Apple Inc. filed a lawsuit against Cang Gao on Monday, in an attempt to overturn his thus-far successful efforts to stop Apple’s proposed “Live Photos” mark from registration. The Eastern District of Virginia complaint explained that the mark has been registered in 120 jurisdictions, including every English-speaking one, except Canada and the United States due to Gao’s oppositions.
Apple stated that the mark it wishes to register is used “in connection with software that allows consumers to record and capture a still image along with a snippet of a video (with sound) made one and a half seconds before and after the still image photograph.” This allows consumers to create a moving picture or image. The company claims that the term “live photos” is neither generally applicable nor descriptive, instead it connotes the “celebrated product feature” introduced nearly six years ago.
Apple reportedly applied to register the mark in January 2016 with the U.S. Patent and Trademark Office (PTO). Cao opposed on the basis that the mark is “generic and/or descriptive and that Cao would be ‘damaged’ by its registration.” This June, the Trademark Trial and Appeal Board (TTAB) sustained Cao’s opposition after finding that the term was “generic, descriptive, and had not acquired distinctiveness.”
In this week’s complaint, Apple criticized the TTAB’s decision, saying that it was based on flawed evidence and ignorant of the fact that Cao bore the burden of proof. The tech giant argued that the term is a descriptive trademark, Apple has acquired “secondary meaning,” in the mark, and that an “interloper like Cao” lacks standing to challenge Apple’s application as he has neither ever used the mark at issue nor offers a competing product.
On policy grounds, Apple claimed that “consumers could end up being confused as to the source, sponsorship or affiliation of such a non-Apple product using the name ‘Live Photos’ and mistakenly believe such a product is offered or licensed by or associated with Apple, when it is not.” Apple described this scenario as the type of consumer deception issue the trademark law aims to avoid.
Thus, Apple asked the court to issue an order reversing the TTAB’s decision and requiring the PTO to issue a certificate of registration for the mark. The plaintiff also requested an award of attorneys’ fees and costs, among other things.
Apple is represented by Blankingship & Keith PC and Kirkland & Ellis LLP.
