Behind Apple’s aggressive measures to protect its brand

Behind Apple's aggressive measures to protect its brand

The company has taken issue with singer-songwriters, school districts and food blogs for attempting to trademark names or logos featuring an apple, pear or pineapple.

Ryan Mac reported from Los Angeles and Kellen Browning from San Francisco.

When Genevieve St. John started a sex and life coaching blog in 2019, she designed a logo for the company of a neon green and pink apple, which was cut open to resemble female genitalia.

Shortly after asking to register the logo that year with the United States Patent and Trademark Office, Ms. St. John had an unpleasant surprise. His claim had been challenged — by Apple.

In a book of 246 pages filing of oppositionlawyers for the iPhone maker wrote that Ms. St. John’s logo was “likely to tarnish Apple’s reputation, which Apple has cultivated in part by working hard not to associate itself with overtly sexual material or pornographic”.

Ms. St. John, 41, a human resources professional in Chandler, Arizona, was discouraged. Without the money to hire a lawyer and take on the tech giant, she decided against Apple’s challenge. This paved the way for a default judgment in favor of the electronics giant.

“I wasn’t even making any money from it,” Ms. St. John said of her blog, which she put on hiatus. “But it’s Apple, and I’m not going to argue with them because I don’t have a million dollars.”

Ms. St. John is one of dozens of entrepreneurs, small businesses and corporations that Apple has sued in recent years for applying brand names containing the word “apple” or stemmed fruit logos. According to Technology Transparency Project, a non-profit watchdog. That’s more than the estimated 136 trademark oppositions that Microsoft, Amazon, Facebook and Google collectively filed during the same period, the group said.

Apple is a more common word than company names like Microsoft or Google, and part of the reason for the high rate is that. Many imitators, especially in China, have also tried to draft the Apple name or logo into the technology and entertainment industries to make money.

But Apple has frequently targeted entities that have nothing to do with technology or are infinitesimal in size. He even set his sights on logos involving other fruits, such as oranges and pears.

His careers include an Indian food blog, the Department of Energy, a Wisconsin public school district, and Mattel, which makes the hit Apples to Apples card game. Apple also opposed a orange-logo used by a curbside collection start-up named Citrus. Last year he settled a dispute with a meal planning app called Prepear after the app creator agrees to change a sheet on its pear logo to make it look less like Apple’s.

The scale of the company’s campaign amounts to “bullying tactics, and they’re unnecessary for Apple to protect the public from confusion,” said Christine Farley, a professor at the Washington College of Law at the American University.

Citrus; the Energy Department; Super Healthy Kids, the company behind Prepear; and the Patent and Trademark Office declined to comment. Mattel did not respond to requests for comment.

Josh Rosenstock, an Apple spokesman, said the law “requires” the company to protect its trademarks by filing oppositions with the Patent and Trademark Office if there are issues with new trademark applications.

“When we see applications that are too broad or potentially confusing for our customers, our first step is always to contact them and try to resolve them quickly and amicably,” he said. “Legal action is always our last resort.”

Apple files trademark oppositions against entities that have already received logo or name approval from the Patent and Trademark Office. In these oppositions, the company has argued that “Apple’s trademarks are so famous and instantly recognizable” that other trademarks will weaken its brand strength or cause the “ordinary consumer to believe that the plaintiff is related to, affiliated with, or endorsed by Apple”.

Some of those targeted said that while they were confident their trademarks weren’t infringing on Apple’s domain, they couldn’t show the challenges were frivolous because they didn’t have the resources to fight the company in front of them. the Trademark Trial and Appeal Board. Between 2019 and 2021, 37 entities, or about 17% of those opposed by Apple or its subsidiary Beats Electronics, withdrew their trademark applications. According to data from the Tech Transparency Project, another 127 people or organizations, or 59%, did not respond to the challenges and defaulted.

Stephanie Carlisi, a freelance singer-songwriter, said she was shocked when Apple challenged the brand of her stage name, Franki Pineapple, in 2020. In deposits, Apple acknowledged that an apple and a pineapple were different, but said they were “both names for fruits, and thus convey a similar commercial impression”. The company also considered opposing Ms Carlisi’s logo, an exploding pineapple grenade, documents show.

“It’s not even an apple,” said Ms Carlisi, 46, who had just started streaming music and has seven monthly listeners on Spotify. “You’re telling people they can’t take fruit or anything that has to do with Apple, which is this behemoth company.”

Founded in 1974, the company originally known as Apple Computer hasn’t always been so contentious. Prior to 2000, it filed only a handful of trademark oppositions each year, peaking at nine in 1989, according to the Tech Transparency Project. At least one of these contrasts was at an electronics retailer that sold computer parts under the name “Pineapple”.

During those years, Apple Computer was best known as a defendant in trademark cases. In 1978, Apple Corps, the holding company founded by the Beatles, sued Apple Computer for trademark infringement, the first salvo in a series of legal disputes between the two companies over the following decades. In 2007, the two Apples finally agreed to give the Silicon Valley company all trademarks related to “Apple”.

At that time, Apple, which had dropped “Computer” from its name, was filing dozens of trademark oppositions each year.

As Apple grew, its legal team most likely wanted to prevent brand dilution, said Barton Beebe, a professor at New York University School of Law. In intellectual property theory, the legal argument is not that someone would be confused by two different marks, but rather that granting a new mark would reduce the value of a logo or name. family, he said.

“Dilution is death by a thousand cuts, and you have to prevent the first cut,” Mr Beebe said. “That’s the argument of the judges.”

Apple has since created a template for challenging trademark claims, said University of Richmond law professor Ashley Dobbs. This is evident in a comparison of his responses to two candidates, where he used cookie-cutter opposition language.

One response was to Appleton Area School District, a 16,000-student public education system in Appleton, Wisconsin, which has a logo of three intertwined apples. The other had to Big apple curry, a New York Indian food blog, named after him. In the documents Apple filed against them, entire sections were copied verbatim to establish the company’s brand value – “an estimated $206 billion valuation” by Forbes in 2019 – and its “extraordinary level reputation and consumer recognition”.

Representatives for the school district and Big Apple Curry, who both withdrew their candidacies, declined to comment.

“There’s a payoff to suing multiple people with the same argument,” Ms Dobbs said. She added that Apple had outstripped other companies – such as Disney and Warner Bros. – who had disputed the intellectual property.

Sometimes Apple will apply to the Trademark Trial and Appeal Board for Extensions to file a new trademark and then contact that contractor or business to modify their application. Lacye Brown, 38, an Atlanta artist who created a cartoon of a fictional wizard named Dr Apples, said it was ‘devastating’ when Apple submitted documents asking for more time to potentially challenge its trademark application in 2020. trademark application after discussions with Apple’s lawyers, who never filed an official opposition.

But last year Apple took issue when Ms Brown tried to trademark his podcast, “Talk About Apples”, which was based on his Dr. Apples character. In his oppositionthe company argued that people might confuse its podcast with its podcast service.

“He’s an African-American wizard who talks about fictional fantasy, monsters and ghouls,” Ms Brown said. “No one has ever affiliated me with Apple. She nonetheless removed the trademark request from her podcast.

In 2019, Dr. Surya Reddy filed a trademark application logo and name Apple Urgent Care, which runs clinics in Riverside County, California. Apple objectednoting that his logo, like his, included an apple with a missing piece and an “angled detached leaf”.

Dr Reddy said he thought Apple’s case was ridiculous because it’s not about a medical provider. But he didn’t have the money to test this theory and dropped out.

“I’m a small business,” he says. “Once they raise an objection, you feel so small.”

Ms Carlisi, however, responded to Apple in court and won a concession. The company has agreed to stop pursuing its opposition if it included a disclaimer on her trademark application noting that Franki Pineapple – a nod to her late father, Franki, and the fruit, sometimes seen as a rebellious and feminist symbol – was not her real name.

While the legal escalation cost her around $10,000, Ms. Carlisi was inspired by it. She said it first singlewhich involves sticking it to the man and uses a well-known expletive, was inspired by his battle with Apple.