All eyes were on Apple on Tuesday, September 9th as Apple unveiled a new line of products. The new line includes the iPhone 6 as well as the long awaited, expected, and rumored Apple watch (which, after years of speculation, will not be branded as an iWatch).
I had expected Apple to have applied to register the APPLE WATCH mark, or at least APPLE in connection with watches. But based on a quick search of the USPTO database, they haven’t. However, just a few weeks ago, Apple did apply to register the following claimed trademarks:
Both applications identify the goods as “Adapters for use with computers, computer peripherals, consumer electronics, portable and handheld digital electronic devices, digital media players, handheld computers, tablet computers, mobile phones, electronic book readers, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (GPS) devices.” Or, as most of us likely refer to them: “chargers.”
The application for the top mark (the photograph), describes the mark as “a cube having four sides with rounded corners, a flat front and back surface, a connector port on the flat back surface, and electrical prongs on the flat front surface.” The only difference between the top and bottom applications is that the top claims the color white as a feature of the mark, while the bottom makes no claim as to color.
We’ve discussed Apple’s previous applications for trade dress applications here and here. The U.S. Trademark Office has not yet examined the application, but in order to obtain a registration, Apple will need to prove that its claimed mark is 1) non-functional, and 2) has acquired distinctiveness. For item #2, Apple claims use of the mark back to 2008. Under the Lanham Act, 5 years of use is normally sufficient to establish acquired distinctiveness. So Apple’s main hurdle will be proving that the claimed mark is non-functional. The Board relies on a four factor test to determine whether a claimed mark is functional:
(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs; and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
Whether a mark is functional is a fact intensive inquiry that goes well beyond the average reader’s attention span for a blog post. What I do know is that the claimed mark is probably about as compact as a USB power adapter could be. For packaging purposes, the cube shape is probably helpful. And the location of the electrical prongs and the USB connector port are likely placed in the most accessible locations. On top of that, the advertising at the Apple Store touts the adapter’s “Ultra compact Design.”
Of course, competitors could use an alternative design, like a triangle. or a cylinder. The edges could be sharp rather than rounded, you know, to keep the thieves at bay (that might be functional though, so….).
Given that Apple includes a free charger as part of each of its new products, you wonder what their goal is in obtaining a trademark registration for this claimed mark. Are they hoping to prevent off-brand chargers like this USB charger? Or this charger that resembles the Macbook chargers? We’re more likely to find out Apple’s goal if it can successfully register either of these marks. Unfortunately, we’re probably going to have to wait a while.
Anybody got a watch?