INTA Bulletin

July 15, 2012 Vol. 67 No. 13 Back to Bulletin Main Page

UNITED STATES: Apple Successfully Stakes Claim to POD

The Trademark Trial and Appeal Board (TTAB) sustained an opposition to register the mark VIDEO POD based on the mark’s being merely descriptive, in addition to the likelihood of confusion with the famous mark IPOD. Apple, Inc. v. Sector Labs, LLC, Opposition No. 91176027 (T.T.A.B. Mar. 19, 2012) (non-precedential).

Applicant Sector Labs, LLC filed for registration of the mark VIDEO POD for use in connection with “video projectors using an optical means to reproduce moving picture signals on a remote surface, for business and entertainment purposes.” Apple, Inc. opposed, claiming that the mark was (1) merely descriptive, and therefore not eligible for registration on the principal register, and (2) confusingly similar to its IPOD marks.

In analyzing the descriptiveness of the mark, the TTAB focused on the connotation of the word POD, noting that the applicant appropriately disclaimed the term VIDEO. The question was whether POD added anything suggestive. In discovery responses and depositions, Sector Labs admitted that the word “pod” conveyed its video projector’s pod-like shape and appearance. However, in response to a summary judgment motion, Sector Labs’s president claimed that he was “inspired by the parallels between his dream of a family of video products and ‘pods’ of whales, or even a scene involving an ‘escape pod’ from the movie ‘2001. A Space Odyssey’ (1968).” The TTAB found these “tardy explanations” unconvincing and concluded that the term “Video Pod” merely described a pod-shaped video player.

Apple also prevailed on the likelihood-of-confusion issue, the TTAB finding that IPOD was a strong and famous mark and therefore entitled to broad trademark protection. Apple produced evidence that it had sold upwards of 250 million IPOD media players since November 2001 and spent significant amounts of money on advertising. The IPOD, said the TTAB, had “transformed Apple [and] changed the way hundreds of millions of consumers interact with their music, and when the advent of this device [was] combined with the availability of the iTunes Store, [it] ha[d]s revolutionized the music industry itself.” The TTAB also found that the marks were similar because VIDEO POD “incorporate[d] the most prominent component” of Apple’s mark.

In analyzing the similarity of the goods, Sector Labs argued that it had priority over Apple in the “field of video projection” because Apple’s IPOD device was not able to display videos in 2003, when the trademark application for VIDEO POD was filed. The TTAB, focusing on the relatedness of the goods as of 2003, held that

even without finding a strict overlap of the goods on which opposer has a clear priority, and without resorting to a finding of natural expansion of trade to expand the scope of its priority claim, we find, based only upon the relationship of the goods, this critical du Pont factor also favors a finding of likelihood of confusion.
Thus, the TTAB also found that the parties’ goods would travel through some identical trade channels to the same classes of consumers.

In sum, the TTAB held that even if the VIDEO POD mark had been found not to be merely descriptive, there was a likelihood of confusion with Apple’s IPOD marks.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association