Apple Needs a Lesson in the Meaning of Deja Vu

Apple Inc. received an Office Action letter for a logo? A name? A slogan? No, Apple attempts to trademark a store design.

Not your traditional "logo" trademark application
Not your traditional “logo” trademark application

The trademark application was originally filed on July 30th, 2010 by Apple, Inc. under Class 025 Advertising and Business with a goods & services description of “Retail store services featuring computers, computer software, computer peripherals and consumer electronics, and demonstration of products relating thereto.”

The United States Patent and Trademark Office outlines in the Office Action Letter some of the following arguments upon why registration was refused, pending an appropriate response:

Non-Distinctive Trade Dress Refusal – Mark is Not Inherently Distinctive

  • “Registration is refused because the applied-for mark consists of a nondistinctive three-dimensional configuration, also known as ‘trade dress,’ that would not be perceived as a service mark but only as decoration or ornamentation.”
  • “It is not clear by this description what the applied for mark consists of – is it the glass enclosures that many stores have, the double doors with an awning above them, which is a common feature of retail stores, and/or the positioning of the apple sign from the ceiling inside of the building.”

Amended Description of the Mark and New Drawing Required

  • “Applicant’s description of the mark, stating that the mark consists of a ‘distinctive design of a building’ is extremely vague. Applicant must submit a new description which explicitly states which features are being claimed as part of the mark and which are not.”

On August 4th, we wrote about Apple attempting to trademark their retail store design. Status Update! On September 7, 2010, the USPTO issued BOTH of the trademarks we mentioned in the article an Office Action Letter: Apple’s trademark serial number 85036986 AND serial number 85036990.

Can you guess what the arguments were? The USPTO outlines for BOTH trademark applications “MARK IS NOT INHERENTLY DISTINCTIVE” and “NEW MORE DETAILED DESCRIPTION OF THE MARK AND NEW DRAWING NEEDED”

Perhaps Apple needs to learn the concept of Deja Vu?

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