On Monday, Apple Inc. filed a notice of opposition before the Trademark Trial and Appeal Board regarding applicant Georgette LLC’s application for an apple-shaped mark covering “purified drinking water; bottled water” in Class 32, asserting that it will be harmed if the applicant’s mark is registered because of dilution and the likelihood of consumer confusion, mistake, or deception.
Apple contended that since 1977 it has “extensively promoted, marketed, advertised, distributed, and sold goods or services in connection with a family of trademarks consisting, in whole or in part, of the word APPLE or its graphic equivalent, the Apple Logo (shown below) depicting a stylized apple with a detached leaf (collectively, the ‘Apple Marks’).”
Apple added that its Apple Marks are famous, distinctive and have garnered a high level of consumer recognition and goodwill.
Apple asserted that in addition to selling its technology products and related accessories, it also sells “merchandise such as t-shirts, mugs, notebooks, pens, thermal bottles, and water bottles, among many other products, bearing the Apple Logo to consumers” online and in-person. Therefore, Apple has purportedly “developed extensive common law rights in such goods and services.” Apple also pointed to registrations for Apple Marks, including with the apple graphic covering housewares, mugs, drinking glasses, vacuum bottles, among other things. Examples of these products are shown below.
The applicant also seeks to register an apple-shaped graphic for “purified drinking water; bottled water,” as shown below. However, Apple averred that the applicant’s mark is likely to cause dilution and consumer confusion, mistake, or deception.
In particular, Apple contended that the applicant’s mark is likely to dilute the distinctive quality of its famous Apple Marks “by eroding customers’ exclusive identification of the Apple Marks with Apple, and by otherwise lessening the capacity of the Apple Marks to identify and distinguish the goods and services of Apple.” Apple added that this is likely to dilute by blurring Apple’s famous Apple Marks. Apple also reiterated its prior rights in the Apple Marks.
Additionally, Apple proffered that because the applicant’s goods and mark “so closely resembles the Apple Marks” they will likely cause consumer confusion, mistake, or deception “as to the origin or source of Applicant’s Goods or the affiliation between Applicant and Apple.” Specifically, Apple alleged that consumers are likely to associate the applicant’s mark with Apple. According to Apple, the applicant’s mark “features a stylized apple design with a right-angled, detached leaf, rendering it visually similar to Apple’s famous Apple Marks.” Apple provided a side-by-side visual comparison and overlay in the opposition:
Apple contended that “the Apple Marks are so famous and instantly recognizable that the similarities in Applicant’s Mark will overshadow any minor differences and cause the ordinary consumer to (falsely) believe that Applicant is related to, affiliated with or endorsed by Apple.” Apple also highlighted the similarity of some of its offered products like water bottles to those offered by the applicant as another reason for a likelihood of confusion.
Apple seeks for its opposition to be sustained and for the applicant’s registration to be denied. Apple is represented by Kilpatrick Townsend & Stockton LLP.
