Response to Office action of Apple Inc. IPHONE Trademark Likelihood of Confusion office action example 2007 (PART II Response)

Re: Mark: IPHONE
Serial Number: 77/078,496
Applicant: Ocean Telecom Services LLC

To the Commissioner:
This responds to the office action on this application dated February 22, 2007, in
which the examining attorney refused registration under Section 2(d), citing a
prior third party registration and two prior applications, and under Section 2(e)(1),
on the premise that the mark IPHONE is descriptive.
Applicant respectfully disagrees with the basis for refusal, for the reasons set
forth in this office action response. Applicant is also responding to the
informalities raised by the examining attorney.

Informalities
In response to the examining attorney's request, Applicant encloses Applicant's
signed declaration.

Identification of Services
Applicant hereby amends the identification of services in this application to read
in its entirety as follows:

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Class 38: Provision of access time to the Internet for accessing websites
featuring multimedia materials; providing access time to the Internet for
the purpose of identifying, locating, grouping, distributing, and managing
data and links to third-party computer servers, providing online bulletin
boards in the fields of music, video, film, book, television, games, and
sports for the transmission of messages among users; and providing
consultation services relating to all the aforesaid.

Class 41: Providing databases and directories via communications
networks in the fields of music, video, film, books, television, games and
sports; and providing consultation services relating to all the aforesaid.

Class 42: Design and development of computer hardware and software;
computer hardware and software consulting services; multimedia and
audio-visual software consulting services; computer programming;
providing technical troubleshooting support for computer systems,
databases and applications; providing consultation services for developing
computer systems, databases and applications; information relating to
computer hardware or software provided on-line from a global computer
network or the Internet; creating and maintaining web-sites; providing
search engines for obtaining data via communications networks; providing
temporary use of on-line non-downloadable software to enable users to
program audio, video, text and other multimedia content, including music,
concerts, videos, radio, television, news, sports, games, cultural events,
and entertainment-related programs; computer services, namely, hosting
on-line facilities, via global computer network, to enable users to program
the scheduling of audio, video, text and other multimedia content,
including music, concerts, videos, radio, television, news, sports, games,
cultural events, and entertainment-related programs as they will be aired;
providing search engines for obtaining data on a global computer network;
providing indexes of information, sites and other resources available on
global computer networks for others; customized searching at the specific
request of end users, allowing the end user to browse and retrieve
information, sites, and other resources available on global computer
networks; acting as an application service provider in the field of
knowledge management to host computer application software for
searching and retrieving information form databases and computer
networks; computer services, namely, creating indexes and databases
that organize the content of information provided over a global computer
network according to user preference; and consultation services relating to
all the aforesaid.

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Please charge the additional filing fee of $750 for the two additional classes to
Deposit Account No. 04-0475.

Section 2(d) refusal

The Examining Attorney has refused registration based on a likelihood of
confusion with the mark IPHONE in U.S. Registration No. 2,293,011, owned by
Cisco Technology, Inc. As indicated in the attached Exhibit A, Cisco and Apple
have agreed that each is free to use the IPHONE mark on its products. Once the
examining attorney confirms that the amended identification of services proposed
in this office action response is acceptable, Applicant will submit a consent to the
registration of IPHONE for those services that reflects that amended
identification.

Prior pending applications

The Examining Attorney has also cited two prior pending applications as potential
obstacles to registrations:

- Serial No. 78/860,258: This application has been abandoned, and
Applicant respectfully requests that the examining attorney withdraw the
citation of this mark.

- Serial No. 78/581,563: This application is still pending, but is subject to a
final refusal. Applicant respectfully requests suspension of its application
pending the disposition of this application.

Applicant’s use of IPHONE is not descriptive

The Examining Attorney has refused registration under Section 2(e) on grounds
that the mark is merely descriptive. Applicant respectfully disagrees with the
basis for refusal.

Apple Inc. (formerly Apple Computer Inc.) is a related company of Applicant, as
defined in Section 45 of the Lanham Act, and Apple has used the IPHONE mark
in connection with its iPhone digital mobile device, as shown in the enclosed
materials. See “Declaration of Thomas R. La Perle in Support of Acquired
Distinctiveness,” [3 (hereinafter “Declaration’). Apple has a famous family of
marks that begin with the letter “I”, and IPHONE is the latest member of this
family. The prefix “I” in IPHONE serves to signify that the product is a member of

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that family of goods, and that the product embodies features of Apple's “I’-

branded products, or works together with those products. For example, the
iPhone digital mobile device incorporates an audio/video player similar to Apple's
iPod media player, and allows a user to play media that has been purchased at
Apple’s iTunes Store and to synchronize content and data from other Apple
products, such as the iPhoto photography application and the iCal calendar
application.

Apple first developed this family of marks in 1998, with the launch of its ground-
breaking IMAC and IBOOK computers, followed by the IMOVIE mark in 1999. In
2001, Apple introduced the IPOD digital media player, one of the most
phenomenally successful products in history, as well as the ITUNES media
download service. In 2001, Apple launched its IDVD computer software,
followed by ICAL and IPHOTO in 2002, and ILIFE, ISIGHT, and ICHAT in 2003.
More recent additions to the family include IWORK and IWEB. Apple now holds
over 50 federal active applications and registrations of marks that begin with the
prefix “I”. See Exhibit B. In light of this longstanding and well-known approach to
branding, consumers will immediately recognize the IPHONE mark as signifying
the newest member of that family of marks, rather than as a merely descriptive
term.

It is the Office’s initial burden to show that a mark is merely descriptive of the
goods in the mind of the consumer. In re Gyulay, 3 USPQ2d 1009 (Fed. Cir.
1987). If registration is refused, the Office must support the refusal with
evidence. TMEP § 1209.02. Thus, the Office has the burden to prove that the
mark in its entirety has a well-understood and recognized descriptive meaning.
TMEP § 1209.01(b)(2).

In this situation, however, the refusal is based on various definitions of the prefix
“I” from an online database, but affords no rationale for what consumers would
understand “I” to mean in the context of the mark IPHONE as applied to
Applicant’s services. In fact, as applied to Applicant's services, the prefix “I’ in
IPHONE functions to identify the mark as part of Apple Inc.'s family of brands
that begin with ‘I’.

It is well-recognized that where there is any doubt about whether a mark is
merely descriptive, “that doubt should be resolved in favor of the applicant.” See
In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972). Here, Applicant has
clearly raised sufficient doubt about the mere descriptiveness of IPHONE as
used by Applicant that the Examining Attorney should withdraw the refusal under
Section 2(e) an allow registration of the mark.

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In the alternative, the mark has acquired distinctiveness and is eligible for
registration under Section 2(f)

lf the Examining Attorney maintains the refusal to register under Section 2(e),
Applicant requests in the alternative that the mark be registered under Section
2(f), on the basis that the mark has become distinctive in connection with
Applicant's services. As the following discussion and evidence will show, the
IPHONE mark is eligible for registration on the Principal Register based upon
acquired distinctiveness, even if the Examining Attorney believes that it is not
inherently distinctive.

As indicated above, Apple Inc. (formerly Apple Computer Inc.) is a related
company of Applicant, as defined in Section 45 of the Lanham Act. Apple has
used the mark in connection with its iPhone digital mobile device, as shown in
the enclosed materials. See Declaration at J3. Such legitimate use inures to
Applicant’s benefit, as provided under Section 5 of the Lanham Act.

The IPHONE mark has become distinctive by virtue of (1) Apple’s family of I-
prefix marks, and (2) the enormous publicity surrounding Apple’s anticipated and
actual use of the mark for Apple’s digital mobile device, and the public
recognition of IPHONE as an indicator of source that resulted from such use. For
these reasons, IPHONE is entitled to registration on the Principal Register under
Section 2(f), as discussed in detail in this office action response.

1. Apple has for many years used a family of I-prefix marks in the consumer
electronics field.

With the launch of its ground-breaking IMAC and IBOOK computers in 1998,
Apple quickly became identified with brand names beginning with the letter “I. In
the 10 years since that launch, Apple has used and registered the following
marks that begin with the letter “I’ in classes 9, 16, 35, 38, 39, 41, and 42, as
follows:

IMAC for computers, in use since 1998
IMOVIE for computer software, in use since 1999
IPOD for digital media players, gift/purchase cards, online retail services,
data storage services, in use since 2001

- ITUNES for computer software, online retail services, telecom services,
entertainment services, and digital music services, in use since 2001

- IDVD for computer software, in use since 2001

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ICAL for computer software and database services, in use since 2002
IPHOTO for computer software, in use since 2002

ILIFE for computer software, in use since 2003

ISIGHT for computer hardware, in use since 2003

ICHAT for computer software and services, in use since 2003

See Declaration at J4. Apple has also launched its IWORK and IWEB software
products, and has pending applications for those marks as well as IWRITE for
computer software and IMIX for web-based retail, entertainment, and
informational services. Apple now holds over 50 federal active applications and
registrations of marks that begin with the prefix “I”. See Declaration at 95. TESS
printouts showing Apple’s registrations of these marks are attached at Exhibit B,
and evidence of current use of these marks is attached at Exhibit C.

Apple has achieved enormous success with its line of products bearing “I’-prefix
trademarks, with the result that the public identifies such marks with Apple. The
following are some of the highlights of its use of this family of “I’-prefix marks:

- Apple sold 6,000,000 units of its first generation of iMac computers.
During the product's initial launch in 1998, one iMac computer was sold
every 15 seconds of every minute, of every hour, of every day, of every
week, for over four months.

- When the second generation of the iMac computer was introduced in
2002, consumers placed 150,000 orders for the product during the first
three weeks following its launch.

- Apple has sold more than 100 million media players under the iPod mark
since the product was introduced in November 2001, making it one of the
most extraordinarily successful products in consumer electronics history.
In the first half of 2007 alone, Apple sold over 20 million iPod players.

- Through its iTunes Store, Apple has sold over 3 billion songs. iTunes is
the world's most popular online music, TV and movie store, featuring a
catalog of over 500 million songs, 550 television shows, and 500 movies.
iTunes recently surpassed Amazon and Target to become the third largest
music retailer in the U.S.

See Declaration at §6. Apple’s extensive promotion of its famous family of “I’-
prefix trademarks predisposed consumers to recognize IPHONE as a source

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identifier for a mobile digital device. In fact, the iPhone device is in many ways
an extension of the product line sold under Apple’s existing “I’-prefix marks. It
combines a mobile phone with the media player capabilities of the iPod player
and has the capability to sync content from Apple’s iTunes, iPhoto, and iCal
software onto the device. As a result, consumers readily understood that
IPHONE was the latest addition to Apple’s family of “I’-prefix marks, rather than
perceiving IPHONE as a descriptive term for Apple’s device. See Declaration at 7.

In fact, the public began using IPHONE as a brand name for an Apple mobile
device even before Apple officially announced the product.

2. Because of Apple’s close identification with |-prefix marks, the industry
and media used IPHONE as the name of a rumored Apple mobile device,
thereby causing consumers to perceive IPHONE as an Apple mark.

Apple formally announced its plans to introduce the iPhone digital mobile device
on January 9, 2007. However, this announcement did not come as a surprise.
For many years prior to that announcement, the press and the public speculated
about the possibility that Apple would be launching a mobile device that
combined the functionality of an iPod media player with a cellphone and other
features. See Declaration at J8. Apple did not announce that the product would
bear the IPHONE trademark until January 2007, and because the IPHONE
application was filed by Applicant rather than Apple, this application did not signal
Apple’s intent to the public. Nevertheless, when rumors about the product began
to circulate, the public on its own concluded that IPHONE was the natural choice
for a trademark for the new product, given Apple’s strong identification with “I’-
prefix branding. Thus, as indicated by the materials at Exhibit D, reporters,
industry analysts, and consumer/bloggers for many years prior to the January
2007 announcement referred to the product using the IPHONE mark.

The New York Times reported speculation about an Apple IPHONE as early as
August 2002, as did the /nternational Herald Tribune the next month. As the
years passed, the general public was exposed to extensive speculation about the
Apple IPHONE in a variety of media. The discussion rose to a fever pitch in the
months before the 2007 announcement.

For example, in reporting on another electronics company’s new cellphone,
Fortune magazine referred to the Apple iPhone as if it were already an existing,
widely-recognized brand:

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- “The round click-wheel on the lid looks suspiciously similar to that of a
certain popular portable music player, but no, the new LG550 phone from
South Korea’s LG is not the long-rumored Apple iPhone.” (Fortune, May
1, 2006)

Thus, long before launch, the author of the article was acknowledging that
rumors of an Apple IPHONE were so widespread that his readers were likely to
have already heard those rumors and to have come to identify IPHONE as the
newest member of the Apple trademark family. Similar comments appeared in a
variety of publications, and they evidence that the public was already aware of
the IPHONE rumors and that IPHONE was a logical extension of Apple’s IPOD
branding. For example:

- “And that, | think, is one of my favorite things about Apple’s latest
announcements .... anything seems possible. Apple branded iPhone?
Video iPod? Stay tuned.” (Macworld, November 1, 2005)

- “Of course, rumors of an ‘iPhone’ (an Apple-branded cell phone that would
revolutionize the way we use mobile devices) have been swirling around
for years now.” (PC Magazine, November 29, 2006)

- “The Apple iPhone is a little like the legends of yore. There is no actual
evidence of such a beast but because there are iPods and cell phones it
seems like a sure thing that Apple will produce a cell phone.” (Apple
Matters, May 18, 2006)

Similarly, the online community for years referred to IPHONE as if it were already
an established brand in Apple’s trademark portfolio. A Wikipedia entry defining
IPHONE as a forthcoming Apple product appeared as early as 2005. Tech
publication Engadget published more than a dozen articles in 2006 referring to
the IPHONE, with titles such as “Morgan Stanley analysts claim Apple is at work
on the IPHONE.” Sites that focused on Apple in particular were rife with
discussion -- the site MacRumors.com mentioned the IPHONE in 40 different
items in 2006, more than 3 times a month. Some consumers were so excited
about the product, and so certain of the inevitability of its branding, that they
created and posted imaginary iPhone ads and designs for the product as early as
2002, using the iPod trade dress as their inspiration. See Declaration at ¥[8.

In sum, readers of the mainstream press encountered references to IPHONE as
a potential Apple brand name almost 5 years prior to its launch, while consumers
who followed technology in magazines or online likely found the trademark nearly

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inescapable. These publications were clearly not presenting IPHONE as a
descriptive or generic term for a class of telephones, but as a brand name that
was widely expected to be used on a product from Apple.

Thus, IPHONE is the extraordinary example of a trademark so clearly linked with
a single company that the public anticipated it, and recognized it as indicating a
single source, long before it was even announced. Even if one accepts the
examining attorney’s contention that IPHONE is inherently descriptive of a digital
mobile device, the term acquired secondary meaning as an Apple trademark
even before it appeared on the product.

3. Apple’s January 2007 announcement of the product received enormous
nationwide attention, reinforcing secondary meaning.

Apple formally announced its plans to launch the iPhone mobile device at the
Macworld conference in San Francisco on January 9, 2007. The announcement
drew a remarkable level of interest from the media and the public at large. See
Declaration at J9. As indicated by the materials at Exhibit E, the IPHONE mark
and pictures of the product appeared on the front pages of The New York Times,
USA Today, and many other newspapers, and in stories on national television
news and in news magazines. News coverage reflected the months of
anticipation about the product, as The New York Times, USA Today, Wall Street
Journal, and Washington Post ail used exactly the same phrase to refer to the
iPhone -- "long-awaited". In the month of January 2007 alone, Apple's IPHONE
is mentioned in over 2100 articles in the NEXIS news database, which
represents only a portion of the media coverage.

As indicated by the materials at Exhibit F, the profile of the IPHONE brand only
grew from there: |

- A June 27 article in the New York Times, published just prior to the
product's launch, reported that “in the last six months, Apple’s iPhone
has been the subject of 11,000 print articles, and it turns up about 69
million hits on Google.”

- According to independent research by measurement firm
Nielsen//NetRatings, the iPhone section of Apple’s web site received more
than 1.79 million unique visitors in January 2007 alone, and more than
980,000 unique visitors in each of February and March.

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- Anofficer at Nielsen Buzzmetrics reported that the Internet traffic
generated by the iPhone product was “higher than any product we've
monitored”, who indicated that the number of online “blog” posts about
iPhone was higher than posts about Super Bowl commercials, the finale of
The Sopranos, or announcements about Nintendo’s Wii and Microsoft's
Zune and Vista.

- Reuters reported that by late March 2007, more than one million emails
seeking information about iPhone had been sent to AT&T, the exclusive
telecom carrier for the product.

- By April 2007, an independent survey by measurement firm M:Metrics,
Inc. revealed that nearly two-thirds (64%) of American mobile phone users
were aware of the iPhone product, and a projected 19 million Americans
had a strong interest in buying it. M:Metrics analyst Mark Donovan
remarked, “That kind of latent demand is something | don't think we've
ever seen before.”

- In another April 2007 survey by the independent firm ChangeWave
Research, Apple’s iPhone was tied with another company’s long-
established brand, BlackBerry, as the top choice in a survey of people
who planned to buy an advanced mobile phone within the following three
months.

- According to Professor David Yoffie of Harvard Business School, attention
to the iPhone product from newspapers, web sites, and other sources was
“unprecedented,” equating to $400 million in free advertising in the months
following Apple’s announcement. Professor Yoffie observed that "no other
company has ever received that kind of attention for a product launch."

Apple not only enjoyed the publicity for the IPHONE mark generated by third
parties, but promoted the product with its own marketing campaign featuring print
and television advertising prior to launch, beginning with a much-discussed
commercial during the 2007 Academy Awards broadcast. See Exhibit G.

Apple’s IPHONE commercials have appeared on broadcast networks (ABC,
CBS, NBC, FOX, CW) and major cable networks, and the print advertisements
have appeared in leading magazines. Although Apple’s specific advertising
expenditures are not public, the company in 2006 spent $338 million on
advertising. Extensive information about the product has appeared on Apple’s
website, attracting large numbers of web visitors. See Declaration at 710.

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As the launch date neared, USA Today referred to the "mania" for the iPhone,
The Philadelphia Inquirer said "Buzz is big", and The Los Angeles Times called it
"the hottest product".

A commentator from CNET News described the iPhone marketing campaign as
“Apple’s best marketing campaign ever, and maybe one of the best ever in
American business.” Similarly, a commentator on Bloomberg.com said that the
campaign “may be the most successful marketing effort ever, surpassing the
drive the promote Ford Motor Co.’s 1964 Mustang and Microsoft Corp.’s
Windows 95.”

Thus, the IPHONE mark had achieved extraordinary public awareness and
identification as an Apple product even before the product was launched. The
mark had clearly acquired distinctiveness among American consumers before
the product was first sold to the public.

4, Apple’s June 2007 consumer launch of the product received extraordinary
nationwide attention and customer enthusiasm, reinforcing secondary meaning.

Apple introduced the iPhone mobile digital device to consumers at 6 pm on June
29, 2007 at approximately 160 Apple stores and 1800 AT&T stores nationwide.
Many consumers camped out in front of retail stores for days. (The Gridskipper
travel website had published guides to the neighborhoods around Apple's largest
retail stores to assist those who planned a round-the-clock vigil.)

The launch was a leading story on all three network newscasts that evening, as
well as countless cable and local news broadcasts. See Declaration at 411.
Once again, the IPHONE mark and device appeared on the front page of The
New York Times and USA Today, and received extensive press coverage in
other publications across the nation. See Exhibit H. Interest was so high that
The New York Times alone ran more than a dozen stories each in June and in
July 2007, and tech columnist David Pogue created a humorous video for the
site, which was re-posted on YouTube and received another 800,000 viewings.
CBS News "A Closer Look at the iPhone" received over 6 million viewings on
YouTube.

And when the product finally arrived, the reviews were glowing:
- "The iPhone is revolutionary" (New York Times)

"The iPhone is on balance a beautiful and breakthrough handheld computer"
(Wall Street Journal)

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- 31/2 stars (out of 4) (USA Today)

The product was an immediate success. 270,000 units of the iPhone device
were sold in the first two days. Apple continued intensive television and print
advertising for the product before, during, and after the launch. Apple projects
that it will sell 1 million iPhone devices in the first full quarter of sales. See
Declaration at 412.

5. IPHONE is widely recognized by consumers as a trademark identifying
Apple’s mobile device and related products and services.

As a result of this extraordinary amount of press, publicity, and product success,
IPHONE is unquestionably recognized by the public as a distinctive trademark for
the Apple digital mobile device, and not as a descriptive term. This identification
is reflected not just in the remarkable amount of news coverage and advertising
that the mark has received from 2002 to the present, but in consumer web
postings that evidence consumer recognition of IPHONE as a trademark for the
Apple product. See Declaration at ]13.

As indicated above, Nielsen Buzzmetrics observed that the iPhone device had
received unprecedented attention in consumer blogs. It is clear from these blogs
that consumers use and recognize IPHONE as the trademark for the Apple
product, and not as a descriptive term for the product, as evidenced by the
attached examples at Exhibit I.

Consumers have also created their own videos about the iPhone device, and
posted such homemade material on sites such as YouTube. In addition,
consumers have posted humorous videos from television on YouTube. For
example, a spoof video from Late Night with Conan O’Brien received over 6
million YouTube viewings, and a skit from Saturday Night Live had over 1.2
million viewings. See Exhibit J. The huge number of viewers who have watched
these videos evidences the high level of consumer interest in the product and the
strong identification of IPHONE as an Apple brand.

There is no legal rule stating the minimum amount of time necessary for a mark
to achieve acquired distinctiveness. See McCarthy on Trademarks, 15:55
(2007). Indeed, Professor McCarthy states that public recognition of a mark can
be established “comparatively overnight” and that a trademark user can acquire
secondary meaning “almost immediately after launching a new product.” /d.
McCarthy further observes that, with massive national advertising campaigns in
both television and print, a mark can achieve secondary meaning “within a matter

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of days or weeks, compared to the many years required in the days of more
leisurely advertising.” /d. At 15:56. See also Hunter Publishing Co. v. Caulfield
Publishing Ltd., 1 USPQ2d 1996, 1999 (TTAB 1986); Se/chow & Righter Co. v.
Decipher, Inc., 598 F.Supp. 1489 (E.D.Va. 1984) (mark TRIVIAL PURSUIT and
accompanying trade dress had acquired distinctiveness based on
"unprecedented success in the marketplace,” including sale of 1,000,000 units
during the first year of use, 13,000,000 units during the first three quarters of the
second year of use and numerous newspaper and magazine articles written
about the product). Apple products in particular have a history of achieving
distinctiveness very rapidly — the ITUNES mark was first used in January 2001
and approved for publication based on a Section 2(f) claim filed in March 2002.
See Declaration at 414. |

IPHONE is a rare example of a mark that had acquired distinctiveness even prior
to its announcement, that unquestionably acquired widespread consumer
recognition at the time of its announcement, and that is clearly perceived as a
source indicator for Apple’s mobile digital device now.

IPHONE will be perceived as distinctive when used in connection with the
related services covered by this application.

Under TMEP Section 1212.09(a), the Trademark Office can recognize that a
mark has acquired distinctiveness, even though the mark has not yet been used
in a given class, on the basis that (1) the same mark has acquired distinctiveness
in connection with other goods/services, and (2) that a relationship exists
between the goods/services in actual use, and the goods/services recited in the
intent-to-use application, sufficient to warrant the conclusion that “the previously
created distinctiveness will transfer to the goods or services in the application
upon use.”

The IPHONE mark clearly meets both tests.

First, as the foregoing discussion demonstrates, even if one considers IPHONE
inherently descriptive of a digital mobile device, the IPHONE mark has
unquestionably acquired distinctiveness as used in connection with such devices
in Class 9.

Second, that acquired distinctiveness will unquestionably transfer to the services
covered by this application, for several reasons:

1. Apple's family of |-prefix marks is already well-known in this class

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As discussed above, the IPHONE mark will clearly be perceived as a new
member of Apple's family of “I’-prefix marks, several of which are already
pending or registered in these classes:

Class 38

IPOD (Stylized) (SN 77/013,000)
IPODCAST (SN 78/706,746)

ITUNES STORE (SN 77/097,285)
ITUNES MUSIC STORE (RN 3,048,602)
IMUSIC (RN 2,511,614)

Class 41

IMIX (SN 78/504,930)

IPOD (Stylized) (SN 77/013,000)

IPOD (SN 78/532,252)

ICAL (RN 2,806,664)

IMUSIC (RN 2,511,615)

ITUNES MUSIC STORE (RN 2,993,227)

Class 42

IPOD (Stylized) (SN 77/013,000)
ITUNES STORE (SN 77/097,285)
ITUNES MUSIC STORE (RN 2,993,227)
ICHAT (RN 2,090,641)

IMUSIC (RN 2,511,613)

Consumers perceive these “I’-prefix marks as part of Apple’s family of marks,
and will associate the IPHONE mark with Apple when used in the same class.

IPHONE is unique to Apple in Classes 38, 41, and 42

As discussed above, Apple has already established consumer recognition in the
IPHONE mark that is truly extraordinary — front page news stories, television
news coverage, extensive consumer “buzz” — and that recognition will clearly
carry over to Classes 38, 41, and 42, where Applicant's applications are the only
active federal IPHONE marks.

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Apple’s intended use of IPHONE in Classes 38, 41, and 42 is clearly related to its
Class 9 use

Apple has used IPHONE as a mark for its mobile digital device in Class 9. This
device sends and receives telephone calls, email, and other digital data, plays
digital format audio, and can be used as a handheld computer, personal digital
assistant, electronic organizer, electronic notepad, and camera. These
capabilities are set forth in the revised Class 9 identification in Application Serial
No. 77/007,808.

This application covers a range of computer-related services that would be
utilized by a digital mobile device, including the development of software and
access to a variety of computer-related services, and a consumer who uses such
services will clearly and immediately understand that those services emanate
from or are authorized by the provider of the Class 9 device.

Thus, consumers who encounter the IPHONE mark in connection with these
services will immediately associate the mark with Apple’s use in Class 9, and
perceive IPHONE as a distinctive indicator of origin.

Conclusion

The Examining Attorney must resolve any doubts as to the sufficiency of
Applicant’s acquired distinctiveness in Applicant's favor. See In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., 4 USPQ2d 1141 (Fed. Cir. 1987). Here, Applicant
has clearly proven that IPHONE has become distinctive, and the Examining
Attorney should allow registration of the mark on the Principal Register under
Section 2(f).

Lawfully submitted,


Gundersen
 

Enclosures

INTHE UNITED STATES PATENT AND TRADEMARK OFFICE

In re: Applications of ‘Trademark Attorney: Linda Michelle Estrada
OCEAK | TELECOM SERVICES, LLC:

 

Law Office: 104
Mark IPHONE

DECLARATION OF
THOMAS R. LA PERLE
IN SUPPORT OF ACQUIRED
DISTINCTIVENESS:

Commissioner: for Trademarks.
‘P.O. Box'1454
Alexandria, Misia 2231 3.4454

1. I Thomas R. La Perle, am: Manager. of Ocean Telecom Services, LLC
(hereinafter “Ocean” ').and.an in-house: intellectual Property Counsel of Apple. Inc.
(hereinafter “Apple”). Prior to joining: Apple-as Trademark Counsel in.1999, I was an:
associate with! ‘the law firm of Fenwick & West LLP in Palo Alto, California, where | was
one.-of Apple's outside intellectual. ‘property:counsels. As result of my considerable:
experience: working as part-of Apple's legal team, I am intimately familiar with Apple’s
Operations, especially the. marks. and. marketing activities associated with its. innovative
personal computer hardware and software:products. All information provided within this
affidavit is. personally known to me: or Is information which ‘has. been provided to me
which | believe to be true. |

 OCEAN'S  OWNERSHIP OF THE IPHONE TRADEMARK APPLICATIONS

2, Ocean i is the owner of.record of nine U.S. trademark applications for the.
Mark IPHONE: Application Serial Nos. 77/078;484, 77/078,485, 77/078,490,
771078,493;, 77/078,496, 771078,497, 77/078 499, 771078,488 and .77/007,808.

 OCEAN'S RELATIONSHIP TO APPLE

3. Apple is a-related company: of Ocean, as defined in Section 45 of the
Lanham-Act. Apple‘has used the: mark i in- connection. with.its iPhone:digital mobile
device, as: described below.

APPLE'S GROUP OF “I”FORMATIVE TRADEMARKS

4. “With the launch of its. ground-breaking IMAC and IBOOK computers in
1998, Apple: quickly became identified with brand names beginning with the letter “I”, In
the 10 years since that launch, Apple-has used.and registered:the following marks that beat with the: letter "|" in Classes:9, 16, 39, 38,39, 41, arid 42, as-follows:

 

IMAC for computers, in use: since  1998
IPOD for digital media players, gift/purchase cards, online retail services, data| storage: services, in use since 2001
ITUNES for computer: software, online retail services, telecom services,
 entertainment services, and digital: music services, in-use since 2001
IDVD for computer software, in use since 2007
ICAL for computer-software. and ‘database services;. in: use since 2002
IPHOTO ‘for computer software, in use:since 2002
ILIFEfor: computer software, in use since.2003
ISIGHT for computer hardware, in use-since 2003
ICHAT for computer software and services, in use since 2003

5. Apple has-also: launched its IWORK’and IWEB Software products, and has:
pending applications: for those:-marks as. well.as IWRITE for. computer software: and  IMIX for web-based retail, entertainment; and informational Services. Apple now holds over 50:federal active applications and:registrations.of marks that begin with the prefix I


6. Apple has achieved enormous success with its: line. Of. ‘products: bearing aa
prefix trademarks, with the result that‘the public identifies such.marks with Apple. The
following are some: ‘of the highlights of its:use of this family. of?’ "prefix: marks.

 

* Apple: sold 6,000,000 units.of its first generation of iMac: ‘computers. During the
product!s initial launch in 1998, one iMac-computer was sold:every 15:seconds of
every minute, of every hour, of every day, of every week, for over four monoliths.

 

Wr en the second O50 000 att ‘of the: iMac sel ee was introduced | in 2002,

following its launch.

* Apple has. Sold more than 100 million media players under the iPed mark since
the product was introduced in November.2001, making it one of the: most
extraordinarily successful products’ in consumer’ electronics history. in the first
half-of 2007 alone; Apple sold over.20 million iPod players.

©. Through its: iTunes Store, Apple has-sold over 3 billion songs. iTunes.is:the
world's: most popular online:music, TV and movie:store, featuring a catalog.of

ever 500 million songs,.550 television shows, and 500 movies. .iTiines recently
surpasyed Amazon and Target to become the third largest misic retailer in the
US. | |

7. Apple’ S extensive promotion of its. famous family of “l’-prefix trademarks
predisposed consumers to recognize: IPHONE as a source identifier for a. mobile digital
device. In fact, the iPhone device is in many ways:an extension of the product line sold
under: anda isting ” “ps eee aioe Kt combines a mobile = ere with ‘the media |

 

aA ‘Apple a raily of" « “Tpreix tha arké.
rather than. perceving IPHONE a as a a deceriptive te term for Apple's device.

 

APPLE'S: INTRODUCTION OF THE IPHONE: MARK

8. Apple formally announced its plans. to introduce the iPHone:-digital mobile.
device-on. January 9, 2007. However, this: announcement did not: core.as a surprise.
-For many years prior to that. announcement, ‘the press :and:the public speculated about
the possibilit ty that:Apple would be lauinching.a mobile device that camnbined the
ality-of an iPod. media player with:a:cellphone:and:other features.. The-online
community for years-referred to IPHONE as ff it were already an-established brand in
Apple" 's trademaric portfolio. Some consumers were’so excited:about the product,. and |
so:certain of the inevitability of its branding, that they: created and posted imaginary
iPhone ads and designs for the product as-early as:2002, using the iPod trade dress as
their inapiration. |

 
 
 

 

9. Apple formally announced its plans'to Jauinch the iPhone mobile-device at
the Macworld. conference:in.San Francisco. on. January'9, 2007. The announcement
drew a remarkable level of ifiterest from the média andthe public at'large.

APPLE’S PROMOTION OF ‘THE IPHONE: MARK

10, Apple not only enjoyed the: publicity for the IPHONE mark generated by
third parties, but promoted'the product with its.own marketing: campaign featuring print
and television ‘advertising prior to launch, beginning with a much-discussed:commiercial.
during the:2007 Acadeiny Awards broadcast. Apple's IPHONE.commercials have
appeared .on. broadcast networks (ABC, CBS, NBC, FOX, CW). and: major cable
networks, andthe print advertisements have.appeared in leaditig magazines, Although
Apple's: specifi c advertising expenditures are not public, the company in 2006 spent
$338 million on-advertising. Extensive information about the product has appeared:on
Apple's website, attracting farge-numbers of web visitors.

APPLE'S LAUNCH OF THE IPHONE PRODUCT

11. Apple introduced the: iPhone mobile: digital device to consumers at6 p pm
on June:29, 2007 at approximately: 160'Apple:stores and 1800°AT&T stores nationwide.
Many consumers ce camped outin front of retail:stores for: days. The launch was a
leading story on.all three-nétwork newscasts that evenitig, aswell-as countless cable.
and local news broadcasts. | | |

 

42: The: product was: ati immediaté success. 270,000 units-of the iPhone
-device.were sold in first two. days. Apple: continued intensive television and print
advertising: for the. product before, during, and:after the launch. Apple projéets that it will
sell 1 million. iPhone devices in the first full: quarter of:sales.

 

CONSUMER. RECOGNITION OF THE IPHONE PRODUCT

    

13. As atésult of the:extraordinary:amaunit of press, publicity, and product
success, IPHONE jis. unquestionably: recognized by: the public.as a-distinctive trademark
for the :Apple digital | mobile: device, and notas:a: descriptive term. This identification is:
‘reflected net ‘justi in: the remarkable: ‘amount-of reviews coverage: arid advertising that the
mark has received: from.2002:to the:present, but-in consumer-wéb. postings: that

evidence consumer of récognition:-of IPHONE as a trademark for the Apple product.

 

 

14, Apple products in particular‘have-a history of. achieving: distinctiveness
very-rapidly -.the’ ITUNES mark was ‘first: used in January 2001 and approved for
' publication: based on a:Section: 2(f):claim filed in:March: 2002. |

Having | been warned that.willful false statements and the like.so-made are.
‘punishable: by fine ‘or imprisonment, or both, under Section 10001 ‘of Title 18 of the
United States Code; and: that such:willful false statements may jeopardize the validity of
‘the application: OF any registration resulting therefrom, | further.declare that all
‘statements. made herein-of my‘own knowledge.are true and that-all Statements made-on'
information: and A belief are believed to: be-true.

 

 Thomas R. La:Perle,-Esq.