-Wes Anderson, Attorney
No company’s branding strategy is studied more meticulously than Apple, Inc.’s — and of late, Apple has taken a turn for the descriptive with its various operating systems.
Every company wants its brands to be distinctive — and the arbitrary APPLE mark is among the most well-known. But its new operating system naming strategy has relied on descriptive (if not generic) wording.
From a naming standpoint, everything started out well with the Macintosh Operating System — or Mac OS (first coined in 1996) for its various desktop and portable computers, Macintosh and “Mac” already being famous trademarks. Then, when iPhone OS became “iOS” in 2010, it took the “iDevice” naming convention from the iMac, iBook, iPod, iPhone, and iPad and brought it to software. But Apple didn’t use this name without conflict — in fact, it licenses the iOS trademark from Cisco.
From there, Apple has continued to enter new markets — including smartwatches (with the Apple Watch) and set-top streaming devices (with the Apple TV). With them, new operating systems followed, this time named simply “watchOS” and “tvOS.”
Perhaps these descriptive names were intended to ward off conflict with any other Silicon Valley brand owners, but Apple has put a different spin on this in public. Phil Schiller, senior vice president of worldwide marketing at Apple, said the following in a Q&A last year (bolding added for emphasis):
Gruber: watchOS, with a lower-case “w”. Are you trying to kill me?
Schiller: [laughs] It’s, um… I think it works really well. I think it’s nice, it’s ownable, it’s special…
I think, you’ll see. Give us time, we’ve been through many fun naming things. This is an easy one. There have been many fun naming things through the years — some very emotional, some very easy — and most of the time, when all’s said and done, you look back years later, people say “Yeah, you guys were right, it all made sense together.”
So I think we’re doing the right thing.
It’s not clear whether Schiller is referring to the use of a lower-case first letter or the entire mark, but the question still stands: is “watchOS” truly an ownable mark? No, or at least not yet.
Apple has a Supplemental Register registration for WATCHOS, which is the “junior” register for marks that are capable of trademark significance, but are merely descriptive at the time of registration. Apple’s also filed two pending applications for the same mark on the Principal Register (in classes 9 and 42), but each just received office actions earlier this week refusing registration on grounds of mere descriptiveness.
It’s clear WATCH OS is descriptive wording — it’s arguably even generic in the context of smartwatch operating systems. To overcome these refusals, Apple would either need to settle for the Supplemental Register again or prove to the Trademark Office that, just a year since its first use, “WATCHOS” has acquired secondary meaning as a brand name to the public.
Apple, in short, has yet to really prove that watchOS is truly “ownable.” We’ll see if Apple is able to put its enormous weight and brand equity behind WATCHOS and obtain Principal Register registrations. For the rest of us, it’s important to remember what’s ownable is not necessarily available, and what’s available is not necessarily ownable.