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

Filing 89

DECLARATION of Partha P. Chattoraj in Support re: 87 MOTION for Partial Summary Judgment.. Document filed by Ipicturebooks LLC, J.Boyston & Company, J.T. Colby & Company, Inc., Publishers LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, # 36 Exhibit 36, # 37 Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit 40, # 41 Exhibit 41, # 42 Exhibit 42, # 43 Exhibit 43, # 44 Exhibit 44, # 45 Exhibit 45, # 46 Exhibit 46, # 47 Exhibit 47, # 48 Exhibit 48, # 49 Exhibit 49, # 50 Exhibit 50, # 51 Exhibit 51, # 52 Exhibit 52, # 53 Exhibit 53, # 54 Exhibit 54, # 55 Exhibit 55, # 56 Exhibit 56, # 57 Exhibit 57, # 58 Exhibit 58, # 59 Exhibit 59, # 60 Exhibit 60, # 61 Exhibit 61, # 62 Exhibit 62, # 63 Exhibit 63, # 64 Exhibit 64, # 65 Exhibit 65, # 66 Exhibit 66, # 67 Exhibit 67, # 68 Exhibit 68, # 69 Exhibit 69, # 70 Exhibit 70, # 71 Exhibit 71, # 72 Exhibit 72, # 73 Exhibit 73, # 74 Exhibit 74, # 75 Exhibit 75, # 76 Exhibit 76, # 77 Exhibit 77, # 78 Exhibit 78, # 79 Exhibit 79, # 80 Exhibit 80, # 81 Exhibit 81, # 82 Exhibit 82, # 83 Exhibit 83, # 84 Exhibit 84, # 85 Exhibit 85, # 86 Exhibit 86, # 87 Exhibit 87, # 88 Exhibit 88, # 89 Exhibit 89, # 90 Exhibit 90)(Chattoraj, Partha)

EXHIBIT74

Arguments in Response to Office Action on !BOOKS (SN 85/008.412)
Section 2(e)(1)
The Examining Attorney has refused registration of IBOOKS on grounds that the
mark merely describes features and functions of Apple's goods and services.
Apple respectfully disagrees.
It is the Trademark Office's initial burden to show that a mark is merely
descriptive in the mind of the consumer. In re Gyu/ay, 3 USPQ2d 1009 (Fed. Cir.
1987). If registration is refused, the Office must support the refusal with
evidence. TMEP § 1209.02. Thus, the Office has the burden to prove that the
mark in its entirety has a well-understood and recognized descriptive meaning.
TMEP § 1209.01(b)(2).
In this case, the Examining Attorney's refusal is based on (a) an entry from
Acronym Finder indicating that "I" is an abbreviation for "Internet," and (b) the
assertion that Apple's goods and services are "likely" provided via the Internet.
Needless to say, countless categories of goods and services are offered via the
Internet, and there is no per se rule that the prefix "I" or "i" is merely descriptive
with respect to all such goods and services. The question is whether consumers
who encounter Apple's mark !BOOKS will perceive the prefix "I" as an
abbreviation for "Internet." Apple respectfully submits that they will not, for the
following reasons.
Apple uses the !BOOKS mark to identify the interface through which consumers
access and select electronic publications from Apple's !BOOKSTORE library and
download them to Apple's iPad tablet, iPhone mobile device, and iPod touch
media player.
Apple already owns registrations on the Principal Register of IBOOKS and
IBOOK for the following goods:
•

!BOOKS (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 "computers, computer
hardware, computer peripherals and users manuals sold therewith."

See Exhibit A. Thus, the present application merely seeks to expand Apple's
registration of the IBOOKS mark to goods and services related to those for which
the mark is already registered.
Both IBOOKS and IBOOK were registered as inherently distinctive, without any
requirement of proof of acquired distinctiveness.

1

APPLE-IBOOKS0000232

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, and the IPAD tablet came on the
market this year and quickly established its own fame among consumers.
Apple now holds over 60 active federal applications and registrations of marks
that begin with the prefix "i." See Exhibits B-E.
The IBOOK laptop, the IPOD media player, the ITUNES software and iTunes
Store service, and the IPHONE digital mobile device were all particularly
influential in cementing the public perception that the "i"-prefix brand is
synonymous with Apple. Each of them ranks as a landmark product offering, and
the IBOOKS mark follows in their footsteps:
•

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.

•

The IPOD media player revolutionized the delivery of music and video.
Apple has sold more than 275 million iPod devices worldwide since the
product's introduction, and as of May 201 0 had a 76% market share of the
U.S. digital music player market. See Exhibit F. Apple owns nearly two
dozen active federal trademark registrations and applications that
incorporate the IPOD mark. See Exhibit C.

•

Through its iTunes Store, Apple has sold over 10 billion songs. In 2008,
the iTunes Store surpassed Wai-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 12 million songs, over
55,000 TV episodes and over 8,500 movies. See Exhibit G. Apple owns
approximately 20 active federal trademark registrations and applications
that incorporate the ITUNES mark. See Exhibit D.

•

Apple has sold more than 50 million iPhone devices worldwide as of April
2010. The announcement of the iPhone generated unprecedented

2

APPLE-IBOOKS0000233

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, while the first-weekend sales of iPhone 4 (released June
201 0) were more than 50% higher, reaching 1.7 million units. See Exhibit
.t!- Apple owns nearly two dozen active federal trademark registrations
and applications for marks that incorporate the IPHONE mark. See
Exhibit E.
Apple's "i"-branding is so widely recognized that the public has come to expect
each new Apple product to follow that nomenclature. Most notably:
•

In 2005 and 2006 when the industry suspected that Apple was developing
a mobile phone, reporters and bloggers coined the mark IPHONE to refer
to the rumored product. See Exhibit I.

•

More recently, countless news stories speculated not just on whether
Apple would launch a tablet computing device, but whether it would be
christened IPAD. See Exhibit J.

Consumers encounter the IBOOKS mark in the same environment in which they
encounter Apple's famous "i"-prefix brands, since the mark identifies the interface
used to access, select, and download electronic publications on the iPad tablet,
the iPhone mobile device, or the iPod touch media player. Thus, in light of
Apple's longtime identification with the IBOOK mark, and its use of other famous
"i"-prefix brands, consumers immediately recognize IBOOKS as a member of
Apple's family of marks. As a result, they have no reason to consider whether
IBOOKS has some descriptive meaning.
In support of the refusal, the Examining Attorney has cited In re Zanova, Inc., 59
USPQ2d 1300 (TTAB 2000), in which the Trademark Trial and Appeal Board
upheld a refusal to register the mark ITOOL for "computer services, namely,
providing custom services for web sites and design of web sites for others" and
"computer software for use in creating web pages." In the Zanova case, the
Board specifically recognized that ITOOL is an abbreviation for the phrase
"Internet tool(s)"-which is "a commonly used term" that "aptly describes
applicant's goods and services." /d. at 1304. By contrast, the office action
contains no evidence that the phrase "Internet book(s)" is a commonly used term
as applied to Apple's goods and services. In the absence of such evidence,
there is simply no basis for concluding that consumers would perceive IBOOKS
as a descriptive abbreviation for that phrase.
The Examining Attorney correctly notes that Apple's mark IBOOKS covers goods
and services relating to electronic publications. However, as indicated by the
materials at Exhibit K, "ebook" is the commonplace generic term for an electronic

3

APPLE-IBOOKS0000234

book. Consumers who see Apple's use of !BOOKS will recognize it as a
indicator of source, distinguishable from the generic term "ebook."
As indicated above, Apple's prior incontestable registrations of !BOOKS (for
"computer software used to support and create interactive, user-modifiable
electronic books") and IBOOK (for "computers, computer hardware, computer
peripherals and users manuals sold therewith") were registered on the basis of
inherent distinctiveness. Although the Examining Attorney is not bound to follow
the decisions of prior examiners, the fact that the Trademark Office has already
perceived !BOOKS to be distinctive in this context supports the conclusion that
consumers will do the same.
It is well-recognized that where there is any doubt about whether a mark is
merely descriptive, "that doubt should be resolved in favor of the applicant." See
In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972). Here, Apple has
raised sufficient doubt about the descriptiveness of !BOOKS that the Examining
Attorney should withdraw the refusal under Section 2(e).
Section 2(d)
The Examining Attorney has refused registration in relation to the goods in Class
16, based on a likelihood of confusion with the mark I BOOK shown in U.S.
Registration No. 1,723,733. Apple respectfully submits that confusion is unlikely.
The cited registration of I BOOK, which disclaims exclusive rights in BOOK,
covers "calendar handbooks" in Class 16. The owner is the Board of Trustees of
the University of Illinois. As confirmed by the cited registrant's specimen of use,
the mark I BOOK is an abbreviation for ILLINIBOOK, and has been used on a
calendar with dates and deadlines relating to the University of Illinois. See
Exhibit L.
Apple's amended identification of goods in Class 16 does not encompass
calendar handbooks. Rather, it covers the printed equivalent of the electronic
publications set forth in Apple's identification of goods in Class 9. When
consumers encounter Apple's use of !BOOKS for books and periodicals on a
wide range of topics of general interest, they will have no reason to assume a
connection with the University of Illinois calendar, but will instead recognize the
products as an extension of Apple's electronic offerings. Under the
circumstances, confusion is unlikely, and Apple respectfully requests that the
Examining Attorney withdraw the refusal under Section 2(d).

4

APPLE-IBOOKS0000235