Markable Design
Just how hard it can be to win a trademark for a product design came clear when Apple finally got a mark for its iPod design, report David Orozco and James Conley in the Wall Street Journal (5/12/08). Apple’s initial application was summarily rejected by the case examiner at the Patent and Trademark Office as “too broad.” That was in 2006 and Apple had simply submitted a drawing of the iPod and “requested a legal description of the trademark that was so broad it could be taken to refer to any media player.” However, in rejecting the application, the case examiner also offered some advice, such as that Apple should cite “specific features being claimed, e.g., the concentric circle design, etc.”
The examiner also said Apple had to provide evidence of an “association in consumer’s minds between the product design and Apple,” as well as document how much money the company had spent on building the association. Obviously, Apple had done a lot of things right. First, it had given its product a unique name and trademarked it. Second, it had “a history of unique product designs,” helping Apple to “make the case that consumers identify the unique design exclusively with the company.” Third, it invested heavily in advertising to “build the desired association in consumers’ minds by highlighting the product attribute, the company name and little or nothing else.”
Fourth, Apple applied for a trademark “for a two-dimensional symbol representing the device and another for a trademark to be used on co-branded products” (example here). That second trademark was especially clever because the symbol is licensed to third-party makers of iPod accessories, meaning, in effect, that “these companies are paying Apple to build the association between the iPod shape and Apple.” Finally, Apple deliberately initially applied for a very broad trademark to “tease out what the examiner (was) looking for without making the trademark claim any narrower than is required.” The best part is, Apple’s trademark on the iPod shape “can remain in force potentially forever … unlike more commonly used utility and design patents” which “expire after a set number of years.” ~ Tim Manners, editor
