Sector Labs, a California company that makes a smartphone-size video projector, filed a federal trademark registration in 2003 for the name “video pod”.
Apple, Inc. challenged the registration, filing an opposition to Sector Lab’s registration with the U.S. Patent and Trademark Office. Apple claimed (among other things) that Sector Labs’ “video pod” “is extremely similar to Apple’s [“iPod” trademarks]”, “consists in part of a significant portion of [iPod] and the entirety of POD, which consumers use as an abbreviation to identify and refer to Apple’s iPod mark and products”, and that Video Pod “covers a device that is or will be used to transmit video for entertainment and other purposes” – much like Apple’s iPod.
Apple’s legal position is that Sector Labs registration would cause source confusion, namely a likelihood of confusion among consumers as to the source of the two companies’ products, and trademark dilution. Or in other words, “video pod” would dilute the value of Apple’s iPod franchise by reducing the exclusive association in the marketplace of “pod” with Apple and its ubiquitous iPod.
Briefs have been filed and amended and re-filed in the case (Apple’s final rebuttal brief was filed just this past week). The case is pending decision at the appeals level of the trademark opposition process, at the Trademark Trial and Appeal Board. Case status and documents can be found here.
The plain English version of events may be only slightly more compelling than the legal arguments, but they come down to this: Apple argues that use, by anybody other than Apple, of the word “pod” in an electronic, hand-held communications or entertainment device cannot be anything but a barely opaque attempt to profit on the goodwill of the iPod brand. Sector Labs argues that “pod” is a common word, so that whether or not there is a marketplace association with the iPod brand, Apple has no right to corner the market on a common word. Apple’s counters that “cornering the market” is not accurate, since its interest in this particular use is due only with the particular field and market in which it is used – namely, electronics and entertainment devices.
At that point, the arguments dig down further, into issues such as:
1. Is “pod” a generic or common term? Or is it instead uniquely associated with Apple? Questions involved here include whether even if – as Apple claims – “iPod” became established as “famous” in the trademark sense, has subsequent use of the word “pod” in the marketplace come to mean something beyond Apple’s use? A commonly cited example of this is use of the “Kleenex” (see this discussion) brand for tissue paper, and the risk for trademark owners of a distinctive trademark becoming generic.
2. A further complication here for Apple is its reliance on its earlier trademark registration for “iPod”, rather than “pod” without the “i”. Apple did obtain trademark registration for “pod”, but only in September 2010 after commencement of Sector Labs’ registration and, more importantly, based on a “first use” date later than Sector Labs’ claimed use. Thus, Apple could not rely on its “pod” registration to challenge “video pod”.
Even if “pod” may have once been a common term, has Apple’s use of the term established such a branding presence in the marketplace such as to, in effect, change the status of the term from commonplace to distinctive?
As an alternative argument to its source confusion and dilution claims, Apple argued that “video pod” is descriptive – meaning, it is the only way to describe a particular thing, and therefore no one person can own rights to the term. Logically, then … wouldn’t that mean that “pod”, too, is descriptive? To be clear, Apple did not argue that “pod” – without “video” – is descriptive. Still, this is a tricky argument for Apple, because it does come close to conceding Sector Labs’ main point, that “pod” is not uniquely associated in the marketplace with Apple but is instead common or generic. And that would create grounds for challenging the validity of Apple’s “pod” registration.
Of course, this also creates risks for Sector Labs, for the same reason. Sector Labs would not want a legal conclusion that “pod” is generic to carry over to “video pod”.
3. As noted above, Apple might argue that its interest in blocking Sector Labs’ trademark registration is due to its perceived threat in the electronics marketplace only, and not beyond. To this point, Wired last year reported Facebook’s challenge to “Teachbook”, making similar arguments to those made by Apple against Sector Labs.
Facebook also sought to preempt the same kind of criticism for overreaching as Apple has faced. Wired quoted a Facebook spokesman:
We have no complaint against Kelly Blue Book or Green Apple Books or others. However, there is already a well-known online network of people with ‘book’ in the brand name. Of course the Teachbook folks are free to create an online network for teachers or whomever, and we wish them well in that endeavor. What they are not free to do is trade on our name or dilute our brand while doing so.
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