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

Filing 159

DECLARATION of Bonnie L. Jarrett in Support re: 104 MOTION for Summary Judgment.. Document filed by Apple Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3 (REDACTED), # 4 Exhibit 4 (REDACTED), # 5 Tab - Borden Dep, # 6 Tab - Colby 30(b)(6) Dep (REDACTED), # 7 Tab - Colby Dep, # 8 Tab - Freese Dep, # 9 Tab - Goldhor Dep, # 10 Tab - Gundersen Dep, # 11 Tab - Kvamme Dep)(Cendali, Dale)

Exhibit 3
REDACTED

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

J.T. COLBY & COMPANY, INC. d/b/a
BRICK TOWER PRESS, J. BOYLESTON &
COMPANY, PUBLISHERS LLC and
IPICTUREBOOKS LLC,
Plaintiffs,
-againstAPPLE, INC.,
Defendants.

Case No. 11-cv-4060 (DLC)
Expert Report of Robert T. Scherer

other type of “i” book? It is not immediately clear as to what the mark means. Because of this
lack of clarity, imagination, thought and perception is required in order to establish any direct
descriptive reference to the goods. This need for “mental gymnastics” means that the mark is not
merely descriptive, but suggestive and inherently distinctive.
The PTO file history of plaintiffs’ predecessor’s application to register the mark iBooks,
which was filed on August 27, 1999 (App. No. 75/786,491, see Section 12 below) provides
support for the conclusion that iBooks is not descriptive. In that application, the Trademark
Examiner refused registration on the grounds, among others, that the mark iBooks was
misdescriptive (emphasis added). If the Trademark Examiner believed the mark to be
misdescriptive, which it is not, it cannot possibly be descriptive. 4
Even if plaintiffs’ iBooks mark were to be classified as merely descriptive -- which it is
not -- it has acquired secondary meaning based upon thirteen years of substantially exclusive and
continuous use. Between 1999 when the mark was first used and June, 2002, plaintiff had
iBooks sales of more than $5,000,000, and spent more than $250,000 in advertising and
promoting the iBooks product. (See Office Action Response to the above-noted PTO refusal of
the iBooks application). Total iBooks sales to distributors for the years 2003 – 2011 exceeded
. See Dep. of John T. Colby, dated July 18, 2012, at 161 – 169; 186 – 190. While
sales of plaintiffs’ iBooks titles decreased following Byron Preiss’ unexpected death, sales have
been continuous since 1999, and John Colby’s company has been using the mark consistently,
selling hundreds of copies of books from the iBooks back catalog and also launching and selling
several new iBooks titles every year. Id. at 170. These numbers do not approach the massive

4

In any event, the application was abandoned before this issue could be finally resolved.

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