Magistrate Recommends Entry of Default Judgment in Apple ‘Live Photos’ Trademark Tussle

A dispute over the term ‘Live Photos,’ which Apple Inc. sought to register in connection with its moving picture or image feature, has edged closer to resolution. In an opinion issued last Friday, an Eastern District of Virginia magistrate judge agreed that Apple made several showings, entitling it to both registration of the mark and a declaratory judgment corroborating its validity and enforceability.

Apple filed the case in September, arguing that a Canadian man, Cang Gao, was baselessly attempting to bar it from registering the Live Photos mark. The complaint explained that Gao opposed registration based on his assertion that the mark is generic and description and its registration would harm him in an unspecified manner. The Trademark Trial and Appeal Board (TTAB) sustained Gao’s opposition in June 2021, concluding that the term was “generic, descriptive, and had not acquired distinctiveness.”

In last week’s opinion, Magistrate Judge John F. Anderson reported the factual timeline of the case, including the defendant’s failure to respond to Apple’s pleading as required. Apple moved for an entry of default judgment which the clerk of the court entered in December. The 19-page opinion considered whether Apple had met the other default judgment requirements.

In particular, Judge Anderson determined that the mark “is suggestive or, alternatively, that it is descriptive but that it has acquired secondary meaning.” The opinion explained how Apple pointed to the fact that nearly two dozen dictionaries and thesauruses have no definitions of the phrase ‘live photos,’ and the few that define the terms do so in reference to Apple’s Live Photos feature.

“Although not controlling, dictionary definitions are a useful resource for courts to consider in a genericness analysis when evaluating evidence of common usage,” Judge Anderson wrote. In addition, the ruling said that registering the mark would not impose a burden on competitors or consumers, as none offer competing features bearing the same name.

In finding the mark non-generic, the court agreed with Apple that the defendant had not proffered any evidence of its genericness and found the plaintiff’s supplementary evidence persuasive. For example, the court pointed to several studies concluding that “consumers do not view ‘live photos’ as a generic term for photo and video software,” but they do associate the term with Apple’s brand “due to plaintiff’s unique and consistent marketing approach.”

Objections to the report and recommendation  are due January 28. Apple is represented by Blankingship & Keith PC and Kirkland & Ellis LLP.