iBooks Trademark Claim Fails – I Not Surprised

On May 15, 2013, in Trademarks, by Brian A. Hall

UnIntellectual Property (UnIP): Trademark for iBooks

The United States District Court for the Southern District of New York granted Apple’s motion for summary judgment stemming from a book publisher’s claim that it had rights to its unregistered trademark for “ibooks” and that Apple’s use if “iBooks” for its e-reader software created a likelihood of reverse confusion.  In doing so, it determined that “no reasonable jury could conclude that, as of 2010 when Apple announced its e-reader software, a substantial segment of ordinary consumers in the plaintiffs’ market associated the mark “ibooks” with a single source.”

In analyzing the issue, the Court recognized that Plaintiff had claimed rights to a composite trademark, which consisted of not only the “ibooks” characters but also an image of a light bulb, but it found that Plaintiff failed to establish that the “ibooks” portion of the mark created a separate and distinct impression.  While Plaintiff argued that “ibooks” was suggestive rather than descriptive, the Court also recognized that the fact that “i” stood for Internet, it referenced the USPTO Trademark Manuel of Examining Procedure (TMEP) in recognizing that such letter is recognized by consumers to refer to the Internet.  Moreover, the Court recognized that the USPTO’s previous refusal to register the Plaintiff’s mark as being deceptively misdescriptive further supports the Court’s opinion that the mark is indeed descriptive.

With that determination made, Plaintiff was tasked with establishing secondary meaning in order to claim acquired distinctiveness, and thus a protectable trademark.  Without a survey, Plaintiff argued the trademark secondary meaning factors: advertising expenditures, sales success, unsolicited media coverage, intentional copying, length and exclusivity of use, and other evidence (in the form of alleged “expert testimony”).  The Court ultimately held that “the plaintiffs have failed to submit sufficient evidence to raise a genuine issue of material fact with respect to whether a “substantial segment of the relevant group of consumers made the requisite association” between a source and the mark.”

Would a consumer survey had changed the Court’s mind, or at least created an issue of material fact?  I say no based upon the Court’s opinion also rejecting any likelihood of consumer confusion.

J.T. Colby & Co., Inc. v. Apple Inc., 11 CIV. 4060 DLC, 2013 WL 1903883 (S.D.N.Y. May 8, 2013).


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