Applicant Apple Inc. (“Apple”) applied to register a design mark consisting of a double musical note in an orange rectangle for computer software that processes audio content on handheld devices, shown below:
Click here to view design mark.
The PTO refused registration based on a likelihood of confusion with a previously registered mark depicting a double musical note over an orange background, covering the provision of access to nondownloadable software for adding music and video profiles on the Internet, and for listening and sharing MP3 and music playlists, shown below:
Click here to view previously registered mark.
Applicant appealed to the TTAB.
In upholding the PTO’s refusal of registration, the TTAB conducted its own likelihood-of-confusion analysis between the marks. While recognizing that the marks were not visually identical, the TTAB emphasized that the proper test is not whether the marks can be distinguished when placed side by side. Rather, the focus must be on the imperfect recollection of the average consumer, which retains a general rather than a specific impression of the marks. In this case, the TTAB emphasized, the standard consumer would recall a musical note in an orange rectangle, not whether the tune was “rising” or “falling,” or the exact color or shape of the surrounding design.
In support of its argument that the cited registration was weak and entitled only to a narrow scope of protection, Apple submitted eight third-party registrations for marks using musical notes for various computer programs. Apple did not, however, submit accompanying evidence that these third-party marks were in use or that they had been used so extensively that consumers were conditioned to distinguish between them based on small differences. Moreover, the TTAB found, Apple’s mark and the cited mark were more similar than those in the third-party registrations.
The Board rejected Apple’s attempts to distinguish between the parties’ products and services, finding that both performed similar functions, namely, controlling digital music. Indeed, the TTAB held, the similarity of the products and services was corroborated by third-party registrations, indicating that such services may originate from the same source.
In arguing that the parties’ respective goods and services were not offered under circumstances likely to lead to confusion, Apple asserted that the cited registrant’s services of providing software for processing audio were available only through the Internet, whereas Apple’s software was tied to handheld electronic devices. Noting that Apple used MP3 technology on its iPod devices and sold audio downloads through its iTunes stores, the TTAB rejected Apple’s argument.
In rejecting Apple’s argument that consumers would exercise a high degree of care, minimizing potential confusion, the TTAB emphasized that the degree of care exercised in purchasing a mobile electronic device was not necessarily the same as that exercised in purchasing applications for such device, that mobile electronic devices had become ubiquitous, and that the same group of people may be discriminating customers for some purchases and not as discriminating for others.
Finally, the TTAB considered the nature and extent of any actual confusion. Apple asserted that since it began using its double musical note design mark very publicly in 2007, no instances of confusion with the registered mark had been reported. The TTAB, however, stated that an absence of confusion was meaningful only if the registrant’s mark was used appreciably and continuously for a significant time in the same markets as those served by the applicant’s mark. The TTAB stated that contemporaneous use of Apple’s and the registrant’s marks for about a four-year period without actual confusion carried little weight.
This decision offers further support for the conclusion that it is the imperfect recollection of the average consumer, rather than a side-by-side comparison, that should govern a proper likelihood-of-confusion analysis of design marks.