Apps and oranges: Behind Apple’s “bullying” of trademarks
The company has opposed songwriters, school districts and food blocks for trying to mark names or logos with an apple, a pear or a pineapple.
Ryan Mac reported from Los Angeles and Kellen Browning from San Francisco.
When Genevieve St. John started a sex and life training block in 2019, designed a logo for the business of a neon green and pink apple, which was cut to look like female genitals.
Not long after applying for registration of the logo with the U.S. Patent and Trademark Office that year, Ms. St. John received an unpleasant surprise. His request had been challenged by Apple.
In a 246-page opposition filing, lawyers for the iPhone maker wrote that the St. John was “likely to tarnish Apple’s reputation, which Apple has cultivated in part by trying not to associate with overtly sexual or pornographic material.”
Mrs. St. John, 41, a human resources professional in Chandler, Arizona, had fallen. Without the money to hire a lawyer and take on the tech giant, he decided not to respond to Apple’s challenge. This paved the way for a predetermined trial in favor of the electronics giant.
“I wasn’t even making money with that,” Ms. St. John on his blog, which he has paused. “But it’s Apple and I won’t argue with them because I don’t have a million dollars.”
Mrs. St. John is one of dozens of entrepreneurs, small businesses and corporations that Apple has pursued in recent years to apply to brand names with the word “apple” or fruit logos with spikes. Between 2019 and last year, Apple, the world’s most valuable public company with a value of $ 2.6 trillion, filed 215 trademark oppositions to defend its logo, name or product titles, according to Tech Transparency Project, a non-profit control body. That’s more than the 136 trademark oppositions that Microsoft, Amazon, Facebook and Google filed collectively during the same period, the group said.
Apple is a more common word than company names like Microsoft or Google, and the high rate comes in part from that. Many imitators, especially in China, have also tried to erase the Apple name or logo from the technology and entertainment industries to make money.
But Apple has often targeted entities that have nothing to do with technology or have an infinitesimal size. He has even set his sights on logos involving other fruits, such as oranges and pears.
Its quarries include a block of Indian food, the Department of Energy, a Wisconsin public school district, and Mattel, which makes the Apples to Apples card game a success. Apple also opposed an orange logo used by an edge collection company called Citrus. Last year, it settled a dispute with a meal planning app called Prepear after the app’s creator agreed to change a leaf on its pear logo to make it look less like Apple’s.
The scale of the company’s campaign equates to “school bullying tactics, and they are unnecessary for Apple to protect the public from confusion,” said Christine Farley, a professor at Washington College of Law at American University.
Citrus fruits; the Department of Energy; Super Healthy Kids, the company behind Prepear; and the Patent and Trademark Office declined to comment. Mattel did not respond to requests for comment.
Apple spokesman Josh Rosenstock said the law “requires” the company to protect its trademarks by filing with the Patent and Trademark Office if there are any doubts about new trademark applications.
“When we see apps that are too broad or that can be confusing to our customers, our first step is always to get in touch and try to resolve them quickly and amicably,” he said. “Legal action is always our last resort.”
Apple has filed trademark oppositions against entities that have already received approval for the Patent and Trademark Office logo or name. In these oppositions, the company has argued that “Apple’s brands are so famous and instantly recognizable” that other brands will weaken the strength of their brand or make the “normal consumer believe that the applicant is related, affiliated, or endorsed by Apple “. ”
Some of the recipients said that while they were convinced that their trademarks did not infringe on Apple’s dominance, they could not prove that the challenges were frivolous because they did not have the resources to fight the company before the Trial Board. and Trademark Appeal. Between 2019 and 2021, 37 entities, or about 17% of those opposed by Apple or its subsidiary Beats Electronics, withdrew their trademark applications. Another 127 people or organizations, or 59 percent, did not respond to the challenges and failed, according to the Technology Transparency Project.
Stephanie Carlisi, a freelance singer and songwriter, said she was surprised when Apple argued with the trademark of her stage name, Franki Pineapple, in 2020. In documents, Apple acknowledged that an apple and a pineapple were different, but said they were “both.” the names of the fruits and therefore convey a similar commercial impression ”. The company also considered opposing the logo of Mrs Carlisi, a pineapple grenade that explodes, according to documents.
“It’s not even an apple,” said 46-year-old Carlisi, who has just started playing music and has seven monthly listeners on Spotify. “You’re telling people they can’t appropriate fruit or anything that has this connection to Apple, which is this gigantic company.”
Founded in 1974, the company originally known as Apple Computer was not always so litigious. Prior to 2000, it filed only a handful of trademark oppositions each year, with a maximum of nine in 1989, according to the Technology Transparency Project. At least one of these oppositions was to an electronics retailer selling computer parts under the name “Pineapple.”
In those days, Apple Computer was better known as a defendant in trademark cases. In 1978, the Beatles-founded holding company Apple Corps sued Apple Computer for trademark infringement, the first in a series of legal disputes between the two companies over the following decades. In 2007, the two apples finally agreed to give the Silicon Valley company all the “Apple” related brands.
At the time, Apple, which had removed “Computer” from its name, filed dozens of annual trademark oppositions.
As Apple grew, its legal team probably wanted to avoid diluting the brand, said Barton Beebe, a professor at New York University Law School. In intellectual property theory, the legal argument is not to confuse someone with two different trademarks, but to grant a new one would reduce the value of the logo or the name of a home, he said.
“Dilution is death by a thousand cuts, and you should avoid the first cut,” Mr. Beebe. “That’s the judges’ argument.”
Since then, Apple has created a template to challenge trademark applications, said Ashley Dobbs, a law professor at the University of Richmond. This is evident in a comparison of his responses to two applicants, where he used a cookie-cutter opposition language.
One response was to the Appleton Area School District, a 16,000-student public education system in Appleton, Wisconsin, which has a three-interlaced apple logo. The other was Big Apple Curry, a block of Indian cuisine in New York City, about his name. In Apple’s statements against them, entire sections were copied word for word to establish the value of the company’s brand – “an estimated $ 206 billion valuation” for Forbes in 2019 – and its “extraordinary level” of fame and consumer recognition “.
School district representatives and Big Apple Curry, both of whom withdrew their applications, declined to comment.
“There is economic profitability by chasing several people with the same argument,” Ms. Dobbs. He added that Apple had overtaken other companies, such as Disney and Warner Bros., which have been suing over intellectual property.
Sometimes, Apple will ask the Trademark Processing and Appeal Board for extensions to present a new trademark and then contact that employer or company to modify its application. Lacye Brown, 38, an Atlanta artist who created a cartoon of a fictional witch doctor named Dr. Apples said it was “devastating” when Apple filed documents to ask for more time to challenge its trademark application in 2020. trademark application after talks with Apple’s lawyers, who never went present an official opposition.
But last year, Apple questioned when Ms. Brown tried to mark his podcast, “Talk About Apples,” which was based on his character Dr. Apples. In opposition, the company argued that people might confuse their podcast with their podcast service.
“He’s an African-American wizard who talks about fantasy fiction and monsters and ghouls,” Ms. Brown said. “No one has ever affiliated me with Apple.” However, he declined the trademark application for his podcast.
In 2019, Dr. Surya Reddy applied for the trademark of the logo and the name of Apple Urgent Care, which runs clinics in Riverside County, California. Apple objected, noting that its logo, like its own, included an apple that was missing a piece and a “separate leaf at an angle.”
Dr. Reddy said he thought Apple’s case was ridiculous because it is not a health care provider. But he did not have the money to prove this theory and abandoned its application.
“I’m a small business,” he said. “Once they object, you feel so little.”
Ms. Carlisi, however, responded to Apple in court and won a grant. The company agreed to stop opposing its opposition if it included a disclaimer in its trademark application stating that Franki Pineapple, a glance at his late father, Franki, and the fruit, sometimes regarded as a rebellious and feminist symbol, was not her real name. .
Although the legal climb cost her about $ 10,000, Mrs. Carlisi was inspired. He said that his simple debut, which tries to stick him to the man and uses a known insult, was inspired by his battle with Apple.