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`Attorney Docket No. 020750-006310US
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`TRADEMARK
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Application Serial No. 78/095,506
`Mark:
`XPOD
`Filed:
`November 28, 2001
`Applicant:
`MediaFour Corporation
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`B
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`APPLE COMPUTER, INC.,
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`Opposer,
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`V-
`MEDIAFOUR CORPORATION,
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`Applicant.
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`Opposition No. 91/155,523
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`0PPOSER’S MOTION
`FOR SUMMARY JUDGMENT
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`NOTICE OF MOTION
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`Please take notice that Opposer, Apple Computer, Inc., (“Opposer” or “Apple”) by this
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`document and pursuant to Federal Rule of Civil Procedure 56 and 37 C.F.R. § 2.127, moves the
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`Trademark Trial and Appeal Board to grant summary judgment on the grounds of likelihood of
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`confiision under Section 2(d) of the Trademark Act‘ for the reasons set forth in the
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`accompanying Memorandum of Points and Authorities.
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`1 Opposer’s Notice of Opposition also contains a claim for relief for trademark dilution under 15
`U.S.C. § 1125(c)(1), which is not the subject of the present motion. If the Board grants summary
`judgment on the present motion, registration of App1icant’s mark will be denied, thus rendering
`Apple’s dilution claim moot and making the Board’s decision dispositive of this Opposition.
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`MOTION FOR SUMMARY JUDGMENT
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`1 1-08-2004
`U.S. Patent & TMOfcITM Mail Rcpt D1. #64
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`I.
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`INTRODUCTION
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`This is a straightforward case of an applicant who has intentionally selected and applied
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`for a mark confusingly similar to Apple’s famous IPOD® mark in order to capitalize on the
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`fame and goodwill of Apple’s mark. Applicant’s obvious attempt to usurp Apple’s rights by
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`selecting the XPOD mark is designed to unfairly target Apple’s customers for Applicant’s
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`complementary product designed to be used solely with Apple’s IPOD product. As
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`demonstrated below, the undisputed facts of this case support a finding of a likelihood of
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`confusion with the IPOD mark. The Board should readily determine that summary judgment for
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`Apple on its Section 2(d) grounds for opposition must be entered.
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`II.
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`FACTS
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`A.
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`Apple’s Famous IPOD Mark
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`Apple is the creator of the IPOD portable handheld media player. Since its introduction
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`on October 23, 2001, the IPOD product has become widely known and wildly popular
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`throughout the world. In fact, after the product was first launched, over 125,000 players were
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`sold in less than two months. Declaration of Thomas A. La Perle (“La Perle Decl.”), 113. The
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`sales and popularity of the IPOD product have only increased over the past three years through
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`each generation of the player. La Perle Decl., 114. By June 28, 2004, Apple had sold over 3.7
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`million IPOD players. Id.
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`In just the first half of 2004 alone, 2,400,000 players were shipped,
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`returning revenue to Apple of over $760 million dollars. Id. From June to September of 2004,
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`an additional 2,016,000 IPOD players were shipped, representing a 500 percent increase from
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`the same period of 2003. Id.
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`MOTION FOR SUMMARY JUDGMENT
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`Apple has expended significant resources .in the advertising and promotion of the IPOD
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`product sufficient to support that volume of sales. Through Apple’s extensive marketing efforts,
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`it has been immensely successful in developing a loyal customer following and valuable brand
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`identity for its IPOD mark. La Perle Decl.,115. Apple has spent, on average, $200 million per
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`year promoting its products. La Perle Decl., 116. The IPOD player has been featured in
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`television commercials aired on cable and network television and in print publications and
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`billboards across the country. La Perle Decl., 11117-9. Apple aggressively promotes its products
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`through its public relations program and news releases. La Perle Decl., 1110 & Exhibit B thereto.
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`The media regularly reports on Apple products and has specifically covered the IPOD player in
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`various media. La Perle Decl., 1111 & Exhibit C thereto. Collectively, these non-paid
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`promotions of the IPOD mark have resulted in hundreds of millions of impressions of the IPOD
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`mark reaching consumers as a source identifier for Apple’s goods. La Perle Decl., 1111. In a
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`very short time, Apple’s IPOD product has become one of the most recognizable and popular
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`portable media players in the country. Id.
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`The IPOD media player is sold nationwide at Apple’s 90+ retail stores, Apple’s online
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`store at www. apple. com, and at major retail stores that sell computer and media equipment, such
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`as CompUSA, Best Buy, Office Depot, Target, Fry’s Electronics, J&R Computerworld, CDW,
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`Micro Center (which also have online stores), Amazon.com, Outpost.com, and at even
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`Bloomingdales and Guitar Center. La Perle Decl., 111112-13. Apple also offers sofiware under
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`the IPOD mark, which can be downloaded from Apple’s website. La Perle Decl., 1114.
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`Apple’s exclusive ownership of the IPOD mark is evidenced by U.S. Trademark
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`Registration No. 2,835,698, issued April 27, 2004. Declaration of Elizabeth R. Gosse (“Gosse
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`Decl.”), Ex. A. The application was filed October 18, 2001 and claims first use on October 23,
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`MOTION FOR SUMMARY JUDGMENT
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`2001. The registration for the IPOD mark covers “portable and handheld digital electronic
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`devices for recording, organizing, transmitting, manipulating, and reviewing audio files;
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`computer software for use in organizing, transmitting, manipulating, and reviewing audio files
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`on portable and handheld digital electronic devices” in International Class 9.
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`Apple also has a family of “X” marks for use in connection with its computers, including
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`XSERVE®, which is registered (Reg. No. 2,697,680), XGRIDTM, XSANTM, and XCODETM.
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`La Perle Decl., 1ll5. Further, Apple has used the mark MACX® since at least 1998 as a mark for
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`its multi-platform integration software, which is registered (Reg. No. 1,878,518), and has used
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`MAC OS XTM since at least March 2001 for its operating software for personal computers. Id.;
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`see also Applicant’s Responses to Opposer’s Request for Admission No. 6, attached as Exhibit B
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`to Gosse Decl. In fact, the MAC OS X operating system is the default operating system on all
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`new Apple computers. La Perle Decl., 1[l5.
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`As a result of Apple’s aggressive product marketing and the overwhelmingly positive
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`response from industry and consumers alike to Apple’s innovation in player design and digital
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`media technology, the IPOD player has become one of the most popular portable media players
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`in the world.
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`B.
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`MediaFour’s XPOD Mark
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`On November 28, 2001, a little over one month after Apple armounced its IPOD player,
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`Applicant MediaFour Corporation (“Applicant” or “MediaFour”) filed an intent-to—use
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`application to register the mark XPOD for “software for cross-platforrn sharing of files on
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`portable digital electronic devices; sofiware for cross-platform representation and manipulation
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`of multimedia files; sofiware for sharing of files on portable digital electronic devices; software
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`for representation and manipulation of multimedia files.”
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`MOTION FOR SUMMARY JUDGMENT
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`MediaFour has developed its business around Apple by creating software designed solely
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`to allow consumers to “cross-platform” between Apple’s operating system and Microsoft’s
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`Windows operating systems. Gosse Decl., Ex. C. The XPOD product is no exception. Taking
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`advantage of the sensation that Apple’s IPOD product created, MediaFour announced its plans
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`to offer a complementary product to the IPOD player that would allow one to use his or her
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`Apple IPOD product on a Windows-based computer. Id. Thus, the similarity of the XPOD
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`mark to the IPOD mark was no coincidence. At the time of the armouncement of the XPOD
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`product, MediaFour’s president, Brian Landwehr, was quoted as praising the IPOD product and
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`Apple:
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`“The Apple iPod may well be the coolest consumer electronics device I’ve ever held,”
`Landwehr said. “When I first touched it, I knew that Windows users would want it, too.”
`“I’ve personally been a big fan of Apple for more than twenty years, and continue to
`imagine a positive future for the company.”
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`Id. Thus, by its own admission, MediaFour was clearly aware of Apple’s IPOD mark and
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`product prior to filing its XPOD application. See Applicant’s Responses to Opposer’s First Set
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`of Interrogatories at p. 7, attached as Exhibit D to Gosse Decl. (“Applicant first became aware of
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`the Opposer’s iPod device, including Opposer’s use of the term iPod during or about the week
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`following the October 23, 2001 announcement by Opposer that it would release its iPod device
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`in November 2001.”).
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`MediaFour has made no use of the mark. See Applicant’s Supplemental Responses to
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`Opposer’s First Set of Interrogatories (provided in response to the Board’s Order, dated August
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`5, 2004, compelling Applicant’s production of relevant information), attached as Exhibit E to
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`Gosse Decl.. In fact, Mr. Landwehr has been quoted as saying that the XP1ay product was
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`originally to be named XPOD, but the name was changed because of this dispute. Gosse Decl.,
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`Ex. C:
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`MOTION FOR SUMIVIARY JUDGMENT
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`Apple doesn’t think we have the right to use the “XPod” name we originally announced.
`We respectfully disagree, but have decided to concentrate on the software, rather than the
`naming, as our customers have made it clear that they want this software as soon as
`humanly possible. Therefore, we have chosen to simply change the name to XPlay.
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`Id. Thus, MediaFour’s intent with respect to the XPOD mark can be inferred from its actions
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`with regard to its XPlay product. Further, in its response to interrogatories, MediaFour states
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`that “the software offered under the XPOD mark will either be similar or identical to the
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`software currently offered by Applicant under its XPlay mark or will be a feature limited version
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`of the XPlay software.” Applicant’s Supplemental Responses to Opposer’s First Set of
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`Interrogatories at p. 2.
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`The XPOD product, now sold as XPlay, was designed explicitly for use only with
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`Apple’s IPOD product. As MediaFour states:
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`Applicant’s XPlay software is software designed specifically to work with Opposer’s
`iPod portable music device. Sofiware features currently offered in the XPlay software
`include the ability to mount both PC formatted and Mac formatted iPods on a Windows
`PC, including Windows 98SE and Window Me-based PC systems; a unique Windows—
`Explorer integrated user interface allowing the user to View the contents of an iPod
`portable music player, including the ability to View the contents by albums, artists,
`genres, composers, playlists and songs; the ability to make and edit playlists; the ability
`to use a Mac formatted iPod as an external hard drive on a Windows PC; the ability to
`add and delete songs on the iPod ; the ability to list to songs stored on the iPod on the
`PC; the ability to edit song information (mp3 tag information) on song files on the iPod;
`the ability to use an iPod portable music player with other third-party music management
`software; and the ability of users to transcode WMA formatted song files in to MP3
`formatted song files such that the users can effectively add WMA songs on an iPod.
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`Id. Further, the XPlay software system requirements state that an IPOD player is required.
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`Gosse Decl., Ex. F. MediaFour currently sells its XPlay product on its website and at retailers
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`such as CompUSA, CDW, Outpost.com, J&R Computerworld, Amazon.com, Micro Center, and
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`Fry’s Electronics. Gosse Decl., Ex. G. Further, the XPlay sofiware packaging displays a photo
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`of Apple’s IPOD product. Gosse Decl., Ex. H. If the XPOD software replaces or becomes a
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`MOTION FOR SUMMARY JUDGMENT
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`feature of the XPlay software, as Applicant predicts, then it is likely that the same or similar
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`photo of Apple’s product would appear on the XPOD packaging.
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`By Applicant’s admission, the XPOD product will be software directed to Apple ’s
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`customers to be used in conjunction with Apple ’s IPOD product: “Applicant anticipates that the
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`software will permit users of an HFS+ formatted (MAC formatted) iPod portable music device
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`on a Windows PC system.
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`XPod software will remain only compatible with the iPod music
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`device.” Id. at p. 2. Applicant expects that its XPOD sofiware will travel in “normal and typical
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`Windows PC software charmels” through “normal and typical Windows PC software manners of
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`distribution.” Id. at p. 3. “Additionally, and more specifically, Applicant intends to sell the
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`software directly to end users through its web—based store. . ..” Id.
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`III.
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`ARGUMENT
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`A.
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`Summary Judgment is Warranted In This Case
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`The Federal Rules of Civil Procedure generally apply to proceedings before the
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`Trademark Trial and Appeal Board. See 37 C.F.R. § 2.1 l6(a). Therefore, on a motion for
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`summary judgment, the Board may render judgment for the moving party if there is no genuine
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`issue as to any material fact. See Fed.R.Civ.P. 56(c). Further, a party may move for summary
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`judgment in its favor regarding all asserted claims, or any part thereof. See Fed. R. Civ. P. 56(a).
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`In Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 U.S.P.Q. 741 (Fed. Cir. 1984), the
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`Federal Circuit affirrned the Board’s grant of summary judgment in an opposition proceeding.
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`The court explained that the “basic purpose of summary judgment is one ofjudicial economy.”
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`Id. at 743 (citing Exxon Corp. v. National Food Line Corp., 198 U.S.P.Q. 407, 408 (C.C.P.A.
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`1978)). It is against public interest to conduct urmecessary trials, and where the time and
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`expense of a full trial can be avoided by the summary judgment procedure, such action is
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`MOTION FOR SUNHVIARY JUDGMENT
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`favored. See Pure Gold, 222 U.S.P.Q. at 743. The court encouraged the disposition of matters
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`before the Trademark Trial and Appeal Board by summary judgment:
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`The practice of the U.S. Claims Court and of the former U.S. Court of Claims in
`routinely disposing of numerous cases on the basis of cross—motions for summary
`judgment has much to commend it. The adoption of a similar practice is to be
`encouraged in inter partes cases before the Trademark Trial and Appeal Board,
`which seem particularly suitable to this type of disposition. Too often we see
`voluminous records which would be appropriate to an infringement or unfair
`competition suit but are wholly unnecessary to resolution of the issue of
`registrability of a mark.
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`739 F.2d at 627 n.2. See also Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560
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`1562, 4 U.S.P.Q. 2d 1793, 1795 (Fed. Cir. 1987) (lauding the use of summaryjudgment to
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`resolve Board proceedings).
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`The burden of a party moving for summary judgment is met by showing “that there is an
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`absence of evidence to support the nonmoving party’s case.” Celotex Corp. v. Catrett, 477 US.
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`317, 325 (1986). When the moving party shows that there is no genuine issue of material fact,
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`the nonmoving party “may not rest upon the mere allegations or denials of [its] pleadings.” Fed.
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`R. Civ. P. 56(e). It must respond, setting “forth specific facts showing that there is a genuine
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`factual issue for trial.” Id. A factual dispute is genuine only if, on the evidence of record, a
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`reasonable fact finder could resolve the matter in favor of the nonmoving party. See Lloyd ’s
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`Food Products, Inc. v. Eli ’s, Inc., 987 F.2d 766, 767, 25 U.S.P.Q.2d 2027 (Fed. Cir. 1993).
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`Here, based on Apple’s strong rights in the famous IPOD mark and on MediaFour’s own
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`undisputed admissions, there are no remaining issues of material fact. “Whether a likelihood of
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`confusion exists is a question of law, based on underlying factual determinations.” Packard
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`Press, Inc. v. Hewlett—Packard Co., 227 F.3d 1352, 56 U.S.P.Q.2d 1351 (Fed. Cir. 2000); Sweats
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`Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987)(“The
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`uniform precedent of this court is that the issue of a likelihood of confusion is one of law.”).
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`MOTION FOR SUMMARY JUDGMENT
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`Thus, the determination of whether there is a likelihood of confusion between the IPOD and
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`XPOD marks is a question of law and wholly appropriate for disposition on summary judgment.
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`B.
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`Applicant’s XPOD Mark is Likely to Cause Confusion with Apple’s IPOD
`Mark
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`Section 2(d) of the Lanham Act provides that registration of a trademark should be
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`refused if the mark “so resembles a mark registered in the Patent and Trademark Office, or a
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`mark or trade name previously used in the United States by another and not abandoned, as to be
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`likely, when used on or in connection with the goods of the applicant, to cause confusion, to
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`cause mistake, or to deceive ....” 15 U.S.C. § l052(d). The registration of Applicant’s XPOD
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`mark, and any subsequent use of XPOD by Applicant, is likely to cause confusion, to cause
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`mistake, or to deceive, particularly as to the source or origin of the goods with which Applicant
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`uses its mark. Further, registration or use of the XPOD mark may induce purchasers to believe
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`that Applicant’s goods are Apple’s, or are endorsed by, or in some way affiliated or associated
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`with Apple.
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`The court in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563
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`(C.C.P.A 1973), listed a number of factors which may be considered when testing for a
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`likelihood of confusion under Section 2(d). These factors include:
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`Similarity of the marks;
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`Similarity of the goods;
`Similarity of the trade channels;
`Conditions under which consumers purchase the goods;
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`Strength of the prior mark;
`Number and nature of similar marks used on similar goods;
`Nature and extent of actual confusion;
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`Length of time and conditions under which concurrent use has not produced actual
`confusion;
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`Variety of goods on which a mark is used (e.g., “family” mark);
`0 Market interface between applicant and owner of a prior mark;
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`MOTION FOR SUMMARY JUDGMENT
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`0 Extent to which applicant has right to exclude others from use of its mark on its
`goods;
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`0 Extent of potential confusion; and
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`0 Any other fact probative of effect of use.
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`Id. at 567. Since Applicant has not used the XPOD mark, the Board may not consider the nature
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`and extent of actual confusion or the length of time and conditions under which concurrent use
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`has not produced actual confusion. A review of the remaining DuPont factors reveals that a
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`likelihood of confiision exists in this case and that registration of the XPOD mark should be
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`denied.
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`1.
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`Apple’s and Applicant’s Marks are Similar
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`Identity of marks is not required to support a finding of a likelihood of confusion.
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`“Marks may be confusingly similar in appearance despite the addition, deletion or substitution of
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`letters or words.” T.M.E.P. § 1207.01(b)(ii). The standard for determining the similarity of
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`marks involves evaluating the similarities in sight, sound and meaning. Similarities in any one
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`of these three components may suffice for the marks to be deemed confusingly similar. In re
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`Swan, Ltd., 8 U.S.P.Q.2d 1534, 1535 (T.T.A.B. 1988); In re Lamson Oil Co., 6 U.S.P.Q.2d 1041,
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`1042 n.4 (T.T.A.B. 1987).
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`Apple’s IPOD and Applicant’s XPOD marks are sufficiently similar in sight, sound, and
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`meaning to warrant rejection of the XPOD application based on a finding that a likelihood of
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`confusion exists under Section 2(d). First, MediaFour has simply taken Apple’s IPOD mark and
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`combined it with the XP portion of Microsoft’s well-known WINDOWS XP mark for its
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`operating system to capitalize on the goodwill of these marks. The combination of these two
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`marks in XPOD describes the features of Applicant’s product to consumers, namely that it
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`MOTION FOR SUMMARY JUDGMENT
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`allows one to use his or her IPOD player with a computer running on the WINDOWS XP
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`operating system. As such, the XPOD mark instantly calls to mind Apple’s IPOD product.
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`Further, the dominant portion of Applicant’s mark “POD” is identical in sound and
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`virtually identical in appearance to Apple’s distinctive and fanciful IPOD mark. The use of the
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`“X” prefix does not sufficiently change the sound or appearance of the mark, and a likelihood of
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`confusion may be found notwithstanding this variation in the marks. In re Pierre Fabre S.A.,
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`188 U.S.P.Q. 691 (T.T.A.B. 1975) (PEDI-RELAX for foot cream confusingly similar to
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`RELAX for antiperspirant); Ilze Signal Companies, Inc. v. Southwestern Petroleum Corp., 181
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`U.S.P.Q. 599 (T.T.A.B. 1973) (POLYSIGNAL R29 (and design) confiisingly similar to
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`SIGNAL, for substantially the same goods). Apple itself has adopted the “X” prefix in
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`conjunction with some of its marks, including its registered mark XSERVE, and its marks
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`XGRID, XSAN, and XCODE. Further, Apple has used the mark MACX since at least 1998 as
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`a mark for its multi-platform integration software and the mark MAC OS X for its operating
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`soflware. Thus, it would be reasonable to assume that Applicant’s XPOD mark refers to a
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`product manufactured by Apple.
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`Finally, it is axiomatic under trademark law that the more related the goods, “the degree
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`of similarity [between the marks] necessary to support a conclusion of likely confusion
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`declines.” ECI Division ofE-Systems Inc. v. Environmental Communications Inc., 207 U.S.P.Q.
`443 (T.T.A.B. 1980). Applicant has applied for use of the mark XPOD with “software for cross-
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`platform sharing of files on portable digital electronic devices; software for cross-platform
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`representation and manipulation of multimedia files; software for sharing of files on portable
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`digital electronic devices; sofiware for representation and manipulation of multimedia files.” As
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`Applicant admits, Applicant’s proposed software is designed solely to be used in connection with
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`MOTION FOR SUMMARY JUDGMENT
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`the IPOD media player and not with any other media player. Thus, the parties’ goods are
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`identical, highly related, and designed by Applicant to interact directly with each other. Thus,
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`the marks need not be identical for there to be a confusing similarity. Taken in combination, the
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`relatedness of goods and the similarity of the marks yield the clear conclusion that a likelihood of
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`confixsion exists with respect to the marks XPOD and IPOD.
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`2.
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`Applicant’s Goods are Designed to Be Used with Apple’s Goods
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`The more similar or closely related the goods, the greater the likelihood of confusion.
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`Exxon Corp. v. Texas Motor Exch. ofHouston, Inc., 628 F.2d 500, 505, 208 U.S.P.Q. 384, 388
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`(5th Cir. 1980). Further, the more closely related the goods or services, the lesser of a showing is
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`needed under the remaining likelihood of confusion factors. Banfif Ltd. v. Federated Dep ’t.
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`Stores, Inc., 6 U.S.P.Q.2d 1187, 1192 (2d Cir. 1988). The test for proximity of the goods is only
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`that they be “similar in use and fiinction.” AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204
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`U.S.P.Q. 808, 815 (9th Cir. 1979). Further, “[i]f a similar mark appears on complementary
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`goods, then there may be a strong likelihood that buyers will think that there is some connection
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`between the sources of such goods.” McCarthy, The Law of Trademark and Unfair Competition,
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`§ 24:26. See In re Opus One, Inc., 60 U.S.P.Q.2d 1812, 1815 (T.T.A.B. 2001) (“[A]pp1icant’s
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`‘restaurant services’ and registrant’s ‘wine’ clearly are complementary goods and services which
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`may be encountered together by the same purchasers
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`[as] is evident in the well-known
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`expression ‘wine and dine’... .”); Octocom Systems, Inc. v. Houston Computer Services, Inc.,
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`918 F.2d 937, 16 U.S.P.Q.2d 1783 (Fed. Cir. 1990) (holding OCTOCOM as used on modems
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`confusingly similar to OCTACOMM as used on computer programs in part because programs
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`and modems are commonly used together); In re Compagnie Internationale Pour
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`L 'Informatique-CII Honeywell Bull, 223 U.S.P.Q. 363 (T.T.A.B. 1984)(QUESTAR for
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`MOTION FOR SUMMARY JUDGMENT
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`computer hardware is confusingly similar to QUESTAN for computer software). The XPOD
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`p product is designed solelyfor use with Apple’s IPOD product. The likelihood of confusion
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`between these complementary products is clear.
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`In this case, the IPOD mark is registered for “portable and handheld digital electronic
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`devices for recording, organizing, transmitting, manipulating, and reviewing audio files;
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`computer software for use in organizing, transmitting, manipulating, and reviewing audio files
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`on portable and handheld digital electronic devices.” The challenged application covers
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`“software for cross-platforrn sharing of files on portable digital electronic devices; software for
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`cross—platform representation and manipulation of multimedia files; sofiware for sharing of files
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`on portable digital electronic devices; sofiware for representation and manipulation of
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`multimedia files.” Simply on the face of the XPOD application as compared with the IPOD
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`registration, the goods offered by each party are highly related if not identical. For example,
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`both cover software that are used in connection with manipulation and transmission, or
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`“sharing,” of files for use on portable digital electronic devices. Also, the registration covers
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`“portable and handheld digital electronic devices,” and the challenged application covers
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`software for use with “portable digital electronic devices.” The parties’ goods are essentially
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`identical and complementary.
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`Further, as Applicant admits, the XPOD software would only be used in connection with
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`Apple’s IPOD media player for the sole purpose of allowing IPOD player owners the ability to
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`use their IPOD player on a Windows based computer. If one does not own an IPOD player, the
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`XPOD software would provide no benefit to the purchaser of Applicant’s goods. Further, the
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`XPlay software, which would have been branded with the XPOD mark, requires one to own an
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`IPOD player to be able to use the sofiware. As a result, Apple’s and Applicant’s goods are more
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`MOTION FOR SUMMARY JUDGMENT
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`than just “similar in use and fiinction,” rather they are highly related, complementary,
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`compatible, and identical goods. As such, consideration of this factor clearly supports the
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`conclusion that a likelihood of confusion exists.
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`3.
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`Apple and Applicant Offer Goods in Exactly the Same Channels of
`Commerce
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`Overlapping or complementary marketing channels increase the likelihood of confusion.
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`AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 U.S.P.Q. 808 (9th Cir. 1979). As noted,
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`Apple’s registration and Applicant’s application cover the same goods -- computer software used
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`in connection with Apple’s IPOD media player -- as well as highly related, complementary
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`goods. Further, Applicant has not limited its marketing channels in its application. Thus, if
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`Applicant receives a registration, Applicant’s goods may be sold and advertised in any and all
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`marketing channels used for computer soflware. As a matter of law, therefore, the Board must
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`assume that allowing Applicant’s XPOD mark to register would result in Applicant’s computer
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`software and Apple’s digital electronic devices and software being sold in the same marketing
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`channels, thus tending to increase the likelihood of COI1filSlOI1. International Paper Co. v. Valley
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`Paper Co., 175 U.S.P.Q. 704, 705 (C.C.P.A 1972).
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`However, Applicant admits that it is likely that its XPOD product will travel in “normal
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`and typical Windows PC sofiware charmels” through “in normal and typical Windows PC
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`software manners of distribution.” Further, Applicant currently sells its XPlay product on its
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`website and at retailers such as CompUSA, CDW, Outpost.com, J&R Computerworld,
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`Amazon.com, Micro Center, and Fry’s Electronics. Apple has its own online store on its
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`website, on which the IPOD product is sold. Thus, both parties would use the Internet as a
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`charmel of trade. Further, Apple sells IPOD products in CompUSA, CDW, Outpost.com, J&R
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`Computerworld, Amazon.com, Micro Center, and Fry’s Electronics, among other retailers.
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`Thus, the channels of trade for the parties’ respective products are likely to be identical. Hence,
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`consideration of this factor favors a finding of a likelihood of confilsion.
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`4.
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`Applicant’s Low-Priced Goods are Subject to Impulse Purchase
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`It is well settled that consumers pay less attention when buying on impulse, or when
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`purchasing inexpensive items. E. & J. Gallo Winery v. Consorzio Del Gallo Nero, 782 F. Supp.
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`457, 20 U.S.P.Q.2d 1579, 1584 (N.D. Cal. 1991). Purchases made on impulse increase the
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`likelihood of confusion as to the source of the products. Id.; see also Helene Curtis Indusz‘., Inc.
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`v. Suave Shoe Corp., 13 U.S.P.Q.2d 1618 (T.T.A.B. 1989). As Applicant does not yet sell its
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`product, it is not clear as to whether it will be an inexpensive product subject to impulse
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`purchase. But if review of the XPlay product and Applicant’s discovery responses are any guide,
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`then likely confusion seems evident. Applicant’s XPlay product sells for about $30 and even
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`uses a photo of Apple’s IPOD player on the packaging. Thus, someone in a retail store seeing
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`the XPlay software box on a shelf showing a photo of the Apple product and selling for a
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`relatively low price could easily purchase the software believing it to be made by Apple. If the
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`same facts are true for the XPOD product, then confusion would be likely in that situation as
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`well. Hence, this factor favors a finding that a likelihood of confusion exists.
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`5.
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`Apple’s IPOD Mark is Strong and Famous
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`“[T]he strength of a mark depends ultimately on its distinctiveness, or its ‘origin-
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`indicating’ quality, in the eyes of the purchasing public.” McGregor-Doniger Inc. v. Drizzle
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`Inc., 599 F.2d 1126, 202 U.S.P.Q. 81, 87 (2d Cir. 1979). The more distinctive the mark, the
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`more likely confusion will result from its infringement. Daddy ’s Junky Music Stores, Inc. v. Big
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`Daddy ’s Family Music Ctr., 42 U.S.P.Q.2d 1173, 1177 (6th Cir. 1997). Further, the fame of a
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`mark is a dominant factor in the likelihood of confusion analysis, “independent of the
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`consideration of the relatedness of the goods.” Recot, Inc. v. Becton, 214 F.3d 1322, 54
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`U.S.P.Q.2d 1894, 1898 (Fed. Cir. 2000). Thus, the fame ofApple’s mark is an important factor
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`and one that weighs strongly in Apple’s favor.
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`Apple’s IPOD mark is strong and famous. First, the term “IPOD” is an inherently
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`distinctive and fanciful term. Second, by virtue of its registration, the IPOD mark is entitled to a
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`presumption of validity and exclusivity that prohibits the use of a confusingly similar mark.
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`Third, and most importantly, over the past three years, Apple’s IPOD mark has achieved such
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`recognition and distinction amongst the consuming public due to the product’s originality,
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`popularity, and massive promotion that it has become a famous mark, entitled to broad
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`protection.
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`The IPOD player is one of the most popular portable digital media players in the world.
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`Within two months of launching the product, Apple sold over 125,000 IPOD players. As of
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`September 2004, Apple has sold approximately 5.7 million IPOD players, 4.4 million of which
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`were sold in 2004. Apple has aggressively marketed the IPOD player on television, in print
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`advertising, outdoor advertising such as billboards and posters, and on the Internet. The IPOD
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`mark has truly become a household name within just three years and has achieved distinction as
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`a famous mark.
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`“Famous or strong marks enjoy a wide latitude of legal protection.” Kenner Parker Toys
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`Inc. v. Rose Art Indust., Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992), cert.
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`denied, 506 U.S. 862 (1992). As a strong mark, IPOD “casts a long shadow which competitors
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`must avoid.” Id. Hence, this factor favors a finding that Applicant’s adoption and use of the
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`XPOD mark will create a likelihood of confusion.
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`MOTION FOR SUMMARY JUDGMENT
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`6.
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`There are No Similar Marks on Similar Goods
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`There is no evidence of record that other parties use or have used IPOD for portable and
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`handheld electronic music devices and related software. Further, the statutory presumption of
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`exclusivity afforded Apple pursuant to 15 U.S.C. § 11 l5(a) has not and cannot be rebutted. This
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`factor undeniably favors a finding of a likelihood of confusion.
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`7.
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`Apple Uses its IPOD Mark on a Variety of Goods
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`Apple uses its IPOD mark not only on its popular media player but also on software for
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`that player, which is the subject of Apple’s IPOD registration. Thus, the scope of Apple’s rights
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`in the IPOD mark is broad, and exclusive, for a wide range of goods relating to digital media
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`players and related software. Applicant’s use of XPOD will infringe these broad rights, and thus
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`this factor favors a likelih