Take a look at this article (courtesy of Mr. Fischer). What are your thoughts?
Trademark Law
LAW6392 – Professor Randazza – Barry University School of Law – Fall 2008
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October 12, 2008 at 2:07 pm |
When looking to the likelihood of confusion of the VSBT mark with the Apple mark, I think that the school will most likely prevail. Apple would need to prove that they have a protectable trademark, and in this case, this would not be difficult, because they have a registered mark. The second thing they would need to prove is that the use of the apple mark by the school is likely to confuse consumers. I think this is where they run into trouble.
Usually, eight factors will be looked at when determining if the mark will likely confuse consumers.
(1) The similarity of the marks- the sight, sound and meaning of the mark is compared with the character and quality of the goods. In this case, the marks that are being compared are two apple symbols. When looking at both marks, I would say that other than both being an apple, the look of the two are not that similar. The Apple mark is silver and features a cut out [in the form of a bite] on the right hand side, while the VSBT mark has a white outline and is blue and green and has a design in the middle with the initials of the school inside the apple. Also, when comparing the marks with the character and quality of the goods, the two are diverging. Apple denotes computers, ipods, etc. while the VSBT mark is connected with the Victoria School of Business and Technology.
(2) Strength of the Mark- Apple is a very strong mark. Apple in connection with computer electronics, etc. is an arbitrary mark, and as such will be afforded the highest protection. This speaks to the inherent distinctiveness. Apple also spends millions of dollars each year on advertising expenditures. It is one of the most well known brands; this would address the acquired distinctiveness of the mark. If Apple had a good case, it would be due in part to this factor, however this factor alone being strong for Apple probably does not rise to the level of the VSBT mark being confusingly similar.
(3) Similarity of the goods- As stated earlier, Apple’s mark is for consumer electronics [computers, etc], while VSBT’s mark is for those that might be interested in attending their school, or taking classes, etc.
(4) Channels of Trade- Apple advertises on numerous television stations, through expansive ad campaigns that have proven very successful. When people purchase Apple products, they must do so through a specialty Apple store, which is usually located in higher end malls. I do not know much about VSBT, however I would venture to guess that their mark is mainly to target prospective and past students of their school.
(5) Bridging the Gap- It is highly unlikely that Apple would expand into the Business School realm; however they might have an argument [which would be very weak] that since they have cutting edge technology, it would be likely that they would have some type of training sessions for users wishing to learn more about Apple’s products. Even if this argument was plausible, it seems highly unlikely that this would contribute to confusion between the marks.
(6) Actual Confusion- I am unsure if someone contacted Apple saying that they saw the VSBT mark and was confused by it. But this is normally proven by consumers providing instances and examples of being confused when seeing the accused infringers mark.
(7) Good Faith- This element speaks mainly to the fact that the junior user conducted a trademark search when using their mark to make sure that it was not confusingly similar to a senior user’s mark. Even though VSBT is located in Canada, because Apple is such a widely known mark, they most likely were aware of it. However, I doubt that in adopting this mark they were attempting to trade off the goodwill of Apple and its mark.
(8) Sophistication of the buyers- This is looked at with the average ordinary consumer’s perspective in mind. Normally an Apple consumer will purchase one of their products for their computer or technology needs. Someone potentially looking at the VSBT mark is most likely inquiring into the school’s classes or hours, not to buy an Apple computer.
I think that Apple has a weak case at best in this instance.
Lauren Herold
October 13, 2008 at 5:33 pm |
I agree with Lauren that Apple’s case is weak at best, but I’m not fully on board with all her analysis. I agree that when looking at the two marks side by side you see the difference, I disagree that the similarity is even more distant when looking at the products. Yes, Apple makes the electronic goods and that’s what their mark supports and yes, VSBT is an educational institution. I don’t think that further separates the two. I actually think it brings the marks even closer, especially when I’m reading that VSBT uses iMacs in their classrooms. Either way I think the marks/goods are different, but you put it all together side by side and I can see a link.
Something else interesting to point out is that from the VSBT site I was looking into a survey and comments the school posted. They stated that people were confusing Adobe and Apple. Weird, in my opinion, but interesting to note. People see VSBT’s affiliation with Adobe, they are an authorized training center, and think Apple. I’m not sure how that’s relevant or who these people are, but I just thought it was interesting. If people can confuse Apple and Adobe, and assume a link between VSBT and Apple because of that then maybe Apple’s claim isn’t so far off for actual confusion.
I agree with Lauren that Apple usually has stores in higher end malls and VSBT is a school, couple that with sophistication of buyers, because Apple products aren’t cheap and as a school in technology VSBT should be bringing some pretty sophisticated buyers, and you probably shouldn’t have a problem, but you might. I mean they are both in the technology/computer science field. Apple makes the products and VSBT trains you to use them and in the case of iMacs trains you on them. Is it such a stretch that people would think Apple supported VSBT, even if not being actually affiliated, because of the similarity of their marks?
I don’t think anyone going to that school believes that Apple is training them, but when they first start looking into it they might think there is some connection. Apple is such a prominent mark that when seeing another mark that so closely resembles it I can’t help but think that somewhere in my brain I’d be making the connection.
Bottom line though, I agree with Lauren, and it’s unlikely Apple can win this one. In my opinion they need to find some actual confusion, and with Apple and Adobe being confused by some people this may not be too difficult, and they need to show bad faith. It’s hard to argue that an apple isn’t an educational symbol and that’s VSBT’s claim for why they chose it. Besides showing the symbols/marks of other schools using apples, they don’t specify whether any of them are technology/computer schools or whether any of those school train people to proficiently use computers/computer programs. I think it’s relevant. Apple is going after them because of the field they are both involved in and the fact that the apples do look something alike.
Just my two cents.
~Danelle Hampton
October 13, 2008 at 5:59 pm |
Apple appears to be having a busy year in the trademark infringement front. They are also going after more than VSBT. Seems they are also suing ‘The Big Apple’ for it’s GreeNYC logo, claiming dilution to their mark.
Crain’s New York Business.com article:
http://www.crainsnewyork.com/apps/pbcs.dll/article?AID=/20080403/FREE/769974920/1057/newsletter01
Gizmodo article:
http://gizmodo.com/375498/apple-attacks-nyc-over-greenyc-logo-steve-jobzilla-to-destroy-central-park-next
New York City greeNYC site:
http://www.nyc.gov/html/planyc2030/html/greenyc/greenyc.shtml
This one isn’t even close in my book. The marks aren’t even as similar as VSBT’s and Apple’s and the goods are definitely not similar, as greeNYC is more a movement for New York to go green and no so much a product (although they do sell products with the logo, they aren’t computers or ipods). Just thought it was interesting.
~Danelle Hampton
October 14, 2008 at 10:00 am |
It is interesting, to me anyway, that Apple is throwing its weight around like this. Especially after their long-running legal battle with Apple Corps Ltd.
http://en.wikipedia.org/wiki/Apple_Corps#Legal_battles_with_Apple_Computer