A week before the 4th of July, Apple filed these three non-verbal trademark applications:
Clicking on each will take you to the detailed USPTO information for each application, but for our purposes here and the ease of discussion, let’s call them, A, B, and C, moving from left to right.
Clearly, each of the three contains a number of elements to form each of the claimed composite marks.
And, when design elements form the claimed mark or portions of the claimed mark, the USPTO recognizes that words are needed — at least behind the scenes — to explain and describe the claimed mark, even if those words are not part of the drawing for the claimed mark.
So, each individual piece of the mosaic must be identified and described in relation to each other piece that forms the whole collection of pieces.
Given that, how many words do you suppose were used by Apple to describe the claimed marks A, B, and C?
Sparing you the suspense, here is the answer: A = 1,008; B = 984; and C = 52.
Obviously, the more elements, and the more detailed the elements are, the more words are needed to accurately and fairly describe the claimed mark. What might that say about the scope of rights associated with each? Have a little patience on that question, please.
In the meantime, another question that arises might be, why file for all three?
My answer: To obtain layers of broad and narrow protection, to maximize the overall scope of trademark rights, and thereby keep the most competitive distance with newcomers.
Back to the question of the implications of using extremely wordy mark descriptions, although I’m certain there is not a linear formula that can be extrapolated from the number of words used to describe a non-verbal mark, it stands to reason that the more easily and efficiently a non-verbal mark is described, the greater the potential for enjoying broader and stronger rights.
In general, the more elements included in a claimed composite mark, the narrower the scope of rights, and the easier it should be to obtain registration at the USPTO without getting hung up based on potentially conflicting third party rights.
Imagine all the room for argument about the absence of likely confusion when only a few minor elements of a claimed mark overlaps with prior rights of another’s mark. The same principle should apply when it comes to enforcing those rights. When a newcomer only adopts a few of the many elements claimed in another’s prior mark, this opens the door for a healthy dialogue about peaceful coexistence without likely confusion, provided the only claimed mark is the entire mosaic as opposed to each piece or element that forms the whole.
I suspect this helps explain why Apple has either registered separately or sought to register each individual app icon as a standalone mark, and here are just a few of them to help make the point:
With all that in mind, going back to the mosaics claimed as marks A, B, and C, shown at the top of this post, I’d consider A to be the claimed mark with the most narrow scope (because it contains the most elements). Although you’d never guess it by the almost identical word count between A and B, I’d consider B to be a fair a bit broader than A because B is not limited by what surrounds it within A.
Of the three, C appears the most valuable and ground-breaking, if allowed. In my mind, it is the claimed mark with the broadest scope of rights, as may be evident by the relatively brief description of claimed mark C (but, stay tuned on whether the USPTO requires more verbiage in the required Description of the Mark section of the application during examination):
“The mark consists of of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.”
If this description survives examination at the USPTO, C will be a valuable registration for Apple as it will protect the layout of the icons without any limitations as to what the icons are, what they look like, or their various color schemes.
Curious readers might wonder why Apple didn’t provide close to the same 1,000 words for C, as it did for A and B – the answer lies in the fact that Apple used dotted lines for the internal detail of each of the twenty-two icons, so that detail is excluded from and not claimed as part of the overall composite mark shown in C.
Knowing that Apple’s efforts to obtain a federal trademark registration for the configuration of the iPhone have been opposed by Samsung and Microsoft, we’ll need to wait and see what happens with A, B, and C:
We’ll also have to wait and see whether any of them lead to any fireworks at the USPTO.
For other recent DuetsBlog coverage of Apple’s IP strategy, check out Martha’s posts, here and here.
By the way, given my word count for the day, I better wrap it up, at least for now.