The company has opposed singer-songwriters, school districts and food blogs for trying to trademark names or logos with an apple or a pear or pineapple.
Ryan Mac reported from Los Angeles and Kellen Browning from San Francisco.
March 11, 2022
When Genevieve St. John started a sex and life blog in 2019, she designed a logo for the company from a neon green and pink apple, which was cut open to resemble female genitalia.
Not long after filing the application for registration of the logo with the US Patent and Trademark Office that year, Ms. St. John an unpleasant surprise. Her request was challenged – by Apple.
In a 246-page appeal, lawyers for the iPhone maker wrote that Ms. St. John’s logo “would likely tarnish Apple’s reputation, which Apple has cultivated in part by trying not to associate itself with overtly sexual or pornographic material.”
Ms. St. John, 41, a human resources professional in Chandler, Arizona, was saddened. Without the money to hire a lawyer and deal with the tech giant, she decided not to take up Apple’s challenge. That paved the way for a default judgment in favor of the electronics giant.
“I didn’t even make any money off it,” Ms. St. John said of her blog, which she has shut down. “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 Apple has followed in recent years to trademark names with the word “apple” or stem fruit logos. According to the Tech Transparency Project, a nonprofit watchdog, Apple, the world’s most valuable publicly traded company, worth $2.6 trillion, filed 215 trademark oppositions between 2019 and last year to defend its logo, name or product titles. That’s more than the estimated 136 brand oppositions filed by Microsoft, Amazon, Facebook and Google together during the same time period, the group said.
Apple is a more common word than company names like Microsoft or Google, and that’s partly why the high percentage is there. Many copycats, especially in China, have also tried to write Apple’s name or logo in the tech and entertainment industry to make money.
But Apple has often targeted entities that have nothing to do with technology or are infinitesimally small. It has even set its sights on logos featuring other fruits, such as oranges and pears.
The quarries include an Indian food blog, the Department of Energy, a Wisconsin public school, and Mattel, which makes the popular card game Apples to Apples. Apple also objected to an orange logo used by a pickup startup called Citrus. Last year, it settled a dispute with a meal planning app called Prepear after the app’s creator agreed to change a leaf on the pear logo to make it look less like Apple’s.
The scale of the company’s campaign amounts to “bullying tactics, and they are unnecessary for Apple to protect the public from confusion,” said Christine Farley, a professor at American University’s Washington College of Law.
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 spokesperson, said the law “requires” the company to protect its trademarks by filing an opposition with the Patent and Trademark Office if there are concerns about new trademark applications.
“If we see applications that are too broad or could be confusing to our customers, our first step is always to get in touch and resolve them quickly and amicably,” he said. “Legal action is always our last resort.”
Apple files trademark opposition to entities that have already received logo or name approval from the Patent and Trademark Office. In those oppositions, the company argued that “Apple brands are so famous and instantly recognizable” that other trademarks will weaken the strength of its brand or lead the “ordinary consumer to believe that the applicant is related to, affiliated with, or endorsed by Apple”. †
Some of the targets said that while they were confident their trademarks did not infringe Apple’s domain, they were unable to demonstrate that the challenges were frivolous because they did not have the resources to fight the company before the Trademark Trial and Appeal Board. . Between 2019 and 2021, 37 entities, or about 17 percent of those opposed by Apple or its subsidiary Beats Electronics, withdrew their trademark applications. Another 127 individuals or organizations, or 59 percent, failed to respond to challenges and defaulted, according to data from the Tech Transparency Project.
Stephanie Carlisi, an independent singer-songwriter, said she was shocked when Apple questioned the trademark of her stage name, Franki Pineapple, in 2020. the names of fruits, thus creating a similar commercial impression.” According to documents, the company also considered objecting to Ms. Carlisi’s logo, an exploding pineapple grenade.
“It’s not even an apple,” said Ms. Carlisi, 46, who had just started releasing music and has seven monthly listeners on Spotify. “You’re telling people they can’t appropriate fruit or anything that has a connection to Apple, which is this juggernaut company.”
Founded in 1974, the company originally known as Apple Computer wasn’t always so controversial. Before 2000, it only filed a handful of brand oppositions a year, peaking at nine in 1989, according to the Tech Transparency Project. At least one of those objections was against an electronics store that sold computer parts under the name “Pineapple.”
In those years, Apple Computer was better known as a trademark defendant. 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 associated with “Apple.”
By this time, Apple, which had dropped “Computer” from its name, was filing dozens of brand oppositions every year.
As Apple grew, most likely the legal team wanted to avoid dilution of the brand, says Barton Beebe, a professor at New York University Law School. In intellectual property theory, the legal argument is not that one would be confused by two different trademarks, but rather that assigning a new one would reduce the value of a household logo or name, he said.
“Dilution is death by a thousand cuts, and you must avoid the first cut,” said Mr. Beebe. “That’s the argument for judges.”
Apple has since created a template for challenging trademark applications, said Ashley Dobbs, a law professor at the University of Richmond. This is clear from a comparison of its replies to two applicants, where the cookie cutter used opposition language.
One response was the Appleton Area School District, a public education system of 16,000 students in Appleton, Wisconsin, which has a logo of three interlocking apples. The other was to Big Apple Curry, an Indian cooking blog in New York City, about his name. In Apple’s filings against them, entire sections were copied word-for-word to establish the company’s brand value — “an estimated $206 billion valuation” by Forbes in 2019 — and its “extraordinary level of exposure and consumer recognition.”
School district representatives and Big Apple Curry, who have both removed their applications, declined to comment.
“There’s a cost efficiency that’s chasing multiple people with the same argument,” Ms. Dobbs said. She added that Apple had surpassed other companies — such as Disney and Warner Bros. – who litigate about intellectual property.
Sometimes Apple asks the Trademark Trial and Appeal Board for renewals on a new trademark and then contacts that entrepreneur or company so that it changes the application. Lacye Brown, 38, an Atlanta artist who created a cartoon of a fictional medicine man named Dr. Apples, said it was “devastating” when Apple filed paperwork asking for more time to potentially challenge its trademark filing in 2020. trademark request after discussions with Apple’s attorneys, who have never filed an official opposition.
But last year, Apple was discredited when Ms. Brown attempted to trademark her “Talk About Apples” podcast, which was based on her Dr. Apples character. In opposition, the company argued that people might mistake its podcast for its podcast service.
“It’s an African-American medicine man who talks about fictional fantasies and monsters and ghosts,” said Ms. Brown. “Nobody ever affiliated me with Apple.” She nevertheless withdrew her podcast’s trademark application.
In 2019, Dr. Surya Reddy filed a trademark for the logo and name of Apple Urgent Care, which runs clinics in Riverside County, California. Apple objected, noting that its logo, like its own, featured an apple with a piece missing and a “slant-free leaf.”
dr. Reddy said he thought Apple’s case was ridiculous because it’s not a health care provider. But he didn’t have the money to test that theory and dropped his application.
“I’m a small business,” he said. “Once they object, you feel so little.”
However, Ms. Carlisi responded to Apple in court and won a concession. The company agreed to shut down the opposition if it included a disclaimer on its trademark application noting that Franki Pineapple — a nod to her late father, Franki, and the fruit, sometimes considered a rebellious, feminist symbol — isn’t her. real name was .
While the legal escalation cost her about $10,000, Ms. Carlisi took inspiration from it. She said her debut single, which is about clinging to the man and using a well-known expletive, was inspired by her battle with Apple.