At the time of the agreement, there was speculation Apple might want to use the term for a wearable glasses product to compete with Google Glass because eyeglasses were specifically part of the classification of the Harley Davidson trademark. However, a few months later the internet is now buzzing more about an iWatch worn on the wrist to compete with Google Glass. So maybe iGlass wasn’t ever the reason.

It is possible Apple just changed directions and the original speculation was correct. Or perhaps Harley Davidson was simply able to cash in on a bad boy reputation that extends to their intellectual property. Harley Davidson is savvy about intellectual property and they are no stranger to litigation. The classic example comes from a fairly well known trademark application from the mid 90s. For six years, Harley Davidson fought to trademark the sound of their engines. It was an interesting filing because few sound trademarks are applied for and fewer granted. The really aggressive part comes from the fact the most distinctive part of the sound of the Harley Davidson engine comes from the design of the motor. This is a fact I presume Harley Davidson couldn’t argue at the time because a trademark cannot result from something functionally related to the product. Despite that, Harley Davidson made the attempt for six years before the application was withdrawn in 2000. Of course Harley Davidson stood to gain a mark that would have effectively provided protection of their engine designs for as long as they desired. But that was a long time to fight off the combined efforts of multiple competitors challenging an application for a mark Harley Davidson would know was directly related to the engine structure.

In the end, Harley Davidson didn’t get the mark but the fight may have been worth the time and effort. Some people still mistakenly believe the application was granted and people are still talking about it today. It may have also helped earn Harley Davidson a reputation and an agreement with Apple to avoid litigation over a trademark term Harley doesn’t even appear to be using prominently.

The above being said, there is a two sided policy question that should be raised.  On the side of the USPTO, it could be argued that, as stated by the Examiner originally, the term is simply descriptive and therefore adds nothing to the original mark to distinguish it aside from the description itself.  Aside from being a waste of time for the USPTO, this could potentially open up more litigation for what the trademark holder thinks is a “close” case.  For example, if the company PODS, which does self-storage containers, suddenly sold Mini-Pods, or POD Minis, would Apple initiate a suit?  Theoretically that should not be the case because “Ipad” is broader than “Ipad Mini”and if POD Minis would not infringe Ipad, then Ipad Mini should not be infringed either.  However, one can see the plausible arguments that could be seized upon by overzealous trademark holders, and, where often the receiver of the infringement venom is a small operation that can ill afford representation in a trademark infringement suit, the effects could be disastrous for some businesses.

On the other side is the question as to why Apple even wants this particular trademark?  It seems superfluous to spend money on “Ipad Mini” when “Ipad” is already locked up.  There are small arguments that it will bolster the strength of the original mark and may be used as a backup in case “Ipad” is ever contested.  These are tenuous arguments at best, however, and from my perspective seem to be a waste of resources.  Of course my typical client does not have the resource base of Apple and therefore I tend to preach a more conservative approach to IP protection.  Regardless, the addition of the term mini is, in my opinion, worth little to Apple or its investors and perhaps should not have been pursued in the first place.

To understand the reasoning behind the Examiner’s finding, a little background in trademark law may be in order.  First, the purpose of a trademark itself is to inform the consumer as to who is providing the goods in question.  When you see Coke on a can, you clearly understand that it is the Coca-Cola Company that is supplying this good and no other company can use the term “Coke” for soft drinks because it would confuse the consumer as to the source of the product and could damage Coca-Cola’s good standing.

Second, the purpose of the Trademark Examiner is to ensure that the mark is distinctive enough to actually inform the consumer.  Two of the ways it would not be distinctive is if either the term is too close to another’s mark (likelihood of confusion) or if it is too descriptive.  The first of these is somewhat obvious but the second can be trickier.  Marks are defined, generally, as arbitrary, suggestive, descriptive or generic, with the argument for an acceptable mark being strongest to weakest in that order.  For example, the trademark “Apple” is arbitrary since the word itself has no connection to electronic devices.  Suggestive marks may include those such as “Year Around Brown” which is a tanning salon.  The name somewhat suggests a tanning salon, but there is no actual descriptive terminology within that mark.  Arbitrary and suggestive marks are inherently distinctive due to their lack of being descriptive.  Descriptive marks like “mini” are only describing a characteristic of the article itself.  Thus if your local taco shop offered the “Big Burrito” it would not likely be awarded a trademark because it is clearly describing  a characteristic of the burrito.  Generic words are those which are simply the conventional name given to an article, such as “burrito.”

In the present case, the problem lies not with the “Ipad” portion but the “Mini” portion.  The Examiner is simply stating that while Apple may obviously have and use its “Ipad” mark, the term “Mini” does not add to the distinctiveness of the mark but simply describes the fact that the newest Ipad is smaller than the old one and that there are clearly Ipads of varying sizes.  For example, this may be likened to branding in the automotive industry.   Ford, for instance, names one vehicle a Ford Fiesta and another a Ford Mustang (i.e. arbitrary or suggestive) as opposed to a Ford economy car and aFord sports car, which would be descriptive and adding nothing to distinctiveness of the term “Ford.”  The Examiner will resist allowing such a mark because policy wise, you would not want generic and descriptive marks to become trademarks and thus unavailable for everyday usage.  For instance, if “Big Burrito” was trademarked and you owned a taco stand that had several sized burritos, you would be hampered by the fact that you could not use the term “big” in association with your burrito.

Time will tell if Apple can overcome the rejection, but it will definitely be hard to argue that the term is being used for anything but indicating the relative size of the new Ipad.

Back to the story… The website Pinterest (http://www.pinterest.com) has blossomed as of late and with it controversies related to copyrighted works with particular focus on photographs.

The problem, in short, is that users of Pinterest are pinning the works of others onto the Pinterest site. While some may ask why photographers would not want the added exposure, there are several concerns. The first is that the pinned works do not include back links to the original authors and in fact there has been some evidence that web searches for these works actually lead to Pinterest. Second, Pinterest includes language that any works posted thereon become the sole property of Pinterest and Pinterest’s rights are nonrevokable. This is particularly hard to swallow since Pinterest does not allow user’s to post their own works and therefore can only be posting, and asserting rights to, works which must be owned by a third party. Third, there have been stories that Pinterest is allowing other websites to freely use these posted works.

There are, however, remedies available to artists regardless of whether or not they have registered their work. These remedies come in at least three basic forms. 1) File a lawsuit 2) Utilize the Digital Millennium Copyright Act (DMCA) or 3) Take actions to prevent the infringement.

Filing a lawsuit: Generally very expensive and unless the work has been registered, filing a lawsuit is probably not the most advisable route. Additionally, filing a suit is very time consuming and only justifiable when the infinger is willfully infringing and will not pay a license fee.

The DMCA: The DCMA was enacted in 1998 and includes specific provisions related to internet content. Specifically, it creates a safe harbor for ISPs so that they are not sued for infringement due to the sites they serve. However, should a copyright holder assert to the ISP that a work is being infringed, it is the ISP’s duty to prevent further infringement and should either shut down the site or ensure that the site removes the infringing post. However, the accused can rebut the infringement characterization and if that occurs, the copyright holder has 14 days to file suit. That being said, it is free to make the assertion and can be very effective. With respect to Pinterest, DCMA actions can be made directly to Pinterest (http://pinterest.com/about/copyright) or to Amazon who is the ISP for Pinterest (http://aws-portal.amazon.com/gp/aws/html-forms-controller/contactus/AWSAbuse).

Take Actions to Prevent Infringement: There are actions that the copyright holder can take to either stop continued infringement or to prevent it in the first place. With respect to current infringement, it will often suffice to simply contact the poster and inform them that a copyright is being infringed. Often the offender does not realize that the work is copyrighted and certainly is not looking for trouble. Once informed of the situation, and if need be the repercussions of continued infringement, the work will typically be removed from the site. To prevent future infringement, a photographer may consider putting watermarks on any publicly displayed photos to stop others from wanting to re-post the photograph. Also, photographers may want to include the “circle C” © to indicate to others that the photographer considers this a copyrighted and non-sharable work. While the circle C does not provide any legal significance, it will at least deter some people from copying the image. These actions are simple, free and usually fast acting.

The above should be considered only an overview of the problems and remedies associated with copyrights in general and specifically with web based usage of copyrighted works. Every case is unique and therefore you may want to consider contacting an attorney before you undertake a course of action.

Kaufhold Law Office is a boutique law firm based in Sioux Falls, South Dakota practicing only patent and trademark law.

This provides our clients with a high degree of specialization so that they can be assured of competent, reliable and proficient intellectual property counsel.
As patent attorney specialists, we help solo inventors to large companies protect their intellectual property with legal services that include patent searches, trademark searches, and the filing and prosecuting of both patent and trademark applications.