Wednesday, April 11, 2012

Apple owns "pod"

[Note: Blogger ate this post when I first tried to publish it, so I am redoing it. You might notice, however, that my heart is no longer in it.]

As I happen to know from personal experience, Apple aggressively defends its trademark rights. One example is its opposition to a startup company's attempt to register the mark "Video Pod" to cover a small video projector.

The company, Sector Labs, first filed for the mark all the way back in 2003. Eventually the USPTO allowed the mark and published it for opposition. Apple opposed, claiming that: (1) the mark is merely descriptive, and therefore not eligible for registration on the principal register; and (2) the mark is confusingly similar to its "iPod" marks.

After years of litigation at the Trademark Trial & Appeal Board (TTAB) the case finally went to trial earlier this year. On March 19, the TTAB issued its decision, and it is a complete victory for Apple.

The descriptiveness issue was a slam dunk for Apple. "Video" is clearly descriptive, so the question was whether "pod" added anything suggestive. But Sector Labs had admitted in discovery responses and in depositions that the word "pod" was meant to convey the projector's pod-like shape and appearance. Only after Apple began taunting Sector Labs with these admissions did they change their tune and claim to have been "inspired by the parallels between [the inventor's] dream of a family of video products and 'pods' of whales, or even a scene involving an 'escape pod' from the movie '2001: A Space Odyssey.'" The TTAB was not amused: "We find these tardy explanations to be most unconvincing. "

But the victory on the likelihood of confusion issue is actually much more important for Apple. The Board found that "iPod" is a famous mark, and therefore entitled to broad trademark protection. Apple can now use this precedential decision to hammer anyone who tries to use what Apple calls a "pod formative mark."

Sector Labs can appeal the decision to federal court, but its prospects would be grim. It's time to just give in and admit it—Apple owns "pod."

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