An IP Case that Apple DIDN’T Win: TTAB Refuses to Register Apple’s Icon
Myspace has had a rough couple of years. While it enjoyed some time at the forefront of the web 2.0 wave circa 2003, Facebook became the largest social networking site in 2008 and Myspace’s popularity (and value) took a swift and dire hit. In short, Myspace could use a win.
The TTAB thought so too, apparently. On September 18th, the TTAB upheld the refusal to register Apple’s well-known music app icon for “computer software for use in reviewing, storing, organizing, and playing pre-recorded audio content, sold as a feature of handheld mobile digital electronic devices comprised of digital audio and video players, handheld computers, personal digital assistants, and electronic personal organizers, in International Class 9.” The mark was refused under Section 2(d) of the Trademark Act of 1946 on the ground that it was likely to cause confusion with Myspace’s registered mark for “providing temporary use of non-downloadable software for adding music and video profiles on the internet, for listening to MP3’s and for shaping MP3’s and music playlists with others.”
According to gizmodo.com, Myspace’s music icon was originally trademarked by a music sharing and downloading service called iLike in 2008, which Myspace acquired in 2009. Both Apple’s and Myspace’s marks depict double music notes on an orange rectangular background. This is where the visual similarities end, though. The picture below shows Apple’s icon (left) and Myspace’s mark (right). In a side-by-side comparison, the two marks seem sufficiently different so as not to cause consumer confusion.
The Huffington Post highlights that in its argument to the TTAB, Apple claimed that no consumer has confused its mark with Myspace’s registered mark. The TTAB stated, “The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and services offered under the respective marks is likely to result.” Under this test, the TTAB held that the icons are too similar in appearance and in the services, goods, and classes of consumers associated with each mark.
After Apple’s monster $1 billion patent victory against Samsung, Myspace winning a trademark case against the tech giant is a true Rudy moment. Perhaps this little victory marks a turn for Myspace. The website’s redesign previews are already garnering favorable reviews from a variety of tech websites. While Myspace has been down for awhile now, this TTAB decision coupled with a major site redesign proves that they are far from out.