“What is striking about [Apple’s] argument is the claim that food-and meal planning-related services are within the natural ‘zone of expansion’ for Apple’s myriad trademarks. I think most people would not make the leap from computers and phones to food preparation.”
How many types of fruit does one mega-company need to protect its trademarks? Apparently, Apple Inc. believes an image of a pear used in connection with a meal preparation app is too close for comfort and that it is entitled to prevent its use. Bananas, you say? Possibly, but it’s also not uncommon for companies that have invested millions in establishing, promoting and protecting a trademark to take no prisoners in the battle for brand supremacy.
Apple ‘Prepears’ for Battle
Apple recently filed an opposition with the U.S. Patent and Trademark Office (USPTO), opposing the registration of a mark that features an image of a pear, for an application for a meal prep app called Prepear. Apple’s opposition is based on the legal theories of likelihood of consumer confusion and brand dilution by blurring. To establish likelihood of confusion under the Lanham Act, it must be shown that a reasonable consumer, in viewing the potentially infringing trademark as a whole and in the context of the goods and services being advertised, would be likely to confuse the two marks and the source of the goods and services. The Federal Trademark Dilution Act, 15 U.S.C. § 1125(c) creates a statutory framework allowing for owners of famous marks to bring claims against third parties it believes are trading on their goodwill and diluting the distinctive quality of their trademarks. With respect to dilution by blurring, Apple would need to show, among other things, that it has a famous and distinctive mark (consider that box checked) and that Prepear’s use of the pear logo was intended to cause an association in the minds of consumers with Apple’s famous apple logo and that such association was in fact made.
When the owners of Prepear made Apple’s opposition to their trademark application public, an uproar ensued, and a classic David and Goliath story was born. Of course, all trademark owners are entitled to protect the valuable rights in their marks, and obviously a brand like Apple – whose market value just reached the $2 trillion mark – has much to protect. But when does the legitimate goal of trademark protection start to look like an abuse of power and trademark bullying? Isn’t healthy competition as American as apple pie? There is no universe in which the owners of Prepear, a small company based in Utah with five employees, can outspend Apple in this legal fight. So is Apple being a trademark bully, or is it just doing what a billion-dollar business must do to police and protect its marks?
Bully or Just Business?
There are many instances of large companies that are accused of engaging in trademark bullying, which essentially means that they use their larger size and bottomless bank accounts to force smaller players to relinquish marks that they legally have every right to use. Some recent examples include Facebook’s opposition to the registration of “Designbook” for a crowdfunding service based in Vermont. Facebook seems to take the position that a mark with “book” as a suffix is inherently likely to cause consumer confusion. Likewise, the use of the word “face” also seems to rankle Facebook as demonstrated by its opposition to the mark “Facepets,” which in fairness to Facebook, was to be used for a social network for pet owners. In that instance, it seems a lot more likely that consumers would be confused by the origin of the Facepets network and you can easily imagine a perceived connection between the two companies.
Zynga Inc., developer of the FarmVille series of online and mobile games, has gone after many other brands who sought to include “ville” as a suffix in connection with games. Going back to Apple, it has vigorously pursued and effectively squashed the ability of other companies to use “pod” as a suffix for products, essentially claiming sole ownership of the word “pod” in the context of the sale and advertising of products.
In its Notice of Opposition filed with the USPTO on March 25, 2020, Apple states:
Since long before Applicant’s filing date, Apple has offered identical and/or highly related goods and services under its Apple Marks. Specifically, (1) Apple has long offered and/or owns multiple registrations for, and/or owns common law rights with respect to, its Apple Marks covering goods and services related to computer software, as well as healthcare, nutrition, general wellness, and social networking (see e.g., Apple’s registrations identified in Paragraph 20 above and associated goods and services highlighted in bold in that paragraph); and/or (2) Applicant’s Services (e.g., food and meal planning-related services) are within Apple’s natural zone of expansion for Apple’s Apple Marks. It is therefore likely that consumers seeing Applicant’s Mark for such services, particularly in light of the frame of the Apple Marks, will conclude that Applicant’s Services are authorized and otherwise associated with Apple when that is not the case.
Well, I don’t know about you, but this is the first I am hearing that Apple is in the nutrition business. What is striking about the above argument is the claim that food- and meal planning-related services are within the natural “zone of expansion” for Apple’s myriad trademarks. I think most people would not make the leap from computers and phones to food preparation – that’s an “apples to oranges” comparison. I also don’t think that a company with enormous market share in a number of areas gets to claim that by virtue of its fame, it should have the right to prevent other companies in other markets from developing brands and using trademarks just because it is so famous.
Scorched-Earth Approach May Scorch Apple
Apple’s marks are ubiquitous and wildly recognizable throughout the world and clearly identified with an image of an apple. So, is the pear really a threat? In this case, and in my view, this seems to be a knee-jerk response and a continuation of the scorched-earth approach Apple has taken towards any product name or logo that is even tangentially adjacent to “Apple,” the apple logo or other marks in the Apple portfolio. Will it be worth it from a public relations perspective for Apple to be labelled a trademark bully? Perhaps not. But I somehow sense that Apple’s gluttony for fruit will continue.
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