J.T. Colby & Company, Inc. et al v. Apple, Inc.

Filing 135

DECLARATION of Claudia T. Bogdanos in Opposition re: 120 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Susan Schwartz McDonald.. Document filed by Ipicturebooks LLC, J.Boyston & Company, J.T. Colby & Company, Inc., Publishers LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I Part 1, # 10 Exhibit I Part 2, # 11 Exhibit J, # 12 Exhibit K, # 13 Exhibit L, # 14 Exhibit M, # 15 Exhibit N, # 16 Exhibit O, # 17 Exhibit P, # 18 Exhibit Q, # 19 Exhibit R)(Chattoraj, Partha)

EXHIBIT I

PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

The table below presents the data as entered.
Input Field

Entered

SERIAL NUMBER

85008412

LAW OFFICE
ASSIGNED

LAW OFFICE 106

MARK SECTION (no change)
ARGUMENT(S)
Section 2(e)(1) refusal
The Examining Attorney has refused registration under Section 2(e)(1) of the Trademark Act,
taking the position that IBOOKS is merely descriptive for the goods covered by the application.
Applicant Apple Inc. (“Apple”) has amended its application to add a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act.
Prior registrations as basis for acquired distinctiveness under Section 2(f)
Apple owns registrations on the Principal Register of IBOOKS and IBOOK for the following
goods:
IBOOKS (RN 2,446,634), registered in 2001, for “computer software used to support
and create interactive, user-modifiable electronic books.”

IBOOK (RN 2,470,147), registered in 2001, for “computer hardware.”

See Exhibit A. Both marks were registered as inherently distinctive, without a claim of
acquired distinctiveness. Even if the Examining Attorney takes the position that these
registrations do not support a finding that the Apple IBOOK mark in this application is
inherently distinctive, they do constitute a basis for acquired distinctiveness under Section 2(f).
The IBOOKS mark in this application clearly meets the test for acquired distinctiveness under
Trademark Rule 2.41(b), 37 C.F.R. §2.41(b). The Office may accept, as prima facie evidence
of acquired distinctiveness, the applicant’s ownership of one or more prior registrations of the
same mark on the Principal Register, and IBOOKS is identical to the IBOOKS mark in Apple’s
RN 2,446,634, and is the plural of Apple’s IBOOK mark shown in RN 2,470,147.
These registrations also meet the test under TMEP 1212.04(c), which provides as follows:

“The examining attorney must determine whether the goods or services named in the
application are sufficiently similar to the goods or services named in the prior
registration(s). If the relatedness is self-evident, the examining attorney can generally
accept the §2(f) claim without additional evidence. This is most likely to occur with
ordinary consumer goods or services where the nature of the goods or services is
commonly known and readily apparent.”
The relatedness between the pending application and Apple’s existing registrations of IBOOK
and IBOOKS is indeed self-evident. Both registrations cover “ordinary consumer goods” that
are identical or closely related to the consumer goods in the present application. Specifically,
the existing registrations cover “computer hardware” and “computer software used to support
and create interactive, user-modifiable electronic books.” Apple’s Amendment to Allege Use
shows that it uses the IBOOKS mark on computer software with capabilities that precisely
match the registered goods in RN 2,446,634 (“software used to support and create interactive,
user-modifiable electronic books”) and that software is accessed via the goods described in
RN 2,470,147 -- computer hardware. Thus, both existing registrations clearly support a finding
of acquired distinctiveness under Section 2(f) for the goods covered by this application.
Additional evidence of acquired distinctiveness under Section 2(f)
Given that Apple’s existing registrations of IBOOKS and IBOOK are identical or near-identical
to the mark in this application, and that the goods are identical or closely related, no additional
evidence should be required to establish that IBOOKS has acquired distinctiveness. However,
additional evidence of acquired distinctiveness is ample.
As Apple indicated on February 22, 2012, in its response to a suspension inquiry, IBOOKS is a
member of Apple’s family of famous marks that begin with the prefix “i”, and a direct
descendant of one of the original marks in this family, the IBOOK mark. Apple first developed
this family of marks in 1998, with the launch of its groundbreaking IMAC desktop computer,
followed in 1999 by the IBOOK laptop computer and IMOVIE software in 1999. This family
significantly expanded in 2001 with the launch of the IPOD digital media player and the
ITUNES digital music management software. Apple also introduced its IDVD software in 2001,
and its ICAL and IPHOTO software products came to market in 2002. The ILIFE, SIGHT and
ICHAT software products followed in 2003. In 2003, Apple also launched the iTunes Store,
originally a service that allowed customers to find, purchase and download third-party digital
music. The service has been expanded to include audio books, music videos, short films,
television shows, movies, podcasts, games, and other applications. In 2007, Apple introduced
its now-famous IPHONE digital mobile device. In 2010, Apple introduced another landmark
product under an “i”-formative mark, the IPAD digital electronic device, and introduced its
ICLOUD cloud computing software and services in 2011. Apple now holds more than 100
active federal applications and registrations of marks that begin with the prefix “i.”
The IBOOK laptop, the IPOD media player, the ITUNES software and ITUNES STORE
service, the IPHONE digital mobile device, and the IPAD tablet device have all been
particularly influential in cementing the public perception that the “i”-prefix brand is
synonymous with Apple. The remarkable success of each of these products, and the fact that
Apple’s IBOOKS software operates in the same Apple product environment as these devices,
guarantee that Apple’s IBOOKS is immediately perceived as part of the same family of marks.
As documented in Apple’s response to the suspension inquiry on this application, and as

shown in the most recent figures in Exhibit B:
The groundbreaking iBook laptop was the first mainstream computer with integrated
wireless networking and, in tandem with the iMac desktop, clearly established Apple’s
identification with “i”-prefix branding.
Apple has sold more than 350 million iPod devices since the product’s introduction.
Apple owns nearly two dozen active federal trademark registrations and applications that
incorporate the IPOD mark.
Through its iTunes Store, Apple has sold over 20 billion songs. In 2008, the iTunes
Store surpassed Wal-Mart to become the largest music retailer in the United States.
iTunes is now the world’s most popular online music, TV and movie retailer, featuring a
catalog of over 26 million songs, over 190,000 TV episodes and over 45,000 movies.
Apple owns approximately 20 active federal trademark registrations and applications that
incorporate the ITUNES mark.
The announcement of the iPhone generated unprecedented publicity in 2007, and Apple
sold 1 million units of the device in less than 3 months. Subsequent versions of the
iPhone fared even better—the iPhone 3G (released July 2008) sold 1 million units in the
first weekend it was on sale; the first-weekend sales of iPhone 4 (released June 2010)
were more than 50% higher, reaching 1.7 million units; and pre-orders of the iPhone 4S
(released October 2011) topped 1 million in the first 24 hours. In September 2012, Apple
launched the iPhone 5, and had sold 5 million units of the device just three days after the
product’s launch. Fortune magazine has marveled that the iPhone is “one of the most
successful products in business history.” As of October 2012, Apple had sold more than
200 million iPhone devices worldwide. Apple owns nearly two dozen active federal
trademark registrations and applications for marks that incorporate IPHONE mark.
Apple sold 300,000 units of the iPad tablet device in the first day, and had sold 1 million
units before the end of the first month, 2 million units before the end of the second
month, and 3 million in the first 90 days. As of September 2012, total sales had topped
80 million. Apple and its affiliates own 11 active federal trademark registrations and
applications for marks that incorporate the IPAD mark.
In addition, last year Apple launched two new “i”-prefix marks to great success and consumer
acceptance:
Apple launched its ICLOUD cloud computing service in October 2011. As of July
2012—a mere nine months after the service was launched—over 150 million
consumers use the software and services. See Exhibit C. Apple owns a dozen active
federal trademark registrations and applications for marks that incorporate the ICLOUD
mark. See Exhibit D.
· Apple also launched its IMESSAGE software and service in October 2011. By June
of this year, over 140 million people were using the IMESSAGE software and service,
and had sent over 150 billion messages through the IMESSAGE software, at a rate of
approximately 1 billion messages a day. See Exhibit E.

The Examining Attorney has cited a few web pages on which “ibook(s)” is purportedly used
as a generic abbreviation for “Internet books.” However, a handful of web pages are not
sufficient to demonstrate how the average consumer perceives a term. Most of these pages
are personal blogs which are unlikely to have any appreciable readership, and several clearly
date back two years or longer. There is no evidence that any of these pages represent
current-day usage, that they are all U.S.-based, or that they have any measurable readership
that would reflect or impact consumer perception of the term.
In fact, the authoritative sources show that “ebook” is a generic term for electronic books —
including Dictionary.com, The Online Free Dictionary, the Collins American English Dictionary,
the Longman Dictionary of Contemporary English, the Merriam-Webster dictionary, the Oxford
Advanced Learner’s Dictionary , the Macmillan Dictionary, the PC Magazine Encyclopedia,
and NetLingo. None of these sources includes an entry for IBOOK except for references to
Apple’s brand. See Exhibit F.
In summary, even if one accepts the Examining Attorney’s premise that the term IBOOKS
could be descriptive with respect to the goods covered by this application, Apple’s mark has
unquestionably achieved distinctiveness. Therefore, Apple respectfully requests that the
Examining Attorney withdraw the Section 2(e)(1) refusal and approve the application for
publication.
Amendment
Apple amends its application to delete the services in Classes 35 and 42.
EVIDENCE SECTION
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GOODS AND/OR SERVICES SECTION (009)(no change)
GOODS AND/OR SERVICES SECTION (035)(class deleted)
INTERNATIONAL
CLASS

035

DESCRIPTION

Retail store services featuring electronic publications provided via the Internet and other
communications networks; retail store services in the field of books, magazines, periodicals, journals
and other publications on a wide range of topics of general interest, provided via the Internet and other
communications networks; retail store services featuring electronic publications for use on handheld
mobile digital electronic devices and other consumer electronics
FILING BASIS

Section 1(a)

FIRST USE
ANYWHERE DATE

At least as early as 01/27/2010

FIRST USE IN
COMMERCE DATE

At least as early as 04/03/2010

GOODS AND/OR SERVICES SECTION (042)(class deleted)
INTERNATIONAL
CLASS

042

DESCRIPTION

Providing an online portal featuring temporary online use of online non-downloadable software to allow
internet users to preview, download, and read electronic publications
FILING BASIS

Section 1(a)

FIRST USE
ANYWHERE DATE

At least as early as 01/27/2010

FIRST USE IN
COMMERCE DATE

At least as early as 04/03/2010

ADDITIONAL STATEMENTS SECTION

SECTION 2(f)

The mark has become distinctive of the goods/services as evidenced by the
ownership on the Principal Register for the same mark for related goods or
services of U.S. Registration No(s). 2446634 and 2470147.

SIGNATURE SECTION
RESPONSE SIGNATURE

/Lisa G. Widup/

SIGNATORY'S NAME

Lisa G. Widup

SIGNATORY'S
POSITION

Attorney of record, California bar member

SIGNATORY'S PHONE
NUMBER

Senior Intellectual Property Counsel

DATE SIGNED

10/09/2012

AUTHORIZED
SIGNATORY

YES

FILING INFORMATION SECTION
SUBMIT DATE

Tue Oct 09 21:13:02 EDT 2012

TEAS STAMP

USPTO/ROA-204.155.226.3-2
0121009211302912759-85008
412-490b124210b5b4d81757b
ab13f8409f5-N/A-N/A-20121
009202219902433

PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action
To the Commissioner for Trademarks:
Application serial no. 85008412 has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Section 2(e)(1) refusal
The Examining Attorney has refused registration under Section 2(e)(1) of the Trademark Act,
taking the position that IBOOKS is merely descriptive for the goods covered by the application.
Applicant Apple Inc. (“Apple”) has amended its application to add a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act.
Prior registrations as basis for acquired distinctiveness under Section 2(f)

Apple owns registrations on the Principal Register of IBOOKS and IBOOK for the following
goods:
IBOOKS (RN 2,446,634), registered in 2001, for “computer software used to support and
create interactive, user-modifiable electronic books.”

IBOOK (RN 2,470,147), registered in 2001, for “computer hardware.”

See Exhibit A. Both marks were registered as inherently distinctive, without a claim of acquired
distinctiveness. Even if the Examining Attorney takes the position that these registrations do not
support a finding that the Apple IBOOK mark in this application is inherently distinctive, they do
constitute a basis for acquired distinctiveness under Section 2(f).
The IBOOKS mark in this application clearly meets the test for acquired distinctiveness under
Trademark Rule 2.41(b), 37 C.F.R. §2.41(b). The Office may accept, as prima facie evidence of
acquired distinctiveness, the applicant’s ownership of one or more prior registrations of the
same mark on the Principal Register, and IBOOKS is identical to the IBOOKS mark in Apple’s
RN 2,446,634, and is the plural of Apple’s IBOOK mark shown in RN 2,470,147.
These registrations also meet the test under TMEP 1212.04(c), which provides as follows:
“The examining attorney must determine whether the goods or services named in the
application are sufficiently similar to the goods or services named in the prior
registration(s). If the relatedness is self-evident, the examining attorney can generally
accept the §2(f) claim without additional evidence. This is most likely to occur with
ordinary consumer goods or services where the nature of the goods or services is
commonly known and readily apparent.”
The relatedness between the pending application and Apple’s existing registrations of IBOOK
and IBOOKS is indeed self-evident. Both registrations cover “ordinary consumer goods” that
are identical or closely related to the consumer goods in the present application. Specifically,
the existing registrations cover “computer hardware” and “computer software used to support
and create interactive, user-modifiable electronic books.” Apple’s Amendment to Allege Use
shows that it uses the IBOOKS mark on computer software with capabilities that precisely match
the registered goods in RN 2,446,634 (“software used to support and create interactive, usermodifiable electronic books”) and that software is accessed via the goods described in RN
2,470,147 -- computer hardware. Thus, both existing registrations clearly support a finding of
acquired distinctiveness under Section 2(f) for the goods covered by this application.
Additional evidence of acquired distinctiveness under Section 2(f)
Given that Apple’s existing registrations of IBOOKS and IBOOK are identical or near-identical to
the mark in this application, and that the goods are identical or closely related, no additional
evidence should be required to establish that IBOOKS has acquired distinctiveness. However,
additional evidence of acquired distinctiveness is ample.
As Apple indicated on February 22, 2012, in its response to a suspension inquiry, IBOOKS is a

member of Apple’s family of famous marks that begin with the prefix “i”, and a direct
descendant of one of the original marks in this family, the IBOOK mark. Apple first developed
this family of marks in 1998, with the launch of its groundbreaking IMAC desktop computer,
followed in 1999 by the IBOOK laptop computer and IMOVIE software in 1999. This family
significantly expanded in 2001 with the launch of the IPOD digital media player and the ITUNES
digital music management software. Apple also introduced its IDVD software in 2001, and its
ICAL and IPHOTO software products came to market in 2002. The ILIFE, SIGHT and ICHAT
software products followed in 2003. In 2003, Apple also launched the iTunes Store, originally a
service that allowed customers to find, purchase and download third-party digital music. The
service has been expanded to include audio books, music videos, short films, television shows,
movies, podcasts, games, and other applications. In 2007, Apple introduced its now-famous
IPHONE digital mobile device. In 2010, Apple introduced another landmark product under an
“i”-formative mark, the IPAD digital electronic device, and introduced its ICLOUD cloud
computing software and services in 2011. Apple now holds more than 100 active federal
applications and registrations of marks that begin with the prefix “i.”
The IBOOK laptop, the IPOD media player, the ITUNES software and ITUNES STORE service,
the IPHONE digital mobile device, and the IPAD tablet device have all been particularly
influential in cementing the public perception that the “i”-prefix brand is synonymous with Apple.
The remarkable success of each of these products, and the fact that Apple’s IBOOKS
software operates in the same Apple product environment as these devices, guarantee that
Apple’s IBOOKS is immediately perceived as part of the same family of marks. As documented
in Apple’s response to the suspension inquiry on this application, and as shown in the most
recent figures in Exhibit B:
The groundbreaking iBook laptop was the first mainstream computer with integrated
wireless networking and, in tandem with the iMac desktop, clearly established Apple’s
identification with “i”-prefix branding.
Apple has sold more than 350 million iPod devices since the product’s introduction. Apple
owns nearly two dozen active federal trademark registrations and applications that
incorporate the IPOD mark.
Through its iTunes Store, Apple has sold over 20 billion songs. In 2008, the iTunes Store
surpassed Wal-Mart to become the largest music retailer in the United States. iTunes is
now the world’s most popular online music, TV and movie retailer, featuring a catalog of
over 26 million songs, over 190,000 TV episodes and over 45,000 movies. Apple owns
approximately 20 active federal trademark registrations and applications that incorporate
the ITUNES mark.
The announcement of the iPhone generated unprecedented publicity in 2007, and Apple
sold 1 million units of the device in less than 3 months. Subsequent versions of the iPhone
fared even better—the iPhone 3G (released July 2008) sold 1 million units in the first
weekend it was on sale; the first-weekend sales of iPhone 4 (released June 2010) were
more than 50% higher, reaching 1.7 million units; and pre-orders of the iPhone 4S
(released October 2011) topped 1 million in the first 24 hours. In September 2012, Apple
launched the iPhone 5, and had sold 5 million units of the device just three days after the
product’s launch. Fortune magazine has marveled that the iPhone is “one of the most
successful products in business history.” As of October 2012, Apple had sold more than

200 million iPhone devices worldwide. Apple owns nearly two dozen active federal
trademark registrations and applications for marks that incorporate IPHONE mark.
Apple sold 300,000 units of the iPad tablet device in the first day, and had sold 1 million
units before the end of the first month, 2 million units before the end of the second month,
and 3 million in the first 90 days. As of September 2012, total sales had topped 80 million.
Apple and its affiliates own 11 active federal trademark registrations and applications for
marks that incorporate the IPAD mark.
In addition, last year Apple launched two new “i”-prefix marks to great success and consumer
acceptance:
Apple launched its ICLOUD cloud computing service in October 2011. As of July 2012—a
mere nine months after the service was launched—over 150 million consumers use the
software and services. See Exhibit C. Apple owns a dozen active federal trademark
registrations and applications for marks that incorporate the ICLOUD mark. See Exhibit D.
· Apple also launched its IMESSAGE software and service in October 2011. By June of
this year, over 140 million people were using the IMESSAGE software and service, and
had sent over 150 billion messages through the IMESSAGE software, at a rate of
approximately 1 billion messages a day. See Exhibit E.
The Examining Attorney has cited a few web pages on which “ibook(s)” is purportedly used as
a generic abbreviation for “Internet books.” However, a handful of web pages are not sufficient
to demonstrate how the average consumer perceives a term. Most of these pages are personal
blogs which are unlikely to have any appreciable readership, and several clearly date back two
years or longer. There is no evidence that any of these pages represent current-day usage, that
they are all U.S.-based, or that they have any measurable readership that would reflect or
impact consumer perception of the term.
In fact, the authoritative sources show that “ebook” is a generic term for electronic books —
including Dictionary.com, The Online Free Dictionary, the Collins American English Dictionary,
the Longman Dictionary of Contemporary English, the Merriam-Webster dictionary, the Oxford
Advanced Learner’s Dictionary , the Macmillan Dictionary, the PC Magazine Encyclopedia, and
NetLingo. None of these sources includes an entry for IBOOK except for references to Apple’s
brand. See Exhibit F.
In summary, even if one accepts the Examining Attorney’s premise that the term IBOOKS could
be descriptive with respect to the goods covered by this application, Apple’s mark has
unquestionably achieved distinctiveness. Therefore, Apple respectfully requests that the
Examining Attorney withdraw the Section 2(e)(1) refusal and approve the application for
publication.
Amendment
Apple amends its application to delete the services in Classes 35 and 42.

EVIDENCE

Original PDF file:
evi_2041552263-202219902_._IBOOKS___Exhibits_A_-_D.pdf
Converted PDF file(s) (46 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
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Evidence-12
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Evidence-30
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Evidence-32
Evidence-33
Evidence-34
Evidence-35
Evidence-36
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Evidence-39
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Evidence-41
Evidence-42
Evidence-43
Evidence-44

Evidence-45
Evidence-46
Original PDF file:
evi_2041552263-202219902_._IBOOKS___Exhibits_E_and_F.pdf
Converted PDF file(s) (31 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
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Evidence-7
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Evidence-30
Evidence-31
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Retail store services featuring electronic publications provided via the Internet and other
communications networks; retail store services in the field of books, magazines, periodicals, journals and
other publications on a wide range of topics of general interest, provided via the Internet and other
communications networks; retail store services featuring electronic publications for use on handheld
mobile digital electronic devices and other consumer electronics
Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Providing an online portal featuring temporary online use of online non-downloadable
software to allow internet users to preview, download, and read electronic publications

ADDITIONAL STATEMENTS
Section 2(f), based on Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal
Register for the same mark for related goods or services of U.S. Registration No(s). 2446634 and
2470147.
SIGNATURE(S)
Response Signature
Signature: /Lisa G. Widup/ Date: 10/09/2012
Signatory's Name: Lisa G. Widup
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: Senior Intellectual Property Counsel
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
attorney/agent not currently associated with his/her company/firm previously represented the applicant in
this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
him/her as an associate attorney in this matter.
Serial Number: 85008412
Internet Transmission Date: Tue Oct 09 21:13:02 EDT 2012
TEAS Stamp: USPTO/ROA-204.155.226.3-2012100921130291
2759-85008412-490b124210b5b4d81757bab13f
8409f5-N/A-N/A-20121009202219902433