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Apple versus Microsoft - Trademarking Retail Store


By
Smith & Hopen PA

Recently, Apple was issued a trademark for the design and layout of their popular Apple retail stores, located around the world within malls or as standalone buildings (trademark file).

This is generally known as a trade dress, which generally refers to the physical appearance of a product, product packaging, building design, business, etc. Trade dress protection attempts to protect the intellectual and creative efforts and design of a business, while also protecting consumers’ reliance on a business’ products or design in evaluating quality of its goods or services. Apple has been pursuing protection over the look of its stores since May 2010 when Apple filed the trademark application. After submitting documents back-and-forth with the U.S. Patent & Trademark Office for a few years, the mark was published for opposition on June 5th, 2012 and was finally registered on January 22nd, 2013.

Apple has shown that it uses this mark – the design and layout of its Apple retail stores – as a source identifier for the following goods and services:

Retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto.

During prosecution of the trademark application, Apple was able to prove that consumers also relate this particular mark with those goods and services. In part, Apple showed that they had used this mark in commerce for at least five (5) years, which leads to a presumption of distinctiveness acquired from consumers. The protection of consumers lies at the center of trademark law. Thus, when consumers see the design and layout of an Apple Store ®, they have a certain expectation of quality of the goods and serviced rendered within the store.

It has long been held that the designs and layouts of retail stores are eligible for trade dress protection and may, in and of themselves, hold a certain inherent distinctiveness or acquired distinctiveness. However, the hype over this particular case is enhanced not only because it is Apple (who doesn’t love Apple?) but also because the design and layout of the retail store is relatively simplistic. In its individual components, the mark shows a Scandinavian design with the following components:

  • Clear glass storefront with top and side panels
  • Rectangular recessed lighting units across the ceiling
  • Cantilevered shelves along the side walls
  • Rectangular tables arranged in a line in the middle of the store from the front of the store to the back of the store and running parallel to the side walls
  • Multi-tiered shelving on the side walls
  • Oblong table with stools at the back of the store
  • Video screens on the back wall

Individually, each of these components is very well-known and not distinctive on their own. However, when taken as a whole, the entire design and layout is distinct, and a consumer walking into a store adorned with such components would know that he/she is in an Apple Store ® and can expect the quality of goods and services that Apple typically provides.

The purpose of Apple obtaining trade dress protection over the design and layout of its stores is to protect its brand, to provide consumers with a consistent look and feel when inside a store, and to protect itself from any infringing companies. It is interesting to note that Apple is not the first computer retail store to obtain trade dress protection for its stores. Microsoft obtained trade dress protection in October 2011 for its new retail stores as well.

Though similarities between the marks do obviously exist, the differences are noticeable as well. It will be interesting to see how Apple and Microsoft protect the branding of their stores as time passes.

Another interesting discussion would be whether Apple (or Microsoft) could obtain a design patent over the design of its retail stores. A design patent protects the non-functional aesthetic value (i.e., the appearance) of an article of manufacture. The question would be whether a store can be considered an “article of manufacture” and how broadly the terms “article” and “manufacture” can be interpreted. The U.S. Court of Appeals for the Federal Circuit defined “article of manufacture” as “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). The U.S. Supreme Court, in turn, defined “article” as “a particular substance or commodity”. The Federal Circuit’s definition from Chakrabarty appears to support the idea that an Apple Store can be eligible for a design patent, as the store provides new combinations of raw or prepared materials. Additionally, if a store can be considered a “commodity”, the Apple store may be eligible for a design patent.

Common sense and my initial impression would lead me to believe that a store cannot be an article of manufacture since we would not think of a store as such in our daily lives. However, I believe that the well-established case law on the definition of an “article of manufacture” would support a broad interpretation that would include the design and layout of a retail store as an article of manufacture since it is a combination of raw or prepared materials. I further believe, though, that this question would be ripe for court interpretation, and the outcome would be very interesting for consumers and businesses alike, as we are beginning to see businesses brand their stores more often.




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