The Board affirmed a refusal to register the mark IPOD for printed materials and publications "sold or distributed in connection with handheld mobile digital media devices," on the ground that Apple's specimens of use (user manuals) did not show the term in use as a trademark for "goods in trade." In re Apple, Inc., Serial No. 78521891 (November 13, 2015) [not precedential].
The Trademark Act defines a trademark as something being used "to identify and distinguish his or her goods" and "to indicate the source of the goods." These definition "carry the necessary implication that a prerequisite to obtaining a trademark is that the subject matter to which it applies must be goods."
"Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be 'goods in trade.'" In re Thomas White, Int'l, Ltd., 1006 USPQ2d 1158, 1161 (TTAB 2013) (investment reports not goods in trade). The question, then, was whether Apple's printed materials qualified as "goods in trade." Incidental items like letterhead, invoices, and business forms which bear an entity's trademark do not generally qualify as goods in trade.
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Apple argued that its printed materials fill the bill because they bear the mark, are transported in commerce, and have utility to consumers of its products. Examining Attorney Sui Duong maintained that the materials are provided only incidentally with the iPod device, are not sold or distributed independently of the device, and have no viable existence apart from the device.
To determine whether an item is merely incidental to a primary product or service, we consider such factors as whether it: (1) is simply a conduit or necessary tool useful only in connection with the primary goods or services; (2) is so inextricably tied to and associated with the primary goods or services as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the primary goods or services. Lens.com, 103 USPQ2d at 1676 (items incidental to services not independent goods in trade).
Apple contended that Lens.com should be limited to services, but the Board observed that the case is not so limited. The general question is always the same: "what is being offered for sale?"
The Board concluded that all three Lens.com factors support the refusal. The materials are paper inserts (provided in the same boxes as the goods) that provide nothing more than elementary guidance to iPod purchasers but not other consumers. There was no evidence that the materials are sold independently. And there was no evidence that consumers patronize Apple stores seeking these inserts.
Applicant's substitute specimens, consisting of third-party manuals for iPod accessories and compatible apparatus, suffered from the same deficiencies as the original specimens.
And so the Board affirmed the refusal.