Apple opposes pear trademark application. APPLE v. SUPER HEALTHY KIDS

The key to the strength of a trademark is the association consumers make between a trademark and the producer of the products which bear the trademark. In the United States, registration of a trademark is not a prerequisite to gaining a right to a trademark. Using a trademark in commerce in the United States is the event that grants a user a claim to a trademark. However many trademark users choose to register their trademark with the United States Patent and Trademark Office to strength the rights associated with the trademark.

When a trademark user files an application with the United States Patent and Trademark Office to register the trademark, an examining attorney will be assigned to the application. The examining attorney will review the trademark application to ensure that the trademark meets all the statutory requirements for registration and perform a search to confirm that the trademark in the application is not confusingly similar to trademarks which are already registered. If the examining attorney does not raise an objection to the trademark application or the applicant overcomes all the objections the trademark will be published in the “Official Gazette”. After the trademark is published any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If the trademark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States under Section 66(a), and no party files an opposition or request to extend the time to oppose, the United States Patent and Trademark Office will register the trademark and send the owner a certificate of registration. After the trademark registers, the owner of the trademark must file specific maintenance documents to keep the registration live.

The 30 days after publication can be a nervous time for a trademark applicant. Even though the examining attorney has performed a search of relevant trademark, any member of the public can step forward and object to the registration of the trademark.

APPLE INC., v. SUPER HEALTHY KIDS, INC., Opposition No. 91254886 (TTAB 2020) is a case where an opposition was filed because the owner of a registered trademark thinks that a new trademark is confusing similar to an already registered trademark.

The Opposer in this case is APPLE INC. Opposer is a household name and its products are easily identified by it’s trademark, a stylized drawing of an apple with a right facing leaf and bite missing. Opposer’s trademark is reproduced above on the left. Opposer uses the trademark to identify products that it produces such as computers, cellphones, accessories and software.

Applicant is a software company that makes recipe apps. On January 26, 2017 Applicant filed Application Serial No. 87/315,348 with the USPTO to register its trademark. Applicant’s trademark is a drawing of a pear with a right facing leaf. Applicant’s trademark is reproduced above on the right.

In March 2020 an opposition the the trademark application was filed. Opposer claims that its trademark is so famous and instantly recognizable that the similarities in Applicant’s trademark will overshadow any differences and cause the ordinary consumer to believe that Applicant is related to, affiliated with or endorsed by Apple.

The applicant has answered the opposition with a blanket denial of any similarity between the two trademarks which would be likely to cause consumer confusion and a request that the opposition be denied. It will be up to the Trademark Trial and Appeal Board to make the ultimate decision on whether registration should be granted. The Polaroid factors will be used to determine whether there is a likelihood of consumer confusion. It will be interesting to see whether the TTAB thinks consumers can tell the difference between and apple and a pear.

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