How Far Does “The Big Apple” Have to Fall From the Tree? - Fordham Intellectual Property, Media & Entertainment Law Journal
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How Far Does “The Big Apple” Have to Fall From the Tree?

How Far Does “The Big Apple” Have to Fall From the Tree?

By: Eric Mouchette

How many ways can you draw an apple? More specifically, how many ways can you draw an apple without infringing on Apple Inc.’s ubiquitous logo? This is a question that New York City Hall may eventually have to ask itself. Apple renewed its federal challenge to the trademark application that New York filed in May 2007. Apple alleges that the GreeNYC logo, an infinity apple design, is likely to cause “consumer confusion resulting in damage and injury”i to Apple, and will cause the “dilution of the distinctiveness”ii of Apple’s trademark in violation of the Lanham Act.iii

According to an assessment made by the Interbrand Corporation, the Apple brand is the 33rd most valuable brand in the world, with an estimated worth of $11.037 billion.iv Apple’s logo, which it has held since 1979,v has become a world famous emblem for the company’s broad array of goods and services. The Apple logo was originally intended for Apple’s computers and computer software, but its use expanded to publications, provisions of information through various forms of media, advertising, clothing, glassware, and dishes.vi Additionally, Apple has opened three retail locations in Manhattan, which the company asserts have become an “iconic” tourist attraction.vii

The idea for the GreeNYC logo came from a nickname that New York has had since the 1920’s.viii Although New York has been known as “The Big Apple” for a longtime, the city does not own any trademarks related to the phrase.ix The GreeNYC logo will be used in brochures, booklets, and teaching materials to promote the campaign’s efforts to implement “environmentally friendly policies” and “economic development.”x The logo has started to appear on bus shelters, hybrid gasoline-electric taxi cabs, and cotton shopping bags.xi The city also plans to place the logo on goods such as publications, sweat shirts, t-shirts, caps, glassware, dishes, and plates.xii

Apple is specifically concerned about the similarity of the two logos. Apple claims consumers familiar with Apple’s trademarks will purchase the GreeNYC goods and services as and for goods and services associated with Apple. Additionally, Apple contends that any defect found with GreeNYC’s goods and services would “reflect upon and seriously injure” Apple’s reputation.xiii

The city responded by submitting a request to the Trademark office, asking the appeals board to reject Apple’s challenge. Furthermore, the city asked the board to cancel one of the Apple’s trademarks, alleging that one of the 12 Apple trademarks listed in the challenge was fraudulently acquired. The city argued that Apple has failed to use the trademark on “mugs, dishes, drinking glasses, and wine glasses”, although the company stated it would in a 1985 trademark application.xiv

The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office will analyze all of the facts in evidence to determine the likelihood of confusion between the two trademarks. The two key considerations in this analysis will be the similarities or dissimilarities between the marks. Common factors include (1) the similarities or dissimilarities of the sight, sound, and meaning of the trademarks, (2) the similarity or dissimilarity in channels of distribution and marketing of the goods and services, (3) the sophistication and degree of care likely to be exercised by prospective consumers, and (4) the degree of distinctiveness of the subject mark.xv

While a number of dissimilarities exist, the only apparent similarity between the two logos is the depiction of an apple with a leaf. Apple’s logo is a simple outline of an apple with one leaf pointing to the right. The Apple logo also has a bite mark on the right side of the apple and is within the black/white spectrum, but was previously rainbow colored. The GreeNYC logo is reminiscent of a green infinity symbol in the shape of an apple. The GreeNYC logo has a stem pointing to the right beside a leaf pointing to the left, and does not have a bite mark. Furthermore, although both logos will be distributed in New York’s market, the logos will be used to promote entirely distinct goals.

Apple will likely commission independent surveys to determine if consumers are actually confused by the two logos. The dispute may continue over the next few months until the Trademark Trial and Appeal Board of the Patent Office makes a final decision.

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i Wired.com, Consolidated Notice of Opposition, http://www.wired.com/images/pdf/apple_opposition.pdf, 11.
ii Id.
iii 15 U.S.C § 1052(d); 15 U.S.C § 1125(c)(1)
iv Interbrand, Best Global Brands 2007, http://www.ourfishbowl.com/images/surveys/Interbrand_BGB_2007.pdf, 14.
v Wired.com, Consolidated Notice of Opposition, Wikipedia, Big Apple, http://en.wikipedia.org/wiki/Big_Apple (Last visited April 14, 2008).
ix Amanda Fehd, Apple Inc. Opposes Big Apple’s Logo, BusinessWeek, http://www.businessweek.com/ap/financialnews/D8VR97N80.htm (Last visited April 14, 2008).
x Wired.com, Consolidated Notice of Opposition, http://www.wired.com/images/pdf/apple_opposition.pdf, 9.
xi Larry McShane, Apple Computer Says Something’s Rotten With GreeNYC Logo, Daily News, http://www.nydailynews.com/news/2008/04/03/2008-04-03_apple_computer_says_somethings_rotten_wi.html (Last visited April 14, 2008).
xii Wired.com, Consolidated Notice of Opposition, http://www.wired.com/images/pdf/apple_opposition.pdf, 10.
xiii Id. at 12.
xiv Id. at 4.
xv Paul Reidl, Understanding Basic Trademark: A Primer on Basic Trademark Protection, 904 PLI/Pat 171, 203 (2007)

Chris Reid