Apparently so. After recently watching the movie Moneyball, I got to thinking about value in IP. Trademarks, and in particular alternative trademarks, are the most undervalued and under-utilized form of IP protection.
Case in point, United States Trademark Registration No. 4,277,914 for the mark shown below:
The registration is owned by Apple and covers the design of an Apple Store, and issued on January 22nd. That’s right – Apple trademarked the look of an Apple Store, and it really wasn’t that difficult. They received an initial rejection on the grounds that the 3-dimensional store configuration was not inherently distinctive trade dress.
Apple’s response was 122 pages long (so maybe it wasn’t that easy), and pointed out that under Supreme Court precedent (Two Pesos and Walmart) retail store trade dress can be inherently distinctive product packaging, and then went on to argue acquired distinctiveness through a series of declarations. Apple went on in great detail about the design of the Apple Stores, and the success of the stores based in part on the design, which according to Apple brings in more revenue per square foot than any other known retail space.
Apple’s 122-page response merited a one sentence Office Action rejection, but also an apology for the long delay in responding. I thought the apology from the USPTO was a nice touch, but the rest I’ve seen before. If 122 pages was not enough, maybe Apple’s second effort (a 681 page response) would be? It was. Apple submitted a consumer survey conducted with 180 respondents in nine different malls showing that 42% of respondents could identify Apple by name when shown the applied for mark. The proof of acquired distinctiveness did the job and the mark was approved.
So, what is the moral of the story? To quote Lisa and Homer Simpson “there is no moral, it’s just a bunch of stuff that happened.” Well that’s not it, there is a moral. The moral is that while it is often said that you can patent anything under the sun, the truth is that you can also trademark anything.
The only limit is your imagination (and a hundred thousand in legal fees). Seriously, as I stated in the outset, federal trademarks registration are undervalued and should be used more and for more than just traditional trademarks. Apple’s effort is a good illustration of the concept, and with a little forethought and a willingness to disclose some financial details trade dress protection can be obtained without tremendous difficulty.