Apple's music icon is denied registration

In the non-precedential opinion In re Apple Inc (Serial No 85019762, September 18 2012), the Trademark Trial and Appeal Board (TTAB) has affirmed the US Patent and Trademark Office’s refusal to register Apple Inc’s well-known music note icon, finding it confusingly similar to a registered mark currently owned by MySpace. The marks are:                       

Apple’s mark                                 MySpace’s mark

In weighing the du Pont likelihood-of-confusion factors, the TTAB found most probative:

• the similarities in the marks’ appearance;
• the similarities in the products and services described in the application and registration; and
• the similarity in the trade channels and classes of consumers for the products and services associated with the respective marks.

Regarding the visual similarities, the TTAB emphasised that both marks are essentially “a double music note in an orange rectangle”. The TTAB acknowledged that specific differences between the icons were apparent on side-by-side comparison (eg, rounded corners v sharp corners, ascending notes v descending notes, different shades of orange). However, such differences were deemed insignificant because consumers do not view the marks together. Instead, the TTAB focused on the consumers’ general impressions of the mark, which the TTAB found would be the same.

Additionally, Apple contended that MySpace’s mark was not entitled to a high degree of protection, based on numerous (eight) third-party registrations of music note marks. The TTAB emphasised that the third-party registrations for music note marks were irrelevant without proof that those marks were actually in use. Because the “record include[d] no evidence about the extent of [third-party] uses,... [t]he probative value of this evidence was minimal”. Further, the TTAB found that Apple’s mark and MySpace’s mark were closer to each other than the marks in the third-party registrations submitted by Apple.

The TTAB also focused on the similarity of products and services. Apple sought registration for its music note icon as used for, among other things, computer software related to playing pre-recorded audio content on handheld digital devices. MySpace’s music note icon is registered for, among other things, computer software for playing and sharing music playlists and MP3s. The TTAB thus determined that the marks related to similar services - “controlling digital music” - which supported its finding of a likelihood of confusion between the respective marks.

The TTAB also noted the similarity between likely-to-continue trade channels and classes of consumers for the two respective marks. The same classes of consumers would be exposed to the marks at issue, which was likely to give rise to the mistaken belief that the goods and/or services emanate from the same source. Differences in the manner in which the goods and services are sold (internet v handheld electronic device) were deemed immaterial, because the same consumers - music listeners - would encounter both marks.

Apple argued that any confusion would be minimised because of the high degree of care exercised by consumers of the respective products. The TTAB rejected those contentions as unsupported arguments by counsel. Apple also argued that it was not aware of any instances of actual confusion between the marks, notwithstanding over four years of contemporaneous use. That “evidence” carried little weight, however, especially in an ex parte context. Further, without probative evidence of the extent of use of the two marks, the TTAB could not determine whether there were any meaningful opportunities for actual confusion. Accordingly, this du Pont factor was considered neutral.

Despite massive use of its music icon, Apple’s application was denied. For Apple, the notes were sour; but the TTAB decision was music to MySpace’s aging ears. Apple still has an opportunity to appeal, so music (icon) lovers may have to wait and see if this is Apple’s last symphony.

Steve Schaetzel and Alexis Simpson, McKeon Meunier Carlin & Curfman LLC, Atlanta