Author: Vamika Wadhwa, V year of B.A.,LL.B. from Maharaja Agrasen Institute of Management Studies, IPU
Apple Inc., a well-known brand, has always been in the news. In December 2021, Apple Inc. filed a notice of opposition against the movie Apple Man. Apple Man is a short Ukrainian film that is based on a superhero who can aloft apples in the air. The question thus arises: why has Apple Inc. filed a notice of opposition against this film? This article answers this question and discusses class 9 (International classes) of the trademark. Later, it focuses on the possible legal remedies available to the parties.
On November 22nd,2020, Vasyl Moskaltheno, the director, applied for a trademark under class 9 in the U.S Patent and Trademark Office. He wanted to protect the film and the devices used in it. After various extensions granted to the company (Acc. To section 13 of U.S Trademark law), on the 6th December 2021, Apple filed a notice of opposition against the registration of this trademark.
The notice mentions two issues; the first is that the registration of movies may cause consumer confusion, which is a violation of Section 2(d) of the Lanham Act. A trademark’s main objective is to distinguish between the goods and services of one seller and another and it helps to differentiate between the products. The notice also stated that, though the name of the movie consists of the word "man", Apple Inc. is so famous and instantly recognizable that the similarities in both these trademarks might cause the ordinary consumer to believe that the movie is related to, affiliated with, or endorsed by Apple. Another point is that Apple has many terms, such as Apple TV, Apple Music, Apple News, etc., which can also lead to consumers thinking that the applicant’s mark is a further extension of Apple. Apple in the past has offered various services offering similar kinds of products, such as gaming, e-books, video-on-demand, films, etc. This can deceive the consumer.
The second ground mentioned by the company is regarding the dilution of a famous mark. The well-known trademark states that it is the kind of trademark that a segment of society is aware of. Apple Inc. fits into this definition properly. The company gives proper evidence through various surveys conducted by Forbes, Microsoft, and Spectrum Enterprises regarding the trademark being a well-known trademark. These surveys showed that Apple has been at the top of the list and hence it is one of the world's most famous brands. Apple also makes the statement that it will damage the reputation of the mark and that it can cause dilution in the minds of consumers. This is a violation of Section 43 of the United States Trademark Act. The company also views that the applicant’s mark is similar in appearance, meaning, and impression with regards to the apple mark, and if the registration is granted, apple will also be able to use the applicant’s mark inference to the prima facie of the case.
Vasyl Monskaleno has not issued a written statement, but he has made it clear through media that he prefers to resolve the matter through negotiation rather than litigation. Even though, both the parties are engaged in negotiations and have requested the court for an extension which was granted by the court. Both the products fall under class 9 of the trademark. This class focuses on various categories such as computer software, apparatus, and instruments for scientific research in laboratories, safety equipment, cinematography cameras, cinematographic films, etc. The US Patent and Trademark office divides 45 different classes of products and services. The purpose of these classes is to help the applicant avoid trademark objections in the future and allow smooth and streamlined registration of the mark. In this particular case, the products are different from one another, yet the description of the class of trademark falls into both categories. Therefore, in my view, it can be a reason to create confusion in the minds of consumers.
As stated above, Apple Inc. talks about the confusion that might arise due to the name of the movie. This confusion isn’t related to the name but arose because of the registration of both the products in the same class. As stated above, class 9 covers various categories. These categories are different from each other, as seen in this case, where Apple Inc. covers the articles related to computer software. On the other hand, a movie seeks registration for cinematographic equipment and film. In my view, these two are very different categories, clubbed together in a particular class. Hence, to reduce confusion this particular class should be subdivided for the smooth functioning of trademark registration.
Apple Inc. mentions Section 43 of US Trademark Law in its notice of opposition, which discusses dilution by blurring and mentions a few factors such as the degree of similarity between the mark and the mark, the degree of recognition of the mark, and the user's intention to associate with a famous mark. But there are some exceptions. This case is a perfect example of an exception. According to the facts of this case, it might seem to be a perfect example of dilution, but from my point of view, this case is an exception and hence is covered in section 43(3) (Exclusion) of the act. Apple is a very generic word that is used across the world. Even though it is a registered trademark, the movie describes the word differently, so I believe it is a fair use of the trademark.
In conclusion, it seems that Apple might have some valid points, but considering the mark used in the movie is completely different, it is fair use. Apple should be granted registration under sections 8 and 15 of the act. It should also be noted that Apple Man has suffered from damage to its reputation, and in my opinion, certain relief should be granted to the movie maker.
PATENT AND TRADEMARK OFFICE. (2013). U.S. Trademark Law: Federal Statutes https://www.uspto.gov/sites/default/files/trademarks/law/Trademark_Statutes.pdf
MANDOUR & ASSOCIATES, Trademark Class 9, Retrieved from, www.mandourlaw.com/trademark-class-9/
SCRIBD.(5 May 2021). Apple TTAB Opposition. Retrieved from https://www.scribd.com/document/556305013/Apple-TTAB-Opposition
Farfas.B. Trademark Class 9: Computers and Scientific Devices.Nolo.Retrieved from https://www.nolo.com/legal-encyclopedia/trademark-class-9-computers-scientific-devices.html
Fabiosa. C. & Villamor .L. A.(4th February 2022) Apple vs. Apple-Man, SUNSTAR.Retrieved from https://www.sunstar.com.ph/article/1920101/cebu/business/apple-vs-apple-man
Cho .W. (1st February 2022) , Apple Objects to ‘Apple-Man’ Trademark for Ukrainian Indie Film HOLLYWOOD REPORTER Retrieve from https://www.hollywoodreporter.com/business/digital/apple-man-trademark-fight-1235085326/
UNITED STATES PATENT AND TRADEMARK OFFICE, Retrieved from , https://tsdr.uspto.gov/#caseNumber=90335369&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=documentSearch