1 November 2022Trademarks

Apple takes on USPTO in TM challenge

Apple has sued the  US Patent and Trademark Office (USPTO) after it refused to register its ‘Smart Keyboard’ mark because it is generic.

The complaint—filed Friday, October 28 at the  US District Court for the Eastern District of Virginia—claimed that the word mark ‘Smart Keyboard’ had developed a secondary meaning as a result of Apple’s “substantially exclusive use” over five years.

The ‘Smart Keyboard’ mark is used in connection with a tablet cover that can function as a stand with the help of magnets, and also includes a built-in keyboard.

Launched seven years ago, the ‘Smart Keyboard’ is part of Apple’s SMART family of products for its iPad series. The USPTO has previously registered Apple’s other SMART products, including ‘Smart Cover’, ‘Smart Case’ and ‘Smart Folio’, as trademarks.

An examining attorney at the USPTO rejected Apple’s application in 2018. On appeal against the decision, in January last year, the  Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney’s decision.

Apple again appealed against the decision, but the TTAB again affirmed the examiner’s refusal to register ‘Smart Keyboard’.

In its decision, the TTAB found that the mark was generic for “technologically advanced keyboards”.

However, in its complaint, Apple argued that ‘Smart Keyboard’ has rarely been used to refer to anything other than Apple’s accessory.

“This strongly indicates that consumers do not understand or use ‘smart keyboard’ as a generic ‘everyday’ term,” said the complaint. “If it did, it would be used widely in the industry in marketing, in the categorisation of goods in retail, and by product reviewers.”

Apple also claimed that, in addition to its own ‘Smart’ trademarks, the USPTO had granted trademark registrations to hundreds of trademarks in the technology space that consist of ‘Smart’ with another word.

“Deciding that a phrase is generic is a decision with a profound impact on the trademark owner since it forecloses the possibility that trademark rights can ever develop,” added the suit.

Apple has asked the court to order the USPTO to register the word mark: ‘Smart Keyboard’.

The technology company said: “Absent this appeal, third parties, including Apple’s competitors, could take advantage of the significant goodwill and brand recognition that Apple has built in the ‘Smart Keyboard’ mark over the past seven years.

“This would leave consumers confused as to the source of iPad accessories and risk a significant degradation of Apple’s brand if third parties are allowed to market and sell inferior tablet covers, stands, and keyboards under Apple’s valuable brand name. Trademark law is meant to prevent precisely this type of confusion.”

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