Trademark Trial and Appeal Board Electronic Filing System. htfQJ/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`77219819
`
`Apple Inc.
`MULT|—TOUCH
`
`THOMAS R. LA PERLE
`APPLE INC.
`1 INFINITE LOOPMS: 3TM
`CUPERTINO, CA 95014
`UNITED STATES
`
`Iaper|e@app|e.com
`
`Appeal Brief
`
`13 pages )(6685412 bytes)
`MULT|—TOUCHAPPEALBR|EF.pdf
`Apple MULT|—TOUCH Appeal Brief —— Exhibits A and B.pdf ( 49 pages )(5211727
`bytes)
`Apple MULT|—TOUCH Appeal Brief —— Exhibit C.pdf ( 101 pages )(4794222 bytes
`
`) A
`
`pple MULT|—TOUCH Appeal Brief -- Exhibits D-L (F|NAL).pdf ( 107 pages
`)(9843466 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA352813
`ESTTA Tracking number:
`06/14/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77219819
`Apple Inc.
`MULTI-TOUCH
`THOMAS R. LA PERLE
`APPLE INC.
`1 INFINITE LOOPMS: 3TM
`CUPERTINO, CA 95014
`UNITED STATES
`laperle@apple.com
`Appeal Brief
`MULTI-TOUCHAPPEALBRIEF.pdf ( 13 pages )(6685412 bytes )
`Apple MULTI-TOUCH Appeal Brief -- Exhibits A and B.pdf ( 49 pages )(5211727
`bytes )
`Apple MULTI-TOUCH Appeal Brief -- Exhibit C.pdf ( 101 pages )(4794222 bytes
`
`)A
`
`pple MULTI-TOUCH Appeal Brief -- Exhibits D-L (FINAL).pdf ( 107 pages
`)(9843466 bytes )
`Thomas R. La Perle
`laperle@apple.com, glenn.gundersen@dechert.com
`/Thomas R. La Perle/
`06/14/2010
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application of
`Apple Inc.
`
`Mark: MULTI-TOUCH
`
`Serial No.:
`Filing Date:
`
`78/219,819
`June 30, 2007
`
`.
`:
`
`April K. Roach
`Law Office 115
`
`APPLICANT’S APPEAL BRIEF
`
`

`
`Index of Cited Cases
`
`Hunter Publishing Co. V. Caulfield Publishing Ltd.,
`1 USPQ2d 1996, 1999 (TTAB 1986) ......................................................................................... ..12
`
`Selchow & Righter Co. V. Decipher, Inc.,
`598 F.Supp. 1489 (E.D.Va. 1984) .............................................................................................. ..12
`
`

`
`INTRODUCTION
`
`Applicant Apple Inc. (“Apple”) seeks to register the mark MULTLTOUCH for
`
`“Handheld mobile digital electronic devices with electronic mail, digital data transmission, audio
`
`player, video player, handheld computer, personal digital assistant, electronic organizer,
`
`electronic notepad, telephone, computer gaming, and camera functions” in International Class 9.
`
`The Examining Attorney has refused registration of MULTI-TOUCH under Section
`
`2(e)(l) of the Trademark Act, on the grounds that the mark merely describes Apple’s goods, and
`
`has refused to accept Apple’s claim of acquired distinctiveness under Section 2(f). As the
`
`following arguments and evidence will show, MULTI-TOUCH is entitled to registration on the
`
`Principal Register based on acquired distinctiveness.
`
`As indicated in Apple’s Amendment to Allege Use, Apple has been using the mark
`
`MULTI-TOUCH since 2007 in connection with its iPhone and iPod touch mobile devices. The
`
`identification of goods in this application to register MULTI-TOUCH contains only one item-—
`
`“handheld mobile digital electronic devices with electronic mail, digital data transmission, audio
`
`player, video player, handheld computer, personal digital assistant, electronic organizer,
`
`electronic notepad, telephone, computer gaming, and camera functions.” This identification is
`
`essentially identical to the goods identified in Apple’s Class 9 registrations of IPHONE (RN
`
`3,669,402) and IPHONE and Design (RN 3,746,840). This pending application does not cover
`
`other goods, and therefore does not claim trademark rights in MULTI-TOUCH generally. Thus,
`
`the question of whether MULTI—TOUCH is entitled to registration is limited to whether Apple’s
`
`mark has acquired distinctiveness with respect to the handheld mobile digital electronic devices
`
`identified in the application.
`
`

`
`I.
`
`The Success of Apple’s MULTI—TOUCH Devices
`
`ARGUMENT
`
`Since 2007, Apple has used the trademark MULTI-TOUCH in reference to its iPhone and
`
`iPod touch devices, which are among the most successful and celebrated consumer products in
`
`recent history. Apple first used the mark MULTI-TOUCH at its January 2007 announcement of
`
`the iPhone device, and the mark has been included in Apple’s advertising and marketing ever
`
`since the product was first offered in June 2007. Millions of Apple customers use MULTI-
`
`TOUCH devices on a daily basis. As a result, consumers associate the mark with Apple’s
`
`products.
`
`A.
`
`Pre-Launch Publicity
`
`When Apple formally announced its plans to introduce the iPhone digital mobile device
`
`on January 9, 2007, it drew a remarkable level of interest from the media and the public at large.
`
`The iPhone appeared on the front pages of The New York Times, USA Today, and many other
`
`newspapers, and in stories on national television news and in magazines. In the month of
`
`January 2007 alone, Apple’s iPhone was mentioned in over 2l00 articles in the NEXIS news
`
`database, and those reports represent only a portion of the media coverage. The public
`
`announcement included a demonstration of Apple’s innovative touchscreen interface, branded
`
`MULTI-TOUCH. The mark MULTl—TOUCH appeared in a large number of news stories about
`
`
`the iPhone device. §_eg Exhibits A B and C.
`
`As the materials in Exhibit C indicate, the profile of Apple’s product only grew from
`
`there :
`
`

`
`A June 27, 2007 article in The New York Times, published just prior to the product’s
`
`launch, reported that “[i]n the last six months, Apple’s iPhone has been the subject of
`
`11,000 print articles, and it turns up about 69 million hits on Google.”
`
`According to independent research by measurement firm Nielsen//NetRatings, the
`
`iPhone section of Apple’s web site received more than 1.79 million unique visitors in
`
`January 2007 alone, and more than 980,000 unique visitors in each of February and
`
`March. The MULTI—TOUCH mark appeared on the website.
`
`An officer at Nielsen Buzzmetrics reported that the Internet traffic generated by the
`
`iPhone product was “higher than any product we’ve monitored,” who indicated that
`
`the number of online “blog” posts about iPhone was higher than posts about Super
`
`Bowl commercials, the finale of The Sopranos, or announcements about Nintendo’s
`
`Wii and Microsoft’s Zune and Vista.
`
`Reuters reported that by late March 2007, more than one million emails seeking
`
`information about iPhone had been sent to AT&T, the exclusive telecom carrier for
`
`the product.
`
`By April 2007, an independent survey by measurement firm M:Metrics, Inc. revealed
`
`that nearly two-thirds (64%) of American mobile phone users were aware of the
`
`iPhone product, and a projected 19 million Americans had a strong interest in buying
`
`it. M:Metrics analyst Mark Donovan remarked, “That kind of latent demand is
`
`something I don’t think we’ve ever seen before.”
`
`In another April 2007 survey by the independent firm ChangeWave Research,
`
`Apple’s iPhone was tied with another company’s long-established brand, BlackBerry,
`
`

`
`as the top choice in a survey of people who planned to buy an advanced mobile phone
`
`within the following three months.
`
`° According to Professor David Yoffie of Harvard Business School, attention to the
`
`iPhone product from newspapers, web sites, and other sources was “unprecedented,”
`
`equating to $400 million in free advertising in the months following Apple’s
`
`announcement. Professor Yoffie observed that “no other company has ever received
`
`that kind of attention for a product launch.”
`
`As the launch date neared, USA Today referred to the “mania” for the iPhone, The
`
`Philadelphia Inquirer said “Buzz is big,” and The Los Angeles Times called it “the hottest
`
`product.” fig Exhibit C.
`
`A commentator from CNET News described the iPhone marketing campaign as “Apple’s
`
`best marketing campaign ever, and maybe one of the best ever in American business.” Similarly,
`
`a commentator on Bloomberg.com said that the campaign “may be the most successful
`
`marketing effort ever, surpassing the drive the promote Ford Motor Co.’s 1964 Mustang and
`
`Microsoft Corp.’s Windows 95.” §_e§ Exhibit C.
`
`Thus, Apple’s product had garnered extraordinary public attention even before it was
`
`actually in consumers’ hands.
`
`B.
`
`The Launch of iPhone
`
`Apple introduced the iPhone mobile digital device and services to consumers on June 29,
`
`2007 at approximately 160 Apple stores and 1800 AT&T stores nationwide. Many consumers
`
`camped out in front of retail stores for days beforehand. The launch was a leading story on all
`
`three network newscasts that evening, as well as countless cable and local news broadcasts.
`
`

`
`Once again, the iPhone device appeared on the front page of The New York Times and USA
`
`Today, and received extensive press coverage in other publications across the nation. S_ee_
`
`Exhibit D. Interest was so high that The New York Times alone ran more than a dozen stories
`
`each in June and in July 2007, and tech columnist David Pogue created a humorous video for the
`
`site, which was re-posted on YouTube and received another 800,000 viewings. CBS News "A
`
`Closer Look at the iPhone" received over 6 million viewings on YouTube.
`
`The product was an immediate success. 270,000 units of the iPhone device were sold in
`
`the first two days. Apple continued intensive television and print advertising for the product
`
`before, during, and after the launch. Although Apple’s specific advertising expenditures on the
`
`iPhone are not public, the company spent $338 million on advertising in its fiscal year 2006,
`
`$467 million in 2007, and $486 million in 2008.
`
`Within 74 days after the product’s launch, Apple had already sold one million units of the
`
`iPhone device. The device was featured in myriad “Best of 2007” lists, and Time named the
`
`device “Gadget of the Year” and “Invention of the Year.” E Exhibit C.
`
`C.
`
`iPhone 3G and iPhone 3GS
`
`The success story continued in June 2008, when Apple announced that it would release
`
`“iPhone 3G,” a new version of the iPhone device with increased network speeds and new
`
`features that would be sold at half the price of the original model. The public’s reaction to the
`
`announcement was reminiscent of its reaction to the announcement of the original iPhone device,
`
`as fans and the media speculated about the product and its improvements. Indeed, USA Today
`
`told readers to “Get ready for iPhone-mania 2.0.” §fi Exhibit C.
`
`Apple sold one million units of the iPhone 3G device the very first weekend the product
`
`

`
`was available. Since the launch, the product has continued to be wildly successful. In its fiscal
`
`fourth quarter of 2008 alone, Apple sold 6.9 million units of the iPhone 3G model. By the end of
`
`2008, Apple had sold over 30 million MULTI-TOUCH devices.
`
`In June 2008, Apple announced that it would begin selling downloadable applications for
`
`the iPhone 3G, such as games, books and productivity tools, through its new “App Store,”
`
`accessible through the existing iTunes Music Store. The online App Store opened for business
`
`on Friday, July 11, 2008, and Apple sold 10 million applications in the very first weekend the
`
`product was available. The press proclaimed the iPhone App Store “another home run,”
`
`observing that "Apple has already profoundly changed the technology landscape again”—“the
`
`iPhone App Store simply makes the old way of distributing software seem primitive.” The App
`
`Store currently offers over 65,000 applications. Users downloaded 1 billion applications in the
`
`first 9 months, and had downloaded 1.5 billion by July 2009. E Exhibit C.
`
`In July 2009, Apple launched the iPhone 3GS, selling one million units of the product in
`
`its first three days on the market. E Exhibit C.
`
`D. Ongoing Success
`
`The exposure of the iPhone product and the MULTI-TOUCH interface has only grown
`
`since the time that Apple initially submitted its claim of acquired distinctiveness. In the first
`
`quarter of 2010 alone, Apple sold 8.7 million iPhone devices, and sales of the product doubled
`
`from 2008 to 2009. The iPhone is the second best-selling smartphone in the United States,
`
`holding an estimated 28% share of the market. As of January 2010, consumers had downloaded
`
`over 3 billion applications from Apple’s App Store, and by June 2010, the number had risen to 5
`
`billion. See Exhibit D. All of these iPhone owners use the MULTI—TOUCH interface. The
`
`

`
`continued success and sales growth of the iPhone device means that more and more consumers
`
`have encountered the MULTI-TOUCH mark in advertising, user manuals, and in-store product
`
`demonstrations, which reinforces the fact that they View MULTI-TOUCH mark as an indicator
`
`of source for Apple’s products.
`
`II. Recognition of the MULTI—TOUCH mark
`
`In deeming Apple’s evidence of acquired distinctiveness to be insufficient, the
`
`Examining Attorney has asserted that “applicant’s product may have achieved great popularity
`
`and awareness generally, [but] applicant has not presented evidence showing that MULTI-
`
`TOUCH has achieved similar recognition as a source indicator for applicant’s goods.” However,
`
`the recognition of the mark MULTI-TOUCH goes hand in hand with recognition of the iPhone
`
`device, because virtually all purchasers and prospective purchasers of the product are exposed to
`
`the mark MULTI-TOUCH.
`
`Contrary to the Examining Attorney’s suggestion, Apple’s MULTLTOUCH interface is
`
`not merely a “feature” of its products, but is one of the prime reasons why the iPhone device has
`
`been considered groundbreaking—~and why it has been such a success with consumers. Because
`
`the MULTI-TOUCH interface is a new way for consumers to interact with a mobile device, they
`
`will inevitably learn about the interface when using or researching the product, and will
`
`encounter the mark MULTI-TOUCH via in-store demonstrations, advertisements, product
`
`reviews, or online manuals.
`
`Reporters and consumers alike have raved about the iPhone device’s MULTI-TOUCH
`
`interface. For example, The Washington Post has noted that the MULTI—TOUCH interface “sets
`
`

`
`the iPhone apart,” and PC Magazine has hailed the interface as “revolutionary.” When Apple
`
`released the iPod touch, a new version of its popular iPod digital media player, reviewers were
`
`quick to note that the device features the same MULTI-TOUCH interface that helped to make
`
`the iPhone so popular. gee Exhibit E.
`
`As shown in the attachments at Exhibit F, leading publications refer to “Apple's Multi-
`
`Touch technology” when comparing new smartphones to the iPhone. Apple’s national television
`
`commercials have demonstrated the touchscreen interface of MULTI-TOUCH devices, and the
`
`interface has also been highlighted on Apple’s website. E Exhibit G.
`
`From 2007 through 2009, the three years following Apple’s announcement of the iPhone
`
`device, the term MULTI-TOUCH appeared in more than 2,200 news articles referencing Apple
`
`or iPhone. 3 Exhibit H. As a result, the term is now closely associated with Apple and
`
`recognized as Apple’s mark.
`
`III. Duration of Use
`
`In refusing the claim of acquired distinctiveness, the Examining Attorney has asserted
`
`that “a mere two and half years of use is not sufficient to establish the acquired distinctiveness of
`
`the mark,” given that the mark is “highly” descriptive. Apple respectfully submits that both
`
`assertions are highly subjective.
`
`In fact, there is no legal rule stating the minimum amount of time necessary for a mark to
`
`achieve acquired distinctiveness. §e_e McCarthy on Trademarks, 15:55 (2007). Professor
`
`McCarthy states that public recognition of a mark can be established “comparatively overnight”
`
`and that a trademark user can acquire secondary meaning “almost immediately after launching a
`
`10
`
`

`
`new product.” l_d. E ali Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d
`
`1996, 1999 (TTAB 1986); Selchow & Righter Co. V. Decipher, lnc., 598 F.Supp. 1489 (E.D.Va.
`
`1984) (mark TRIVIAL PURSUIT and accompanying trade dress had acquired distinctiveness
`
`based on “unprecedented success in the marketplace,” including sale of 1,000,000 units during
`
`the first year of use, 13,000,000 units during the first three quarters of the second year of use and
`
`numerous newspaper and magazine articles written about the product).
`
`There is also no rationale for concluding that MULTI-TOUCH is “highly descriptive”
`
`rather than merely “descriptive”, and therefore requires a longer period of use to establish
`
`distinctiveness. Apple’s MULTI-TOUCH devices rely on an input technology that is identified
`
`generally as “touchscreen” interface, which allows the user to enter commands directly via the
`
`display screen rather than using a keyboard or mouse (see Exhibit 1). More specifically, Apple's
`
`devices incorporate a “capacitive” touchscreen, distinguishable from other touchscreen
`
`technologies. A capacitive screen recognizes changes in electrical currents rather than pressure
`
`points, reacting to finger gestures without requiring the screen to be pressed. While
`
`“touchscreen” and “capacitive” are the generic terms for Apple's input technology, MULTI-
`
`TOUCH is a mark that identifies Apple as the source of the products.
`
`MULTI-TOUCH is not a term found in the dictionary, but a coined term. Even if the
`
`mark is understood to indicate that Apple's device is operated by touching its screen, the phrase
`
`MULTI-TOUCH does not clearly and immediately convey to the average purchaser the
`
`functionality of the device —— namely, the fact that the display can be manipulated by moving two
`
`fingers on the screen at the same time, or that images on the screen can be enlarged or reduced
`
`by moving the edges of the images with one's fingers.
`
`ll
`
`

`
`MULTI-TOUCH is not a term of art for smartphones or similar mobile devices. As
`
`shown in Exhibit J, other smartphone makers offer some form of touchscreen interface, but their
`
`sellers use different marks to refer to their touchscreen technology—e.g., HTC uses the mark
`
`TOUCHFLO, RIM uses the mark SUREPRESS, and Samsung uses the mark TOUCHWIZ.
`
`Apple has successfully registered the mark MULTI—TOUCH in 37 different jurisdictions,
`
`including Canada, Mexico, the European Union, and other jurisdictions, as shown in the attached
`
`Exhibit K. While Apple recognizes that the decisions of other trademark offices are not
`
`dispositive as to how the Trademark Office should examine this application, they nevertheless
`
`demonstrate that others who evaluated the registrability of the term MULTI-TOUCH did not
`
`perceive the mark as merely descriptive, much less “highly” descriptive.
`
`Apple’s marks have historically acquired distinctiveness extremely quickly, due to the
`
`popularity of Apple’s products and the media attention they receive. The Trademark Office
`
`recognized that the mark IPHONE mark had acquired distinctiveness less than a year after its
`
`launch, when the Office withdrew a Section 2(e)(l) refusal against application SN 77/975,076 on
`
`May 15, 2008. That application covered the same handheld mobile devices that are described in
`
`the application for MULTI-TOUCH. Moreover, in an Office Action dated November 5, 2007 on
`
`another application for IPHONE (SN 77/078,496), the Office noted that IPHONE is “highly
`
`descriptive”—but Apple’s Section 2(f) claim in that application was nevertheless accepted in an
`
`Office Action dated November 4, 2009. E Exhibit L.
`
`Thus, Apple respectfully submits that if the IPHONE mark could acquire
`
`distinctiveness in less than 11 months on the market, the MULTI-TOUCH mark could achieve it
`
`12
`
`

`
`in the period between its January 2007 announcement and June 2007 introduction, and the
`
`present.
`
`CONCLUSION
`
`In summary, Apple has presented substantial evidence showing not only that its iPhone
`
`device has achieved a remarkable degree of commercial success, but also that the mark MULTI-
`
`TOUCH is closely associated with the product. As such, consumers recognize MULTI-TOUCH
`
`not as a descriptive term, but as Apple’s brand. For this reason, Applicant submits that the
`
`refusal to register is unjustified, and respectfully requests that this mark now be approved for
`
`registration under Section 2(f).
`
`Respectfully submitted,
`
`Thomas R. La Perle
`
`Apple Inc.
`
`13
`
`

`
`Exhibit A
`
`

`
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`rPhone combines three products — a revolutionary mobile phone, a widescreen Pad with touch controls, and
`a breakthrough Internet communications device wlth desktop-class email, web browsing, maps. and searchlng — into
`one small and Iightweloht hanoheld device. iPhone also introduces an entlrelv new userlnterlace based on a large multi-
`touch display and pioneering new soflware, letting you control everything with lustyour fingers. So ll ushers in an era of
`software power and sophistlcatlon never before seen in a mobile device, completely redefining whalyou can do on a
`mobile phone.
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`"Every once in a while a revolutionary product comes along that changes evemhing,"Jobs said.
`
`Featuring a newinpultechnologv called "Mult'rTouch"the iF'hone features only a single physical button, called "home "You
`control the phone byslicling a finger across tls touch-eensllive 3.5-inch display, which has a resolution of32D-by-4B0
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`The lPhone. which runs Mac 05 K, has full lTunee integration and can seamlessly sync data with a Mac, PC, or Internet
`service, including music and videos from JTLIFIQS, contacts, calendars, photos, notes, bookmarks and email accounts.
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`The D 46-inch {1 1 .6»milIimeter) thick device weighs :13 ounces (135 grams) and sports a Zarnegapirrel Camera, volume
`control, ring-silent switch, 3.5-millimeterheedsetfaudlo jack, SIM lrav,"eieep-wake‘ switch, speaker, microphone, and a
`30-pin iPod dockconhector. The quad-band GSM (35flMHz, QEIEJMHZ, 1SEI£IMHz, and ‘l9EIUMHz) + EDGE phone also has
`BEl2.11brg WrFi and Bluetooth 2.0 capabllrtles. Jobs noted 30 capabllities will come in the future.
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`C|¢n'1o|' of Ihe Mind - Miclosofl Inlernel lxploter
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`Apple unveils i5-hone
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`'3 ikpple | where beauly and geek bloggers meel: March 200? — Microsofl Internal Explorer
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` iilpple l where beauty and geek bloggers meal: March 2007 - Microsoll Internet Explor
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`iPod touch — Mulli-touch intetfdce. Wi—Fi. and more v Microsoft Internet Explorer
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`iPod touch — Multi-touch interface, Wi-Fi,
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`Today Apple announced a majur addrtiUntutheIr1F'0rJ lane called IPDU touch . It bears
`Significant slmiiarities to the |Phnne With touch screen capatulities. wide screen display, and
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`iPod touch — Mul|i—touch interface, Wi-Fi. and more - Microsoft Internet Explorer
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