-Martha Engel, Attorney

If you are a member of the Cult of Apple, like tech, or even just watch the news, you’re probably aware that yesterday was Apple’s big fall event where they announce new product launches and updates.  The event showcased a new iPhone with enhanced photo features (as this Wired article aptly puts it “Because selfies.”), new iPads (including a BIG one – which I’m kind of intrigued by), an updated Apple TV, and one totally new product just in time for back to school – the $99 Apple Pencil.

ApplePencil

Yes, it’s a stylus.

Yes, at a whopping $99, I know I’ll probably lose it.

And, yes, they’ve applied for patents for a stylus in the past.  See, e.g., here.  But in addition to the technical advances of the new stylus, what about trademark protection?  Layering IP protection with patents, design patents, trademarks, and trade dress protection is a highly recommended strategy to protect all facets of the IP for a product.  Apple knows this strategy well – filing even on icons and relying on their design patents to mount an expensive intellectual property attack against Samsung.

In advance of an Apple event, I like to review trademark filings to see what Apple may have coming up.   It’s one of the best ways to determine what might be launched at a new event since patents are not published until at least 18 months after they have been filed.  A recent review of applications filed in 2015 identified nothing really out of the ordinary, aside from the TUE 9 marks, which actually are design marks referring to the “look and feel” of at least part of the Apple Watch graphic user interface – the TUE 9 being letters and numbers in the calendar and an interesting topic itself, but I digress.  There are no pending applications (as of a search last night) for APPLE PENCIL, or even PENCIL for a stylus.  So why might that be?

Well, a search for “stylus” as the good and PENCIL as the mark reveals a prior registration:  PENCIL BY FIFTYTHREE.  The registration, issued on November 18, 2014, is owned by FiftyThree, Inc. for “computer stylus; stylus for portable electronic devices including tablets.”  Their product is available for purchase on their website and through Amazon.

pencil_fiftythree

 

 

FiftyThree…FiftyThree…now where have I heard that before?  Oh right, I wrote a prior post on the launch of Facebook Paper.  While I’m on the subject, where did that “next greatest thing” disappear to? (I guess it still exists.)   Facebook’s adoption of Paper was challenged in a blogpost by FiftyThree, which had a registration for PAPER BY FIFTYTHREE for various computer software and smartly filed an application for PAPER in the wake of Facebook’s announcement of the Facebook Paper app. There’s a thunderstorm in the Twin Cities as I write this, so I can’t help but to ask – does lightning ever strike in the same spot twice?  This sure looks like a rare example of that.

Will we see a PENCIL filing by FiftyThree and some challenging words?  Maybe so.  An internet search revealed that a product recently sold as Pencil By FiftyThree was available on the Apple Store, but clicking on the link provides an error page.

YahooPencilFiftyThree

I always prefer to err on the side of optimism, so given Apple’s obvious knowledge of FiftyThree’s product, I’d like to assume that these two are collaborating.  FiftyThree has yet to take to their blog like they did with the Facebook Paper issue, but VentureBeat blatantly called Apple out on copying and a spokesperson provided comment, although quite different in tone than the Facebook Paper blogpost.

Every Pencil needs Paper. We’re excited to launch the all-new Paper on iPhone and iPad tomorrow http://www.fiftythree.com/coming-soon, after which creative thinkers everywhere will see their phones and their ideas in a new light. We believe pen-and-touch input is the foundation for a new type of productivity geared towards creative thinking. Our and Apple’s products open up these tools to even more people, which we support. We at FiftyThree are excited to reveal where we think the next chapter of productivity is headed.

As you can gather from these comments, FiftyThree’s success is dependent upon Apple’s iPad and iPhone success.  It likely significantly relies on the iPad, and therefore the App Store, for sales of its Paper app.  The Pencil is for use with the Paper app, so the sales of the Pencil are entwined with the Paper.

I guess where lightning strikes twice, you should THINK to buy a lottery ticket.  Seriously, how can a company get copied twice at such a high level by two of the most highly valued companies in the world?

I’d love to read what people think about Apple’s recent branding – the  iPod, iPhone, and iPad to now the Apple Watch, Apple TV, Apple Music, and Apple Pencil.  Recognizing that one of the keys to Apple’s success is minimalist, user-friendly design, and their branding strategy pairs well with that, do you think they need to get more creative with their product names?

I’m also curious which design you like better – the Apple Pencil or the Pencil by FiftyThree?  Personally, I like the carpenter or utilitarian pencil appearance of the Pencil by FiftyThree over the more traditional Apple Pencil.

  • Wes Anderson

    I was also very surprised to see Apple use the PENCIL word mark, particularly as FiftyThree’s app and stylus are so well-known. I have one and I agree, it’s much more “organic” than Apple’s stylus. I think one reason behind it was that FiftyThree got an office action requiring a disclaimer of “PENCIL,” and rather than fighting it they simply responded with the disclaimer.

    Apple must be savvy enough to have noticed this and thereby assume that APPLE PENCIL is available. I wouldn’t be surprised to see an application or two spring up next time TESS is updated.

  • Martha Engel

    Thanks for the comment, Wes! Given the unlikely ability for Apple to protect PENCIL on its own, I’d certainly like them to venture a little further with their branding.