USPTO denies Apple 'Multi-Touch' trademark, calls it 'merely descriptive'

Posted:
in iPhone edited January 2014
Apple has been denied an appeal for the "Multi-Touch" trademark because the term has been viewed as too broadly descriptive.



The Trademark Trial and Appeal Board of the United States Patent and Trademark Office issued the ruling late last week, as noted by MacRumors.



Apple filed for the trademark on January 9, 2007, the day the original iPhone was unveiled. The company quickly took its campaign for the trademark overseas, even as analysts foresaw the creation of a "mega-platform" around the new technology.



The examining attorney at the USPTO denied the original application on the basis that the proposed mark is "merely descriptive of applicant's goods." Apple then submitted an amendment arguing that the multi-touch term had "acquired distinctiveness." But, the examiner disagreed with the characterization and stuck to the initial ruling.



The Cupertino, Calif., iPhone maker subsequently appealed to the Trademark Trial and Appeal Board. The Board held a hearing in April and ultimately refused the appeal, citing the precedent that "?the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.?



The ruling upheld the fact that the multi-touch term is "highly descriptive" and noted that Apple had submitted insufficient evidence to establish "acquired distinctiveness" of the mark.



Apple's claim to the trademark was undermined in part because, after the release of the iPhone, rival handset makers quickly added multi-touch functionality to their own products. Though Apple was the first to use the "multi-touch" name and sought to trademark it as its own, the term's distinctiveness was diluted by its immediate adoption as a generic term for the technology.



For its part, Apple asserts that "touchscreen" and "capacitive" are the generic terms for the input technology and "multi-touch" is the company's proprietary name for it. Apple also asserted that three other smartphone makers have trademarked the touch screen features of their devices, but the Board viewed that fact as having little relevance to whether the mark in question was merely descriptive.



Though Apple has been unsuccessful in its efforts to trademark "multi-touch," it has been more effective at attaining patents related to the technology. In 2009, Apple was awarded a 358-page patent relating to the iPhone interface and multi-touch technology. Last October, the company received approval for a batch of multi-touch-related patents.







Also, patent experts noted that a broad multi-touch patent granted to Apple in June may allow it to "bully" its rivals. One report called the patent a "huge blow" to the company's rivals, such as HTC, Samsung, Motorola, Research in Motion and Nokia.



Apple has asserted some of its multi-touch patents against competing handset makers alleging that their touchscreen smartphones are in violation of its intellectual property.



The company has also had to defend itself from claims that its multi-touch technology infringes on others' patents. Taiwanese touchscreen maker Elan Microelectronics sued Apple last year, accusing the company of "knowingly and deliberately" infringing on its patents through its MacBook trackpads and Magic Mouse product. A judge with the International Trade Commission ruled in April that Apple had not violated the patent.
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Comments

  • Reply 1 of 51
    MacProMacPro Posts: 17,897member
    Unlike say ... Windows? (reference to why I joked about this for Ireland http://apple.slashdot.org/story/11/0...-So-Is-Windows



    Out of interest, how many true multi-touch systems exist in the market place.
  • Reply 2 of 51
    Quote:
    Originally Posted by digitalclips View Post


    Unlike say ... Windows?



    Out of interest, how many true multi-touch systems exist in the market place.



    Your point would be valid if Microsoft sold actual windows.
  • Reply 3 of 51
    A good ruling. This time I think Apple was totally wrong.
  • Reply 4 of 51
    At least Apple got the patent on the technology. That's far more important.
  • Reply 5 of 51
    Quote:
    Originally Posted by AppleInsider View Post


    "?the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.?



    I got this in a fortune cookie yesterday!



    Seriously though, I think this is the right ruling. Imagine if every keyboard manufacturer was sued because their customers use more than one finger at a time.



    Bad example, but I'm reaching!
  • Reply 6 of 51
    Quote:
    Originally Posted by jd_in_sb View Post


    At least Apole got the patent on the technology. That's far more important.



    I agree. A patent protecting the technologies at work I think are more important than the name.
  • Reply 7 of 51
    irelandireland Posts: 17,536member
    Quote:
    Originally Posted by digitalclips View Post


    Unlike say ... Windows?



    You have lost all credibility.
  • Reply 8 of 51
    MacProMacPro Posts: 17,897member
    Redundant
  • Reply 9 of 51
    MacProMacPro Posts: 17,897member
    Quote:
    Originally Posted by Ireland View Post


    You have lost all credibility.



    Oh gosh... Your opinion is so important to me. Seriously though, explain your statement given Apple themselves commented that Windows was very geric recently in another trade mark case relating to apps stores and to which I was making a reference in an obviously too subtle attempt at humor.



    But hey, at least you thought I had some before you failed to get my joke
  • Reply 10 of 51
    Even though patents and trademarks are clearly quite different things, I can't help feeling that there is something odd about granting Apple the patent on their multi-touch technology, but then refusing to let them trademark an obviously accurate and descriptive name for it.
  • Reply 11 of 51
    MacProMacPro Posts: 17,897member
    Quote:
    Originally Posted by muppetry View Post


    Even though patents and trademarks are clearly quite different things, I can't help feeling that there is something odd about granting Apple the patent on their multi-touch technology, but then refusing to let them trademark an obviously accurate and descriptive name for it.



    I'd agree, in fact that should have been taken into account.
  • Reply 12 of 51
    Quote:
    Originally Posted by muppetry View Post


    Even though patents and trademarks are clearly quite different things, I can't help feeling that there is something odd about granting Apple the patent on their multi-touch technology, but then refusing to let them trademark an obviously accurate and descriptive name for it.



    Well, the patent is the important one.

    I guess the question is was the term multi-touch in usage before the iPhone, because touch devices that could handle multiple inputs existed before; I just don't know if the term multi-touch was used to describe them.
  • Reply 13 of 51
    MacProMacPro Posts: 17,897member
    Quote:
    Originally Posted by majjo View Post


    Well, the patent is the important one.

    I guess the question is was the term multi-touch in usage before the iPhone, because touch devices that could handle multiple inputs existed before; I just don't know if the term multi-touch was used to describe them.



    I wonder if Apple have alternatives in mind? At least no one else can use multi-touch.

    Correction I meant no one else can TM it.
  • Reply 14 of 51
    I really hope the brain trust over in Cupertino has a lot more up it's sleeve than more BS lawsuits like this.



    Imagine if Kroger tried to patent "Grocery Store" and "Shopping Cart," then went after Whole Foods, Safeway, and Albertsons for infringement? This is getting out of hand.
  • Reply 15 of 51
    Quote:
    Originally Posted by digitalclips View Post


    I wonder if Apple have alternatives in mind? At least no one else can use multi-touch.



    No, this means everyone can use multi-touch (ie. no one has exclusive rights to the term).
  • Reply 16 of 51
    Quote:
    Originally Posted by digitalclips View Post


    I wonder if Apple have alternatives in mind? At least no one else can use multi-touch.



    No. It means that everyone can use it.
  • Reply 17 of 51
    MacProMacPro Posts: 17,897member
    Quote:
    Originally Posted by majjo View Post


    No, this means everyone can use multi-touch (ie. no one has exclusive rights to the term).



    Of course i meant any one can 'use it' but not trade mark it. I wonder if Apple have another trade mark idea along similar lines. Usually marketing a phrase not trade marked isn't a good idea.
  • Reply 18 of 51
    MacProMacPro Posts: 17,897member
    Quote:
    Originally Posted by Chris_CA View Post


    No. It means that everyone can use it.



    I miss spoke I meant no one else can trademark it.
  • Reply 19 of 51
    Quote:
    Originally Posted by digitalclips View Post


    I miss spoke I meant no one else can trademark it.



    No worries.

    After all, this is AI.



    Everyone is required to mess up or post FUD at least once.

  • Reply 20 of 51
    Quote:
    Originally Posted by majjo View Post


    Well, the patent is the important one.

    I guess the question is was the term multi-touch in usage before the iPhone, because touch devices that could handle multiple inputs existed before; I just don't know if the term multi-touch was used to describe them.



    I think that my discomfort is misplaced, primarily because Apple have patented their particular implementation of multi-touch. Other multi-touch implementations are possible that could be argued to have equal rights to the generic name. Still feels wrong.
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