The irony of trademark clearance – even if a trademark espouses a unique message, it may not be all that unique.
Swiss watchmaker Swatch AG finds itself embroiled in another trademark dispute with Apple, Inc. – this time, for the trademark TICK DIFFERENT. Swatch applied for the trademark in Switzerland, which Apple has challenged before the Swiss Federal Administrative Court.
Apple, you may recall, coined the slogan THINK DIFFERENT in connection with a 1997 ad campaign. The slogan’s deliberate grammatical turn (i.e., avoiding the more obvious “think differently“) earned national acclaim and became associated with Apple’s turnaround in the subsequent decade.
It seems on that basis Swatch may have an uphill battle ahead of it – the THINK DIFFERENT mark was used in association with computers, but it has no doubt attained a high level of international fame. What’s more, the watch Swatch offers with this tagline has some element of “smart” functionality – that is, it contains contactless payment functionality.
This makes Swatch’s mark vulnerable under theories of trademark dilution, something we have addressed at length in this blog. Evidently, in Switzerland, the standard is rather specific – to prevail, Apple must “prove that at least 50 percent of consumers associate “Think Different” with Apple branding.” The U.S. standard is not quite that overt, but relatively the same standards apply – if THINK DIFFERENT is famous and well-known among U.S. consumers, it can be said Swatch’s mark would create a “likelihood of dilution” with respect to Apple’s mark.
But as it happens, Swatch also has applied for the TICK DIFFERENT mark in the United States – and the Trademark Office has approved and allowed the application. This means Apple did not choose to oppose this application when it was published, and must wait until Swatch submits proof of use in the U.S. (or provides its Swiss registration information, if and when it is issued) for the mark to be registered. Only then could Apple challenge the U.S. application – then a hypothetical registration – via a cancellation proceeding.
So the Swiss lawsuit could be the start of many enforcement proceedings for Apple – even if they are successful in Switzerland, the electronics giant may well be before the TTAB in the near future.