USPTO denies Apple's 'Touch ID' trademark, cites possible confusion with timecard system
Apple will not be granted a trademark for the Touch ID authentication system introduced alongside the iPhone 5s, according to a U.S. Patent and Trademark Office decision revealed Monday, because it could be confused with an earlier Touch ID trademark assigned to timekeeping company Kronos.
The decision -- which was made in May but only revealed publicly this week -- is based on the "likelihood of confusion" between Apple's application for "Touch ID" and Kronos's granted registration for "Kronos Touch ID." Kronos's system, first released in 2005, is a biometric timekeeping device for employees to clock in and out at their place of employment and will be familiar to anyone who has worked in a large retail chain.
According to the USPTO's rejection letter, when "a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods and/or services." This means that the office will generally hold wordmarks, such as Touch ID, to a higher standard than logotypes.
"Applicant's mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark," according to the letter. "In this case, applicant's mark merely deletes "KRONOS" from the registered mark."
Simply removing a single word is not enough to differentiate the two trademarks, the USPTO argues. Apple has six months from the date of the rejection to either accept the decision or appeal it, meaning the company must respond by Nov. 7.
While Apple could fight the decision, it seems much more likely that they will simply work out a licensing agreement with Kronos. The company came to a similar arrangement with networking giant Cisco for the rights to the iPhone and iOS trademarks.
The decision -- which was made in May but only revealed publicly this week -- is based on the "likelihood of confusion" between Apple's application for "Touch ID" and Kronos's granted registration for "Kronos Touch ID." Kronos's system, first released in 2005, is a biometric timekeeping device for employees to clock in and out at their place of employment and will be familiar to anyone who has worked in a large retail chain.
According to the USPTO's rejection letter, when "a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods and/or services." This means that the office will generally hold wordmarks, such as Touch ID, to a higher standard than logotypes.
"Applicant's mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark," according to the letter. "In this case, applicant's mark merely deletes "KRONOS" from the registered mark."
Simply removing a single word is not enough to differentiate the two trademarks, the USPTO argues. Apple has six months from the date of the rejection to either accept the decision or appeal it, meaning the company must respond by Nov. 7.
While Apple could fight the decision, it seems much more likely that they will simply work out a licensing agreement with Kronos. The company came to a similar arrangement with networking giant Cisco for the rights to the iPhone and iOS trademarks.
Comments
Snd my boyfriend works for one of the biggest retail chains and has never heard the term 'touch id' even uttered and they have been using KRONOS for years. In fact I suspect that few outside of HR have heard the term so Apple might be able to make a very valid argument against the notion of confusion
More proof that the entire patent system (and the entire government) in America is completely broken. Nobody is going to confuse some clunky timecard system hanging on the wall at their office with Apple's svelte Touch ID fingerprint unlocking system for the iPhone.
Clunky? Do you even know what Kronos produces? Among their many implementations of Touch ID are sophisticated terminals for use in the gaming industry that are used in casinos. The majority of their revenues are from software and services.
Having said that, I am surprised that the trademark office sees confusion where one use of the term is for devices that are sold for use only in business and the other device is essentially a mass-market consumer device.
While much smaller than Apple, Kronos was purchased for $1.74 billion in 2007 by its lead investors. Don't know what it's worth now as it's privately held.
I suspect this will be solved by a licensing agreement, which is fair. After all, Kronos did trademark and use the name first and Apple had to of known that. Just because Apple is Apple doesn't mean that they deserve the trademark more than Kronos does. Just because you're an Apple fanboy doesn't mean the system is broken. The system actually works fairly well for trademarks. It just doesn't work well for patents.
All Apple got is what is called an Initial Office Action. It's the Examining Attorney's first look at the file and there job is to identify trademarks that MAY be confusingly similar to the applicants.
If it is a close call the Examining Attorney should cite the other TOUCH ID trademark. I certainly would have (I once worked at the USPTO on class 009 (computer hardware/software). If they didn't - their file could be reviewed and they could get dinged for not listing it. From an Examining Attorney's perspective it's generally best to cite close call then let the owner of the trademark come back to you and argue it. Then you can remove the refusal.
In the instant case, Apple now has 6 months to respond to the Examining Attorney to try and change their mind. Only then, if Apple fails to make a good case, will the office action go 'FINAL'. That's when Apple starts to have some issues but there are appeal routes via the Trademark Trial and Appeal Board and ultimately federal court.
For example an artist named Eminem can't be sued by a candy company unless he decides to sell a chocolate bar by the same name.
here's some funny articles I've found:
http://www.theappleloop.com/Home/mandm.html
and an unrelated one from 2003 criticisizing the "Apple Music Service"
http://www.theappleloop.com/Home/musicdied.html
Clunky? Do you even know what Kronos produces? Among their many implementations of Touch ID are sophisticated terminals for use in the gaming industry that are used in casinos. The majority of their revenues are from software and services.
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Having said that, I am surprised that the trademark office sees confusion where one use of the term is for devices that are sold for use only in business and the other device is essentially a mass-market consumer device.
[...]
I suspect this will be solved by a licensing agreement, which is fair. After all, Kronos did trademark and use the name first and Apple had to of known that. Just because Apple is Apple doesn't mean that they deserve the trademark more than Kronos does. Just because you're an Apple fanboy doesn't mean the system is broken. The system actually works fairly well for trademarks. It just doesn't work well for patents.
This ^
More than likely, Apple knew about it but hoped that "Touch ID" was different enough from "Kronos Touch ID" for a clean register. That doesn't mean that Apple lost the pre-trademark or even the chance to trademark it at all. Most likely, as zoe said, it will lead to a licensing agreement similar, and probably much easier, to what happened with the "iOS" trademark.
So, there is already a product called "Touch ID". It's a product that scans fingerprints to identify users to a computer system.
Apple ignored that trademark, and not only called their product "Touch ID", but attempted to trademark it, when it does exactly the same thing.
Um...
Why do you think Apple should be able to do that?
The way trademarks normally work is that when one company has one (Kronos) and another company decides that they're going to call their product that does exactly the same thing, and in fact even can compete in the same market (Apple) then the company which has the trademark can sue the company that decided to just use the mark for a competing product, and win, not only collecting damages but also getting an injunction against the company deciding to stomp all over the trademark preventing them from using it in the future.
This isn't a troll company. This is a company with a real product, and Apple has built a system that is entirely capable of doing exactly the same thing.
Yeah, I'd say there's plenty of room for marketplace confusion. I'm confused as to why Apple thought this was going to work.
Possible confusion? Yeah right. Apple consumers, and everybody else, are going to confuse Touch ID with the proprietary timekeeping system of some company that they've never even heard of! Washington seems to breed stupidity!
It was probably offensive to someone who thinks "Touch ID" may offend someone else.
More proof that the entire patent system (and the entire government) in America is completely broken. Nobody is going to confuse some clunky timecard system hanging on the wall at their office with Apple's svelte Touch ID fingerprint unlocking system for the iPhone.
You don't get the idea of a trademark do you?
what? I thought a name could be used as long as its unique in its industry.
For example an artist named Eminem can't be sued by a candy company unless he decides to sell a chocolate bar by the same name.
here's some funny articles I've found:
http://www.theappleloop.com/Home/mandm.html
and an unrelated one from 2003 criticisizing the "Apple Music Service"
http://www.theappleloop.com/Home/musicdied.html
I think biometric use for logging into a payroll device and biometric for logging into a consumer device is kinda close!
But Kronos Touch ID is a biometric device, that scans fingerprints to identify people. Exactly the same function of Apple Touch ID. I am sure it could be solved with a licensing agreement (likely), or a rename (unlikely).
I can definitely see a new employee unaware that the clock in/out machine is called Touch ID trying to use the Touch ID on their iPhone to clock in/out.
Do California apple farmers already own those trademarks?