The Mark of the Genius (Bar, and the Rest of the Apple Store) - Fordham Intellectual Property, Media & Entertainment Law Journal
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The Mark of the Genius (Bar, and the Rest of the Apple Store)

The Mark of the Genius (Bar, and the Rest of the Apple Store)

Some of the most famous buildings outlining the landscapes of city skylines have been trademarked.  The US Patent and Trademark Office has recognized trademarks in such landmarks as the Empire State Building, Grand Central Terminal, the Chrysler Building, the Sears Tower, the Transamerica Building, and most recently, nationwide Apple stores.  Though trademarks are typically considered to be words, names, or symbols, the Trademark Manual of Examining Procedure Section 1301.02(c) explains that three-dimensional trademarks such as these may become service marks if the building is being used in a manner that is indicative of, or may soon be deemed to be, a mark.

What exactly does that mean?  To become a registered trademark, a markholder must demonstrate an actual use in commerce or a bona fide intent to enter into commerce, as explained in Section 1051 of the Lanham Act.  Moreover, the mark cannot be generic or purely descriptive, but must typically be fanciful, arbitrary, or suggestive.  Furthermore, the functionality doctrine, laid out in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995), places a check on trademarks so that they don’t end up “inhibiting legitimate competition by allowing a producer to control a useful product feature.”  Therefore, by the rule in Qualitex, the trademarked feature must not be “essential to a product’s use or purpose and does not affect cost or quality.”  Id.  Most features describing a building, however, seem quite functional—they serve the essential purpose of providing shelter from the elements.  Whether it’s raining, snowing, or just excessively humid to the point that you wish it started raining or snowing, the common response is to run for cover inside a home, shop, restaurant, or some other nearby location.  But Apple is showing, much like the aforementioned buildings, that architectural features serve a much grander role than providing shelter from a storm.  Apple’s stores follow in the footsteps of judicial precedent and overcome the functionality doctrine by incorporating arbitrary features that accomplish the key trademark objectives of source identification and preventing consumer confusion.

The first case to provide trademark protection to a building was a 1937 Sixth Circuit decision—White Tower System v. White Castle System of Eating Houses Corp., 90 F.2d 67 (6th Cir. 1937).  White Tower had remodeled its restaurants to match the miniature white castle architecture distinguishing White Castle’s hamburger shops.  Beyond simply basing its renovations on photographs of White Castle restaurants, White Tower provided its architects with White Castle’s building plan, specs, and measurements.  The Court relied on trademark law to protect White Castle’s exclusive right to its building design and prevent consumer deception.  This same reasoning was applied in the Supreme Court’s 1992 case, Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).  The Court looked at Taco Cabana’s trade dress, or its design and architectural features, which had essentially been copied by competitor Two Pesos.  It held that Taco Cabana’s restaurant design was inherently distinctive and that secondary meaning was not required to grant it protection from infringement.  Apple, and the US Patent and Trademark Office, are of the belief that the unique layout of an Apple store is similarly distinct and recognizable to consumers and is therefore entitled to trademark protection.

Consequently, Apple’s newest trademark was granted, bringing the company’s total to 264 trade- and servicemarks.  This architectural trademark recognizes the store’s traditionally “clear glass storefront surrounded by a paneled façade.”  It preserves the “rectangular recessed lighting units, . . . cantilevered shelves below recessed display spaces, . . . and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store.”  And it of course protects Apple’s much relied upon genius bar, always found at the back of the store.  Each of these protected features combines to create the traditional and reassuring layout of an Apple Store.  Putting the pieces of the Apple Store together yields a final product that is instantly recognizable and engenders a sense of comfort in the bodies of loyal Apple devotees.  They are, in a way, safe in these familiar surroundings.  Though the layout may be efficient, it isn’t necessary for the store to function.  Rather, the function coming out of each of these perfectly placed components is one of identification.

Apple has been striving to obtain this trademark since May 2010, and its petition was finally approved January 22, 2013.  Perhaps the US Patent and Trademark Office’s decision to recognize the mark was hastened by infringing Apple stores that popped up in Kunming, China in 2011.  These stores not only featured Apple posters and logos, but they were also decorated with the same wooden tables, winding staircase, and concrete floors that customers would find in an authentic Apple store.  Moreover, employees working in the store were dressed in the well-recognized Apple uniform of a blue t-shirt adorned with a white Apple logo, accessorized with a lanyard that holds the employee’s ID card.  In fact, the store possessed such an authentic and genuine persona that event the employees thought they were working for Apple—many were completely unaware that their real employer was a knock off pop-up store.  Though much of the merchandise sold in the store was found to be authentic, these knock off Apple stores risked and continue to threaten consumer confusion and deception.  They impair a customer’s ability to identify who is actually responsible for the store, customer service, and products being sold.

The solution hopefully lies in this new trademark, which can gain protection internationally through the World Trade Organization’s TRIPS Agreement.  The TRIPS Agreement endeavors to create a common set of international rules that will protect intellectual property distributed in all WTO member nations.  The United States and China are two such nations.  The main objectives include providing adequate protection to intellectual property rights, informing countries of proper enforcement protocol, and settling disputes between WTO member nations.  The Paris Convention will grant further protection to Apple, guaranteeing it a trademark right in the store in all WTO nations, provided Apple is first to file.

Despite all of these protections, trademark infringement often seems abound.  So, the only question remaining is who will be first to take a bite out of the new Apple trademark.

Brittany Robbins

Brittany Robbins is a second year Fordham Law student and an IPLJ Staff Editor. She is passionate about fashion’s intersection with the law, particularly in the field of intellectual property. What better reason for her to swap a casebook for the latest copy of Vogue--in the spirit of legal research, of course.