’s well-known APPLE STORE mark.”  Yeah, right.  “App” is short for “apple.”  Give me a break.  Nobody knows or refers to Apple as “app.”  Not a single person.

After the Trademark Examining Attorney was done cracking up at Apple’s ridiculous and nonsensical arguments, he issued a final refusal to Apple consisting of approximately 145 pieces of internet evidence tending to show that APP STORE would be perceived by the general public as merely a place to purchase software applications.  End of story, right?  Apple waves the proverbial white flag.

Unfortunately not.  Instead, Apple filed a Request For Reconsideration, admitting that APP STORE is, in fact, merely descriptive but that the mark is entitled to registration anyway because it has acquired distinctiveness and secondary meaning.  In other words, Apple argued that the general public would recognize APP STORE as belonging to Apple (and only Apple) because of the extraordinary success of the iTunes App Store, its extensive marketing and promotion of the APP STORE mark, and the unsolicited media coverage of Apple’s services.  In support of its argument, Apple attached a whopping 400 pages of exhibits, including sales figures, advertisements, and media articles.  And you know what?  The Trademark Examining Attorney was actually persuaded by all of Apple’s evidence (or more likely didn’t feel like looking through all of it) and allowed Apple’s application for APP STORE to be published for opposition.

Well, apparently Microsoft was paying close attention to Apple’s APP STORE trademark application because on July 6, 2010, it filed an opposition against the application on the basis that APP STORE is generic for a store that sells software applications and, therefore, is legally incapable of identifying and distinguishing Apple’s services from those of its competitors.  Microsoft specifically attached evidence to its Notice of Opposition indicating extensive third-party use of “app store” in connection with their own services, media articles generically referring to “app store” as a place to purchase applications, dictionary definitions of the words “app” and “store,” and even statements on Apple’s own website in which Apple refers to “apps” in the generic sense.  I also note that I’ve personally never seen Apple use a “TM” next to APP STORE, which you might expect if Apple truly believed it could claim exclusive rights to the phrase.

I could not agree more with Microsoft’s position and, honestly, I think every software application provider should be thanking Microsoft profusely for taking a stand against Apple’s anti-competitive behavior.  I mean, let’s say that I owned and operated a pet store and I decided to not-so-creatively name it PET STORE.  I spend 500 billion dollars over 30 years advertising and marketing my services, and I am known as the best pet store in the world, and my pet store does 100 billion dollars worth of sales each year, and my pet store is featured in thousands of newspapers, magazines, trade journals, and my pet store is written about on thousands of websites, and my pet store is the biggest in the United States.  Guess what?  I still don’t have a trademark!  The fact is that a generic phrase like “pet store” can never become a trademark under any set of circumstances for a store that sells pets, just like “candy store” can never become a trademark for a store that sells candy, “grocery store” can never function as a trademark for a store that sells groceries, and “app store” can never become a trademark for a store that sells apps.  These types of phrases are freely available to any business that wants to use them.

Hopefully, the Trademark Trial and Appeal Board will see right through Apple’s smoke-and-mirror arguments and deny it the monopoly it seeks.  Of course, if you disagree, please feel free to drop a comment.

If you happen to be from New York City or perhaps a frequent tourist there, you may have come across Robert Burck in your journeys through the Big Apple.  Burck, who is best known for strumming his guitar on the sidewalks of Times Square wearing only boots, a 10 gallon hat, and tighty-whities, has been using the name NAKED COWBOY since at least as early as 1998 in connection with his entertainment services.  According to his official bio, Burck has performed throughout the U.S. and internationally, and has been featured in various commercials, music videos, and television programs, not to mention being named “The Ambassador of New York Tourism” (please say it ain’t so).  Furthermore, he has apparently franchised the NAKED COWBOY name to exhibitionists in other cities across the United States for about $5,000 per year (money well spent, I’m sure).  Feel free to check out Burck’s website to learn more about him and to see whether you do, in fact, have a thing for partially nude cowboys who make music rather than rope steer.

Just when you thought New York City only needed (and frankly only wanted) one nude buckaroo roaming the streets entertaining and/or scaring and/or mortifying those who happen to come across him, here comes comedian and ex-stripper Sandy Kane (whose real name is Sandra Brodsky) to provide New Yorkers even more rancher-in-the-raw festivities.   According to a story in the New York Post, the bikini-clad Kane has been appearing and performing in Times Square for several years calling herself THE NAKED COWGIRL.  The story reports that Kane and Burck used to have a good relationship but it turned sour when Kane refused to sign a “Naked Cowboy Franchise Agreement” and recorded a song called “The Cowboy” with another male counterpart.  Burck is now threatening to sue Kane for trademark infringement stemming from her use of the name NAKED COWGIRL in connection with her live music and comedy performances.

Like most ordinary people would after reading this article, I surfed over to the Trademark Office’s website to see whether Burck happened to own a federal trademark registration for NAKED COWBOY.  Sure enough, he applied to register NAKED COWBOY on July 15, 2009 and was granted a registration for the trademark just over a month ago on May 25.  My search also revealed that Burck owned a registration for NAKED COWBOY dating back to 2002, but is was canceled in June 2009 for failure to file a declaration of continued use with the Trademark Office.  Hey, keeping those skin-tight briefs Clorox-white would be enough for any man to forget to renew his trademark registration!

In all seriousness, I think Burck has a pretty strong case against Kane for trademark infringement and unfair competition, especially considering the appreciable amount of fame and recognition Burck’s NAKED COWBOY name enjoys throughout New York and the exposure he’s had throughout the U.S.  Clearly, Burck doesn’t own the concept of dressing up (or is it undressing?) like a cowboy and performing music in the middle of Times Square.  Any freak-show is free to do that.  However, the issue is that Kane’s use of the name NAKED COWGIRL tends to imply an association or affiliation with Burck such that the public may mistakenly assume that Burck sponsors or endorses Kane and her performances.

But, Kane might have some leverage with Burck after all.  In reviewing Burck’s trademark registration for NAKED COWBOY, I note that the mark is registered for the following slew of services:

Educational and entertainment services, namely, providing motivational and educational speakers; Entertainment in the nature of circuses; Entertainment in the nature of dance performances; Entertainment in the nature of live performances by a musical personality/performer; Entertainment in the nature of live radio personality performances; Entertainment in the nature of on-going television programs in the field of news, comedy, variety; Entertainment in the nature of prerecorded sex-oriented, joke-oriented, insult-oriented messages by telephone; Entertainment in the nature of television news shows; Entertainment in the nature of live musical group, television comedy series, ethnic festival; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Entertainment services, namely, personal appearances by a celebrity, radio-TV personality, actor, movie star, model, sports celebrity; Entertainment services, namely, providing a radio program in the field of entertainment, comedy, motivational speaking via a global computer network; Entertainment services, namely, providing a television program in the field of entertainment, comedy, motivational speaking via a global computer network; Entertainment services, namely, providing an on-going radio program in the field of news, comedy, variety; Entertainment services, namely, providing an on-line computer game; Entertainment, namely, a continuing comedy, variety show broadcast over television, satellite, audio, and video media; Entertainment, namely, live music concerts; Entertainment, namely, live performances by musical bands; Entertainment, namely, television news shows; Multimedia entertainment software production services; Radio entertainment production; Radio entertainment services, namely, radio programs featuring performances by a person or individual, fictional character, radio personality, TV personality

As far as I can tell from Burck’s website and bio, it does not appear that Burcke actually has ever rendered, or is currently rendering, the services I have bolded above.  Therefore, Burck’s registration may be subject to cancellation on the basis of fraud on the Trademark Office in that Burck declared in his application that the NAKED COWBOY mark was in use in connection with all of the services when perhaps the mark was actually only in use in connection with some of the services.  Kane may be able to use the threat of a cancellation proceeding to help her reach a satisfactory settlement with Burck that doesn’t include paying Burck $5,000 per year to be a Naked Cowboy franchisee.  Just a thought.

Whatever happens, the naked truth is that (1) Kane shouldn’t use the NAKED COWGIRL name if there is a likelihood of confusion with Burck’s prior use of NAKED COWBOY, and (2) Burck, well, he should just put on some pants already.

This week’s post is in response to a fellow intellectual property attorney’s inquiry asking my opinion on the following matter (which he probably would have preferred in a 3-4 sentence email, but oh well).  On May 4, 2009, a company out of California called Pulser Music Services, Inc. (“Pulser”) filed an application to register the trademark RDIO.  This application is pending for a variety of products and services, most notably “streaming of audio materials over the Internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks,” “music download services provided over the Internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks,” and “broadcasting and transmission of streamed and downloadable digital audio and video content via computer and other communication networks.”  I don’t know about you, but if I saw the RDIO mark in promotional materials that advertise and explain Pulser’s services, I would probably pronounce the mark as the generic word “radio.”  However, on Pulser’s website, it claims that the mark “is a combination of the words radio and audio, and we pronounce it r-dee-o.”  In my humble opinion, this is absolute bologna since RDIO does not incorporate any phonetic element of the term “audio” that is separate and distinct from any phonetic element of the term “radio.”  It’s merely “radio” spelled by your average 4 year old.

Anyway, about three months later, a trademark examining attorney at the Trademark Office reviewed Pulser’s application and specifically requested that Pulser “specify whether the letters RDIO have any significance in the computer software, internet, or entertainment industry or as applied to the goods/services described in the application.”  In response, Pulser bluntly indicated that RDIO “has no significance in the relevant trade or industry or as applied to the goods/services listed in the application.”  Relying on Pulser’s representations, the Trademark Examining Attorney allowed Pulser’s application to be published for opposition on September 30, 2009 (it wasn’t challenged by any third party) and the Notice of Allowance was issued on January 12, 2010, thereby giving Pulser six months to provide proof to the Trademark Office that it is actually using the mark in interstate commerce in connection with all of the products and services recited in the application.

If you couldn’t already tell from my tone, I strongly believe the Trademark Office made a gross error in not refusing to register Pulser’s RDIO mark on the basis that it is generic for many of the products and services listed in the application.  As many of you probably already know, generic terms are not trademarks and can never be protected if their primary meaning is the actual name of the product or service with which they are being used.  For instance, the word “soap” for body cleansers is generic, as is the word “pencil” for certain writing utensils.  This tenet also holds true for misspellings of generic terms that do not materially change their common meaning.  For example, the word “photo” does not become any less generic for photography products and services by spelling it “foto” unless that spelling alters the meaning or connotation of “photo.”  That is why the owners of FOTO FANTASY (Reg. No. 2769186), FOTO QUICK (Reg. No. 2997542), and FIRST FOTO (Reg. No. 2926355) were required to disclaim exclusive rights to use “photo” apart from the marks as a whole.  Unquestionably, the word “foto” in these situations is simply an intentional misspelling and nothing more.

Similarly, Pulser’s RDIO mark is clearly the word “radio” with the second letter missing.  Contrary to Pulser’s assertions, the general consuming public would primarily recognize RDIO as merely a misspelling or variation of “radio” when used in connection with Pulser’s audio broadcasting and streaming services.  Even if you believe Pulser’s nonsensical statement that RDIO is a fusion of “radio” and “audio” that should be pronounced “r-dee-o,” wouldn’t it have made more sense for Pulser to apply to register ARDIO?  Now, that looks like a combination of those two words.  But, of course, it doesn’t look much like “radio,” now does it?  It’s almost like Pulser came up with it reasoning for choosing RDIO after the fact in order to help bolster its defense to a possible challenge.

In sum, RDIO is no more a trademark for audio broadcasting services than FOTO is for photography services.  If u disagre, plz feel fre 2 leav a komment.

As I was conducting my weekly ritual of browsing through newly-filed oppositions on the Trademark Trial and Appeal Board’s website, I came across one that every person who has ever purchased or traded a stock, mutual fund, or other security is helping to finance.  On March 28, 2010, the United States Securities and Exchange Commission (an agency of the federal government funded by the transfer and registration fees from stock trades), filed an opposition against two trademark applications owned by a Nevada company by the name of The Sec Institute, Inc.  These applications are for the marks THE SEC INSTITUTE (Serial No. 77654387) and THE SEC INSTITUTE with a logo that kind of looks like a house (Serial No. 77651451).  According to the applications, both of these marks have been used by The SEC Institute since 1984 in connection with educational workshops and seminars meant to assist businesses and organizations comply with the filing and reporting requirements of the Securities and Exchange Commission (better known as the “SEC”).  The SEC’s opposition to these applications is based on a likelihood of confusion with its prior use of the acronym SEC in association with a wide variety of services including regulating the financial industry and securities exchanges, monitoring and enforcing compliance with regulations, educational services, providing financial information, promoting investor protection, etc.  The SEC also alleges that The SEC Institute’s marks falsely suggest a connection between itself and the SEC.

While this opposition perhaps doesn’t rise to the level of being ridiculous, I do find it somewhat curious considering that a cursory search of the Trademark Office’s records revealed two other existing registrations for marks that incorporate the acronym SEC where the acronym is clearly referring to the Securities and Exchange Commission.  The first is a February 2009 registration for SEC TEA PARTY (Reg. No. 3579868) for “blogs featuring commentary on Securities and Exchange Commission and other legal matters,” and the other is for SEC FILINGS NAVIGATOR (Reg. No. 3729014) for what amount to providing online information and guidance to people concerning what information must be disclosed to the SEC.  I also note that the Securities and Exchange Commission has never attempted to register its SEC mark for any products or services whatsoever in the 75 years the agency has been in existence.  I guess it has just been too busy investigating and catching crooks like Bernie Madoff, R. Allen Stanford, Lehman Brothers, and Enron before their illegal schemes could cause catastrophic harm to millions of Americans.

I guess there is the small possibility that some people will be confused into believing that the SEC approves, sponsors, or endorses the services rendered by The SEC Institute.  As the plaintiff, the SEC is going to have to prove its case, perhaps with survey evidence and other expert testimony.  But as far as the SEC’s allegation of a false suggestion of a connection between the two entities, I’m sure the last thing The SEC Institute wants is people to assume there is any kind of association between itself and the SEC, especially considering the SEC’s incredible failures over the past decade to properly carry out its duties and the immense amount of negative media attention surrounding such failures.  In fact, The SEC Institute’s website has a small disclaimer on the bottom of each page which states that “The SEC Institute is not affiliated with the U.S. Securities and Exchange Commission (SEC).”  I swear, if I was The SEC Institute I would demand that the Securities and Exchange Commission immediately put a disclaimer on its website indicating that it is not affiliated with me!

Apart from whether the SEC has a decent case against The SEC Institute, I think it’s a shame that the SEC is spending a portion of its budget hiring one of the world’s largest and most prestigious intellectual property firms (Finnegan in Washington DC) to go after a company that is actually helping businesses and organizations comply with the SEC’s own rules and regulations (which I’m sure are onerous, burdensome, and complex).  The SEC Institute is certainly not harming the (already poor) reputation and (almost nonexistent) goodwill of the SEC name, and I very much doubt there has been any actual consumer confusion stemming from its use of THE SEC INSTITUTE over the past 25 years.  Although reasonable minds can certainly differ, I believe the SEC should be more concerned with spending its finite budget on protecting hard-working American investors from fraud rather than on an opposition that, in the best case scenario, would only prevent The SEC Institute from registering its trademarks and would do nothing to actually stop The SEC Institute from continuing to use its trademarks to advertise and sell its services.  Makes you wonder, no?

About a week and a half ago, it came to my attention that Apple has recently filed a slew of federal trademark applications (about 30) for many of the icons that appear on the iPod Touch, iPhone, and/or iPad.  For those of you who have no clue what I’m talking about, each software application on Apple’s mobile devices has an associated visual icon displayed on their touchscreens.  When an icon is touched by the user, it launches a specific program (email, text messaging, web browser, etc.).  For example, Apple has applied to register the following icons for programs that come pre-installed on its various devices (click on the icon to view a copy of the trademark application if you’re so inclined):

It probably doesn’t take a genius to figure out what types of programs are opened when these icons are touched (no, you don’t make a phone call by touching the camera icon).  What’s important to note about these icons is that they launch programs that are intrinsic to the devices themselves (telephone calls, email, text messaging, address book, and shooting photographs).  In other words, they are not software applications that merely “open the door” to information or functionality provided by a third-party.  Therefore, these icons do, in fact, function as trademarks to designate the source of the application, which is Apple.

On the other hand, Apple has also applied to register the following four icons for software applications that also come preloaded on its devices (again, click on the icon to see the trademark application):

For my readers who haven’t yet made the switch to the best smartphone on the market (you will eventually, trust me), the first icon allows the user to access videos on YouTube (a website not owned or operated by Apple).  The second one launches Google Maps.  The third icon allows the user to view weather information provided by Yahoo!.  And the last one opens an application which displays current stock prices and other financial information, also provided by Yahoo!.  In fact, when the weather and stock applications are launched, Yahoo’s well-known “Y!” logo appears on the bottom left corner of the screen with no reference to Apple whatsoever.  Furthermore, the word “YouTube” sits directly below the first icon when displayed on the iPhone screen.

So, what distinguishes these four icons from the previous five?  Well, these icons and their associated programs act more as an entry point to services and information provided by companies other than Apple.  Therefore, I believe there is a serious question as to whether users actually view these icons as source indicators (trademarks) for Apple’s computer software or, in contrast, they see them as source indicators for the underlying services provided by YouTube, Google, and Yahoo.  I mean, is there really any difference between these four icons and those associated with the other 150,000 apps available for download from the iTunes App Store created by independent developers?  For instance, when I purchase casino games from my favorite app developer (OK, I get them for free since he’s a good friend of mine), and the icon shows up on my screen, it’s not like I think that Apple is all of a sudden the company behind the game or the software.  Then, when I launch the game, the logo of the app developer appears and my game begins.  The same thing is true when I touch these four icons.  If anything, I would argue that these four icons function more as trademarks for YouTube, Google, and Yahoo! than they do for Apple.  If that’s true, then Apple would have little basis to maintain its trademark applications for those icons.  Of course, it’s a factual question that would perhaps require some survey evidence to answer, but the question remains nonetheless.