>> HOPE SHIMABUKU: Now we are going to move to the next portion of our program and Judge Frances
Wolfson will be giving an overview for the next section. Judge Wolfson is an administrative
trademark judge with the Trademark Trial and Appeal Board at the USPTO. She began her career
with the USPTO as a trademark examining attorney and
later joined the TTAB as an interlocutory
attorney.
She was appointed to the position of administrative trademark judge in 2010. Prior to
joining the USPTO, Ms. Wolfson worked as an attorney in private practice in San Francisco and
Seattle including at Lucasfilm LTD where she
handled the worldwide trademark portfolio for "Raiders of the
Lost Ark" and "Star Wars: The Empire Strikes Back."
Ms. Wolfson received her undergraduate degree summa cum laude from the University of
California at Santa Barbara in Asian Studies and her law degree from UCLA Law School. She spent a
college year abroad to study Japanese literature
at the Kansai University of Foreign Studies in Osaka,
Japan.
Over to you, Judge Wolfson, who is going to be
giving the case summary for the opposition that you'll
be hearing today. Thank you.
>> FRANCES WOLFSON: Thank you very much, Ms. Shimabuku. I will be
happy to begin once the slides are online. Very good.
I'm going to give here a case summary which the slide will show here
of opposition number 91239006, Gang Cao versus Apple Inc.
You will then be able to listen to the oral arguments
on this case following the presentation.
The next slide will show you that Apple Inc. has applied to register live photos for computer
software for recording and displaying images, video, and sound in International Class 9. The
mark is in standard characters and was first used in 2015, and first used in commerce in 2015. The
exclusive right to use the term photos has been disclaimed apart from the mark as shown. This
application was filed based on priority derived from a Jamaican
application but the basis for the application is Section 1A.
The next slide will show you that in addition to its other claims, applicant claimed ownership of
the mark LIVETYPE, a registration that it owns for computer software and the next slide will show
you it also claims ownership for the mark LIVE LISTEN, also for computer software.
Turning to the following slide, next slide, please. The applicant’s specimen of use that was
presented in this application is also presented on this screen, and it says introducing live photos.
The text below says: A still photo captures an instant
frozen in time. With Live Photos, you can turn
those instants into unforgettable living memories. At the heart of a Live Photo is a beautiful twelve
megapixel photo. But together with that photo are the moments, just before and after it was taken,
captured with movement and sound. In other words, for a few seconds the photo is animated. As
applicant described in its launch, what happens a second and a half before and a second and a half
after the photograph is taken, is paired with the simultaneously recorded video to create a new
hybrid medium.
Now as you will see from the next slide, opposer finds several reasons to object to registration of
the term live photos. First, opposer claims it owns
the domain name for livephoto.com, and that he
plans to use the website to sell his own interactive software that brings life to still
image photos.
He claims the term live photos is commonly understood to refer to such goods and, therefore,
it's generic or merely descriptive, and that opposer will be damaged by the registration of
live photos because then it gives applicant the right to prevent him from using his own mark, live
photo.
Applicant’s response to this included denial of the
salient allegations in the complaint, but also as
the next slide will show you, raise the affirmative defense of entitlement. Formerly known
as standing. The entitlement to pursue a statutory cause of
action is a threshold issue in every case, as you have heard before
in today's programs. And according to applicant,
opposer doesn't really have an interest in using live
photos, rather, he wants to use the mark Spin Explorer, as you can see on the screen, and Spin
Fun, as you can also see on the screen, which are used in his apps that are currently available, and
you will also see from some research that applicant claimed it did, the domain
livephoto.com, is for sale. The opposer says I'm an engineer who invented mobile applications
that do the same thing as applicant. We are competitors. I continue to use livephoto.info as
a domain name, for a programming development website, and, therefore, I do have entitlement.
This issue was preserved by applicant in its trial brief and therefore, it will go to trial. Now the
next slide
I'm briefly going to go over the bases which I know you are by now quite familiar with. A mark is
merely descriptive if it immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used. And, as you have heard, a descriptive
mark may not be registered. However, as the next slide will show you, if a descriptive mark has
acquired distinctiveness, it can be registered. To establish that a term has acquired
distinctiveness, the applicant must show that in the minds of the public,
the primary significance of a product feature or term is to identify the source
of the product rather than the product itself.
Turning to the next slide, we will see that another ground of refusal was that the mark is
generic, genericness is the ultimate in descriptiveness and a generic mark can never be
registered. It is the common descriptive name of a class of goods or services. The test for
determining whether a term is generic involves a two step inquiry. First, what is the genus of the
goods or services at issue, and second,
is the term understood by the relevant public primarily to
refer to that genus of goods or services. Recall, applicant’s goods are computer software for
recording and displaying images, video, and sound. We will continue to the next slide and discuss the
evidence.
Evidence for descriptive term may be obtained from any competent source. Similarly, the next slide
will show you, generic terms may be demonstrated by evidence obtained from any competent source,
and the list also includes the same types of evidence, purchaser testimony, consumer surveys,
listings in dictionaries, trade journals, newspapers, and other publications.
Turning to the next slide, we will start looking at the main trial evidence, opposer submitted
first notices of reliance on dictionary definitions for live, life, photograph, printed
Internet publications, and a publication notice for a U.S. patent application that was owned by
applicant. The next slide will show that they relied primarily on direct testimony declaration
of Mr. Cao and that pursuant to the rule 2.123(a)(1)
used declarations as the testimony vehicle, which
is allowed. He attested to the development of technology in this field since 2015 and that he
observed many instances of generic third party use
of live photos. The next slide shows you some of those
uses. Third party use on the next slide will show you the live photos of alleged mark being used by
some third parties, for example, five free apps to take live photos on Android, how to get iPhone’s
live photos on Android with Google Motion Stills, Lumia Cinemograph lets you capture live photo from
Windows phone. The following slide will show you additional third party uses of live photos,
including, at the bottom, from the United States patent application publication owned by applicant,
which reads: In the live photo asset and burst photo asset examples, asset subcomponents
typically are captured as part of a common capture transaction.
Next slide, please. Here opposer contends that applicant uses live photos itself as a generic
noun. highlighting where it says capture photos that come alive and see your photos come to life.
Interestingly applicant also submitted a copy of this
ad, pointing out the ways that it uses live photos
as a Trademark. In the next slide we will start to look at applicant's testimony. First, applicant
decided to take the cross examination of Mr. Cao and did so by written questions, because he is
located in Canada outside of the United States.
Therefore, during this time proceedings were suspended. On the next slide, you will see that
applicant submitted a notice of reliance on the exhibits that were accompanied the cross
examination by written questions, print outs of
applicant's own website and its 10-K filings, print
outs from third party websites, including the Wayback Machine, copies of press releases, news
articles, and other media, and excerpts from applicant, from opposer's responses to applicant's
discovery requests.
The next slide will show you that applicant was very conscientious about confirming
and authenticating all of the articles that were
attached as exhibits to his notice of reliance by direct testimony declaration of its senior
paralegal at the law firm representing applicant, and the next slide will show you that they were
also as diligent in showing that the Wayback Machine excerpts were also authentic.
But the primary evidence or testimony came as the next slide will show you, from the senior director
of Apple Inc.'s legal department. He explained, how applicant uses its live photos
software feature showing that certain evidence show that the mark is not generic, certain other
evidence show that it's obtained, acquired
distinctiveness, or obtained second meaning and also
spoke to the alleged lack of use of the phrase live photos by opposer to show that there was no
entitlement.
The next slide will show us some of the evidence that was submitted by applicant, this is a screen
shot from a video that shows applicant's YouTube video of its announcement of the live photo
software. You may recall that all filings must be
made through ESTA, the Board's electronic system and
that ESTA will not accept multimedia files. The
way these types of files are submitted is on a physical CD
or DVD which is what applicant did here.
The next slide will show us some of applicant's own promotional effects, applicant has
advertising, print advertising, where they use live
photos allegedly as a Trademark, and in the left-hand
side they show that iPhone with arrows to some of
the features of the iPhone, and what is says in the red circle
is that live photos brings your memories to life. The next slide shows us an additional
evidence, applicant searched about 20 reference sources,
dictionaries and thesauruses, which gave answers
similar to the above: Sorry, no dictionaries indexed
in the selected category contain the exact phrase
live photos. However, there was an excerpt from the
Free Dictionary which gave a detailed account of
live photos as an iPhone camera feature, and on Google, there was another link to live photos,
which also calls the live photos an iPhone camera feature that brings photos to life.
Turning to the next slide, we will move into the rebuttal evidence that opposer submitted. Here
they decided to take the cross examination of Mr. La Perle and were able to conduct this orally
because he is resident in the United States.
Opposer also submitted a notices of reliance on
several different documents, one is the European Union’s
Intellectual Property Office’s 2018 decision regarding applicant's European Union application
for live photos, another was copies of ten Canadian applications that were filed by applicant
for live photos, one of which has been opposed by opposer and for live photo kit which has also been
opposed by opposer. Then additional Internet printouts and filed confidentially under seal
copies of opposer's three patent applications.
This concluded the evidence
and the file then moves into the briefing period.
The next slide will show us briefly the arguments that were made at trial. Opposer argues that
applicant's computer software creates live photos, it's generic, alternatively, it's merely
descriptive, and prior to applicant’s adoption of the term, authors
were using and continue to use it for the same technology. The next slide shows applicant's
arguments in its brief. Although this was presented
last in applicant’s brief, as we said, opposer standing is the threshold issue, so
I'm putting it first, opposer lacks entitlement,
applicant also made evidentiary objections to opposer's
rebuttal evidence claiming that it was improper, and that the foreign works of Trademark
applications underline the decision were irrelevant. Substantively, our applicant argues
live photos is suggestive, and nonetheless it acquire distinctiveness so it is registerable.
Finally, the last slide will show us again opposer’s
reply, gets the last word, says no, live photos is
generic, live photos on the alternative is merely descriptive, consumers do not perceive it so
therefore as being a source indicating term and therefore, it has no secondary meaning, and as for
the evidence, it should not be excluded as a matter of law, it should be admitted and the Board
can term the weight.
This wraps up the conclusion, and we’ve now familiarized
ourselves with the issues to be determined in this
case, the relevant legal principles that will
guide the Board’s decision and the evidence upon which
the arguments will be based. After this brief
introduction, you may want to think about what you might
focus on during the oral arguments. But thank you and please enjoy the hearing.