DuetsBlog Collaborations in Creativity & the Law

Sorry, Apple, Assignment of ITU Applications Isn’t MAGIC

Posted in Advertising, Branding, International

-Wes Anderson, Attorney

Another installment of Apple surveillance: it appears the tech giant has enlisted a shell company to file trademark applications for its newest products. Problem is, they might be stuck there.

On October 27, Apple will hold a press event at its Cupertino, California headquarters, presumably to introduce new Macintosh computers. One rumored feature of the new MacBook Pro line of laptop computers is a touchscreen strip running along the top of the keyboard, which can change based on the application currently running.

macbooktouchpanelmain-800x601

Apple fans, ever eager to find the latest scoop on new products, have done their homework. Brian Conroy, an Irish trademark agent and solicitor, uncovered various foreign filings for the mark MAGIC TOOLBAR on his website, “The Trademark Ninja.” But the application for each application is a company named “Presto Apps America LLC,” and not Apple.

This includes a U.S. application in Class 9 identifying “Computers; computer hardware; computer software; computer peripheral devices; computer display screens and keyboards; electronic interfaces for use with computers” and claiming intent-to-use in U.S. commerce and priority based on a foreign application (in the combined jurisdiction of Belgium, the Netherlands, and Luxembourg – BeNeLux).

Conroy concludes this is a masquerade:

The [sic] applied for the Global protection THE DAY before the last day they could, and have applied to Non-Paris Convention countries at the start of this month.

By my calculations, just the outlay for this trademark application comes to €16,000

NOW. Because Apple already has trademarks for

  • Magic Keyboard
  • Magic Mouse
  • Magic Slate
  • Magic Trackpad

They would almost certainly be able to stop any other company applying for the trademark ‘Magic Toolbar’, on the basis it’s similar to their existing trademarks and likely to cause confusion.

So, another company would have to be 100% certified insane to spend €16,000 in outlay for a trademark application that someone with the clout of Apple was almost certain to be able to object to and defeat. And that’s the main reason that I’m putting my neck on the line and saying that ‘Presto Apps America LLC’ is actually Apple.

This may well be Apple trying to be clever, and conceal its new feature’s brand name – but what happens if it unveils the MAGIC TOOLBAR? Presumably, the cat is out of the bag, and Apple will want to assign the application to Apple, Inc. This may be more difficult than it seems – unlike trademark registrations, which are relatively straightforward to assign, intent-to-use trademark applications must be assigned “to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing,” according to TMEP § 501.01(a):

In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b),  the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c)   or a statement of use under 15 U.S.C. §1051(d),  except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing.  Section 10 of the Trademark Act, 15 U.S.C. §1060; 37 C.F.R. §3.16.

This rule is made to prevent “horse trading” in ITU applications, such as applications filed merely to block a competitors mark or applications meant merely as “placeholders.” If an assignment does not meet these requirements, the trademark application – or any resulting registration – can be cancelled.

In other words, Apple would need to show Apple, Inc. acquired not just the trademark, but also the entire “business” of Presto Apps America LLC. It’s not immediately clear that there is any business associated with Presto Apps America. It is far more likely scenario that Presto Apps America is just meant to be the sort of “placeholder” this rule is designed to work against.

If the MAGIC TOOLBAR turns out to be real, I’ll be interested to see how Apple approaches the issue of ownership for these trademark applications.