S1 E41 Apple's Struggle for the Trademark Live Photo Why the best defense is a good offense Apple bet on a trademark and lost, but then went another round and won. Learn why the best defense in trademarks is a strong offense.
In 2015, Apple introduced a new feature called "Live Photos," which captured a 3-second video clip along with a photo. In January 2016, Apple filed a trademark application for "Live Photos." However, in April 2016, they received an office action from the USPTO stating that the trademark "HP LIVE PHOTO" filed by HP Hewlett-Packard blocked their registration. The USPTO also considered "Live Photo" to be merely descriptive. Apple responded to the office action and obtained consent from HP Hewlett-Packard, which was signed only by HP. Despite this, in the second office action issued in February 2017, the USPTO still maintained that the trademark was blocked by HP LIVE PHOTO but acknowledged that the issue of being merely descriptive had been overcome. Simultaneously, Apple appealed the office action to the Trademark Trial and Appeal Board (TTAB) and a second consent agreement with HP that was signed by Apple and HP. The trademark examiner in the Trademark Office agreed that the second consent agreement resolved the issue, so the appeal board sent the case back to the trademark office. The trademark application for "Live Photos" was published in September 2017. However, in October 2017, an opposition was filed by Gang Cao, who claimed that "Live Photos" was generic. Both parties engaged in legal proceedings, including filing a complaint, answer, and a motion for summary judgment. The opposition process involved substantial discovery which always results in large legal fees. In June 2021, the TTAB sustained the opposition, ruling that "Live Photos" was generic, which meant Apple was denied the right to register the trademark. Undeterred, Apple appealed the TTAB's decision to the federal district court in August 2021. Surprisingly, Gang Cao did not respond to the appeal, which allowed Apple to present its case to the Federal District Court to overturn the TTAB's ruling. In February 2022, the court issued an order overturning the previous ruling, stating that "Live Photos" was descriptive with secondary meaning, thereby recognizing Apple's right to obtain a trademark registration for Live Photo. The court's decision acknowledged that "Live Photos" had acquired distinctiveness and secondary meaning through Apple's extensive use and promotion of the term. This ruling solidified Apple's ownership of the "Live Photos" trademark, affirming its ability to protect the brand and prevent confusion among consumers. Apple won the case because they were able to present lots of evidence that it used the term LIVE PHOTO extensively as a trademark. This was their strong offense, that resulted in a good defense against the opposition.
BIO: Wayne Carroll founded Inspired Idea Solutions Law Firm in 2013, an IP boutique law firm focused on helping small businesses with intellectual property. At Inspired Idea Solutions, we use a proven process for obtaining IP rights that focuses on aligning the business strategy of small business clients with their IP strategy. We help small businesses implement a strategy to ensure they own and leverage their intellectual property. We also have clear expectations with zero hidden fees.
In addition to his legal work, Wayne is an Eagle Scout and actively volunteers with the Boy Scouts of America. He is also a proud father of six children and enjoys playing pickleball. Wayne's extensive experience and expertise in intellectual property law make him a highly respected attorney and a valuable asset to clients seeking protection for their intellectual property rights. Wayne can be reached at 480-741-2440 or [email protected]. You can also connect with Wayne on LinkedIn.
