In this consolidated appeal, the Board reversed the USPTO's refusal to allow amendment of Apple's mark from IBOOKSTORE to IBOOKS STORE (two words), and then found that Apple had established acquired distinctiveness for the amended mark based upon the "transfer" of inherent and acquired distinctiveness from two prior registrations for the mark IBOOKS. In re Apple Inc., Serial Nos. 85008432 and 859805671 (February 23, 2017) [not precedential].
Material alteration? "The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application."
The Board found that IBOOKS STORE "contains the essence of the original mark, and the new form of the mark creates the impression of being essentially the same mark as the mark in the original drawing." There is no additional or deleted wording, stylization, or design element. The Examining Attorney's "fine distinction" between the meanings of the two marks was, the Board found, not significant.
Acquired Distinctiveness: By seeking registration under Section 2(f), Apple conceded that its mark is not inherently distinctive. In any case, the Board found IBOOKS STORE to be "merely descriptive, if not highly descriptive" of Apple's recited services, namely, "retail store services featuring electronic publications, for use with proprietary software, provided via the Internet and other communications networks; retail store services featuring electronic publications for use with proprietary software on handheld mobile digital electronic devices and other consumer electronics," in International Class 35; and "providing an Internet website portal featuring technology that allows Internet users to preview and download electronic publications, for use with proprietary software, on a wide range of topics of general interest," in International Class 42.
Applicant pointed to its ownership of two registrations for the mark IBOOKS, one for "computer software used to support and create interactive, user-modifiable electronic books" (class 9), and the other for "software for reading electronic publications on digital electronic devices; computer software for authoring, downloading, receiving, editing, displaying, storing, and organizing text, graphics, images, and electronic publication," also in Class 9. Apple claimed that under Trademark Rule 2.41(a) it was entitled to "transfer" to its pending application the distinctiveness of the IBOOKS mark, i.e., to "tack" on the use of the registered mark to its applied-for mark.
In order to qualify for such "tacking," the new mark must be the legal equivalent of the old mark: they must be "indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both as the same mark." In addition, Apple must establish that the goods in the prior registrations are sufficiently related to the services in the new application to warrant the conclusion that the distinctiveness of the registered mark will transfer to the services listed in the application.
The Board observed that Apple disclaimed the word "store," and thus the dominant term in the applied-for mark is IBOOKS. It therefore found that IBOOKS STORE creates that same commercial impression as the mark IBOOKS. [Really? - ed.].
As to the goods and services, the Board found that the goods in the prior registrations "appear" to be closely related to the services in the involved application, since they may be used to download, display, read and store the electronic publication provided by Apple's services. In short, the goods and services provide "overlapping and otherwise closely related functions, and any differences between them are immaterial."
Therefore, the Board found that the distinctiveness of the IBOOKS mark will transfer to the IBOOKS STORE mark, and that Apple had made a prima facie showing of acquired distinctiveness for the applied-for mark.
Finally, the Board found Apple's specimen of use [see above] acceptable for the amended mark.
And so the Board reversed the refusals to register.