Apple Denied Trademark Protection For “Multi-Touch”

By Joseph Mandour on September 28, 2011

California Trademark RegistrationLos Angeles – The Trademark Trial and Appeal Board recently upheld the decision to deny trademark protection to Apple for the term “Multi-Touch.” Apple has used the term to refer to a variety of functions that can be performed using the iPhone or the track pad of MacBooks including, tapping, scrolling, pinching, and swiping. While Apple has had success marketing this feature, the TTAB concluded that the term had not acquired sufficient distinctiveness to receive trademark protection.

A trademark may be either inherently distinctive or may acquire distinctiveness through use in commerce. Arbitrary or fanciful trademarks, such as Google, and suggestive trademarks, such as Coppertone, do not need to acquire secondary meaning for protection. Generic words (soap, refrigerator) are not eligible for trademark protection. Descriptive trademarks may be eligible for trademark registration if they have acquired secondary meaning through use in commerce. In other words, a descriptive trademark must do more than describe the product. To be eligible for registration, a descriptive trademark must create an association in the minds of consumers between the trademark and the source of the product or service.

In this case, the TTAB noted that the term “Multi-Touch” was largely descriptive. The reviewing attorney noted that the term “Multi-Touch” had been referenced in a number of scientific publications and even the New York Times to describe certain functions. The TTAB found that the term “Multi-Touch” served to identify a type of technology rather than Apple Computers, Inc. In addition, the features that the term describes are found on several products not manufactured by Apple, evidencing the term’s descriptive nature.

Despite the success of Apple products featuring Multi-Touch technology, the TTAB denied the appeal as Apple could not demonstrate that the trademark had acquired distinctiveness. The TTAB noted that the more descriptive a term, the more difficult it is to acquire distinctiveness. Finally, the TTAB reiterated that success of products bearing the trademark is not sufficient evidence of acquired distinctiveness for trademark registration. Though the iPhone is widely successful, the term “Multi-Touch” had not acquired sufficient secondary meaning for trademark registration considering its descriptive qualities.

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