EXCLUSIVE: Apple Trademark Office docs point to REAL reasons for" Podcast" controversy

When I first learned that Apple was sending "infringement"-claiming cease and desist letters to Podcasters such as Podcast Ready my first reaction was: OK, iPod has been around for two five years, (sorry-typo) and "podcast" two years, so why is Apple doing this now? Especially when the term "podcast" conveys enhanced market familiarization with the iPod?

Rather than fall back on knee-jerk assumptions: fear of trademark "dilution," Apple's proprietary, non-collegial and litigious culture, I decided to do more digging.

Based on my detailed review of related documents I found on in the Trademark section of the U.S. Patent and Trademark Office website, I believe I know more about why Apple is freaking out about the use of "podcast" as an infringe against its trademarked iPod.

There are three groups of reasons.

Not reported so far but revealed here, it appears that:

Apple itself is seeking a Trademark for "IPodcast."

Apple has been experiencing some significant difficulties getting final approval from the USPTO for the iPod trademark.

Finally, Apple has trademark applications on file for significantly expanding the iPod brand beyond devices, to other merchandise.

I am now going to take you through some recent documentation that will further explain these issues.

On September 4, 2005, Apple applied for a Word Mark for IPODCAST. The application is #78706746.

Reading this application we learn that it is for:

Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; provision of telecommunications connections to electronic communications networks, for transmission or reception of audio, video or multimedia content; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services namely, matching users for the transfer of music, video and audio recordings via communication networks provision of information, consultancy and advisory services for all the aforesaid services.

What's even more revealing is that when we examine recent documentation related to this filing, we see a pattern.

In January of this year Trademark examining attorney Caroline Wood took Apple's original Trademark application and sent it back to Apple as "unacceptable."

From the document sent by Ms. Wood to Apple legal:

RECITATION OF SERVICES UNACCEPTABLE

The current recitation of services is unacceptable because terms are overly broad and indefinite.  The applicant must indicate the specific nature of the services.  Telecommunications services are classified in several different classes, the applicant must indicate the specific services.  Also, the term “computer intercommunication” is indefinite.  Also, "time sharing services are indefinite because with regard to computers the services are classified in Class 42.  The terms “access and links” are indefinite, the applicant may indicate providing telecommunications connections instead.  Also, operating search engines is classified in Class 42.  “Telecommunication of information (including web pages), computer programs and any other data” is indefinite.  Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

After suggesting alternative phrasing that would have a higher chance of acceptance, Ms. Wood closed her correspondence with this admonition:

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

Apple reworded the IPODCAST application and sent it in on July 11. In a reply dated July 27: better, but not quite good enough, the Trademark examiner essentially replied.

This letter responds to applicant’s communication filed July 11, 2006.  The examining attorney accepts the amendments with regard to the recitation of services, the foreign registration and the basis.  However, the examining attorney maintains and makes final the refusal with regard to the validity of the Section 44(e) basis.

This letter responds to applicant’s communication filed July 11, 2006.  The examining attorney accepts the amendments with regard to the recitation of services, the foreign registration and the basis.  However, the examining attorney maintains and makes final the refusal with regard to the validity of the Section 44(e) basis.

application was initially refused because the  foreign registration is from Hong Kong, while the applicant’s domicile is California, United States.  In order for the Section 44(e) basis to be valid, the applicant must show that it has a bona fide and effective industrial or commercial establishment in Hong Kong.  The applicant did not submit such evidence.  The refusal is maintained and made FINAL with regard to the foreign registration.

 Registration is refused because it does not appear that applicant is the owner of a valid registration in applicant’s country of origin, and clarification is needed.  Trademark Act Section 44(e), 15 U.S.C. §1126(e).  If applicant is not the owner of a valid registration in the applicant’s country of origin, then applicant must delete the §44(e) basis from the application, and rely solely on §1(b) as a basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.

The application record shows that applicant has a domicile in California, United States, but has submitted a foreign registration from Hong Kong as a basis for registration in the United States.  In order to have a valid basis for registration, applicant must show that it has a bona fide and effective industrial or commercial establishment in Hong Kong.  In other words, applicant must provide evidence that Hong Kong is a “country of origin.”  Trademark Act Section 44(c), 15 U.S.C. §1126(c); TMEP §§1002.01 and 1002.04.

I should point out that at the top of this correspondence, Trademark examiner Wood added this ALL-CAPS zinger of a scold:

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

I also must mention that the iPod trademark application is at a delicate stage. Serial number 78653669 was published for opposition on July 11. No opposition was logged within the 30-day period, but now the USPTO must render final judgment.

It is reasonable to assume that Apple wants to make things totally right with the USPTO, and at this point they are extremely sensitive to the controversies surrounding IPODCAST. When they see "podcast" this, podcast that, Apple- given their existing, proprietary-inclined mindset- seems to be wanting to ward off any complications. The fewer non-Apple "pods" related branding efforts out there, the easier it must seem to them. Less occlusion for the related names they are seeking to trademark.

On the third matter- Apple's plans for iPod related gear- Apple also seems to be in one fine mess. Take for example the current problems Apple seems to be having obtaining final Trademark approval for "IPOD Socks"- a character mark not for socks on the feet, but for, as Apple calls it: "Cases and bags specifically adapted for carrying computers and consumer electronics, namely, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files."

The latest Office Action from Trademark examiner Ronald McMorrow, is dated May 11. I know that sounds awhile back, but thus far Apple has not replied.

McMorrow seemed to be telling Apple to get its act together when he wrote:

The specimen submitted does not show proper trademark use because the mark as it appears in the catalog or website display is not shown in close proximity to a picture of the goods.  A printed or web catalog or similar specimen is only acceptable to show trademark use if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.).  In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004); see Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992); In re MediaShare Corporation, 43 USPQ2d 1304 (TTAB 1997); TMEP §904.06(a)-(b).

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §§904.01 et seq. and 904.09.

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

Applicant must disclaim the descriptive wording “SOCKS” apart from the mark as shown because it merely describes a feature or characteristic of the goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The goods are “Cases and bags specifically adapted for carrying computers and consumer electronics, namely, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files.” As evidence of the descriptiveness of SOCKS, the examining attorney has attached a webpage that advertises the goods.  The term is used descriptively in the advertisement, which states “slide your iPod into the sock to keep it safe and warm.”

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use SOCKS apart from the mark as shown.

So to sum up, we have Apple, maker of the iPod, trying to get right with the Trademark office about achieving formal Trademark and related mark protections for iPod AND its sought-after IPODCAST applications.

I am not an attorney, but if I were on Apple's legal team fighting to make things right with these two important marks, I just might be tempted to use an overabundance of vigilance against anyone who is selling services and products that in name, are coming close to these sought-after protections.

As I noted at the top of this admittedly lengthy post, I happen to believe that "podcast" is great, if unintentional, marketing for the iPod. But Apple is Apple, with their own proprietary corporate culture.

And when you examine some of the controversies I have documented here through the lens of that culture, you may be able to see why they are sending out cease-and-desist letters to podcasters- and at this junction in time.