Apple Inc.

Trademark Trial and Appeal Board

Feb 29, 2012

No. 77860835 (T.T.A.B. Feb. 29, 2012)

Mailed: February 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Apple Inc.
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Serial No. 77860835
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Marie C. Seibel of Kilpatrick Townsend & Stockton LLP for
applicant.

Ty Murray, Trademark Examining Attorney, Law Office 114 (Margaret
Le, Managing Attorney).
____________

Before Bucher, Taylor, and Shaw,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

Apple Inc. has filed an application to register the mark
ITUNES LP, in standard characters, on the Principal Register for
the following goods and services:
Computer software for use in authoring, downloading,
transmitting, receiving, editing, extracting, encoding,
decoding, playing, storing and organizing text, data, images,
audio files, video files and electronic games; computer
software for accessing, browsing and searching online
databases; computer software to enable users to program and
distribute audio, video, text and other multimedia content via
communications networks; downloadable electronic publications
in the nature of books or magazines in the field of
entertainment, in International Class 9;

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77860835

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Retail store services in the field of entertainment, namely,
audio, audiovisual, music, multimedia and video content and
related merchandise, provided via the internet and other
computer and electronic communication networks, in
International Class 35;

Provision of telecommunications connections to computer
databases and the Internet; transmission of data and of
information via electronic communications networks;
broadcasting and transmission of radio and television
programs; audio broadcasting of spoken word, music, concerts,
and radio programs; broadcasting pre-recorded audio and video
content via computer and other communications networks; web
casting services; electronic transmission of streamed and
downloadable audio and video content via computer and other
communications networks; providing on-line chat rooms,
bulletin boards and community forums for the transmission of
messages among computer users in the field of entertainment;
provision of connectivity services and access to electronic
communications networks, for transmission or reception of
audio, video, movies and/or multimedia content, in
International Class 38;

Entertainment services, namely, providing prerecorded audio
and audiovisual content, information and commentary in the
field of music on-line via a global computer network;
providing a web site and database featuring music, videos,
television programs, motion pictures, current event and
entertainment news, sports, games, cultural events, and
entertainment-related programs; providing online publications
and non-downloadable electronic publications in the nature of
books and magazines in the field of music, in International
Class 41; and

Design and development of computer hardware and software;
providing on-line facilities, via a global computer network,
to enable users to program audio, video, movies, text and
other multimedia content; providing a website featuring non-
downloadable software tools for editing of digital content and
entertainment content; providing search engines for obtaining
data via communications networks; internet services, namely,
creating indexes of information, sites and other resources
available on global computer networks for others; searching,
browsing and retrieving information, sites, and other
resources available on global computer networks and other
communication networks for others, in International Class 42.1

1 Application Serial No. 77860835, filed October 29, 2009, pursuant to
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide
intent to use the mark in commerce.
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The Examining Attorney refused registration pursuant to
Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on
applicant’s failure to comply with the requirement to disclaim
the word LP, on the ground that it is merely descriptive of
applicant’s goods and services within the meaning of Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the
refusal was made final, applicant appealed and filed a request
for reconsideration which was denied by the Examining Attorney.
Applicant and the Examining Attorney both filed briefs.
We affirm the refusal of registration in the absence of a
disclaimer in the application.
An Examining Attorney may require an applicant to disclaim
an unregistrable component of a mark otherwise registrable.
Trademark Act Section 6(a). Merely descriptive terms are
unregistrable, under Trademark Act Section 2(e)(1) and,
therefore, are subject to disclaimer if the mark is otherwise
registrable. Failure to comply with a disclaimer requirement is
grounds for refusal of registration. See In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re
Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto
Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton
Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it forthwith
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conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods or
services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
applicant’s goods or services in order to be considered merely
descriptive; it is enough that the term describes one significant
attribute, function or property of the goods or services. See In
re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
Several definitions have been introduced into the record by
both parties to show that LP is defined, inter alia, as a
“microgroove phonograph record designed to be played at 33⅓
revolutions per minute.” www.merriam–webster.com. Both the
Examining Attorney and applicant agree that the term LP is an
abbreviation for “long playing” vinyl records, the once-dominant
analog record format which has been almost entirely replaced by
audio compact discs and digital music files, and that applicant
is not in the business of producing vinyl records. What is
disputed is whether the term LP has any additional significance
to consumers, especially when it is used in connection with
applicant’s digital music related goods and services.
The Examining Attorney argues that a disclaimer is necessary
because the term LP is descriptive when used in connection with
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applicant’s goods and services which will provide the format of
an LP record on a digital platform. That is, LPs were, and still
are, commonly packaged with original artwork, photography, and
lyrics and applicant’s goods and services seek to duplicate this
bundling of additional material in applicant’s digital music
products. Accordingly, consumers would immediately understand
that applicant’s ITUNES LP digital content contains the same
additional elements traditionally sold with LP records, i.e.,
lyrics, photos, and artwork.
Applicant argues that its use of LP in ITUNES LP is, at the
very least, suggestive of the experience associated with a vinyl
LP record which merely “calls to mind the heyday of LP records,
during which liner notes, lyrics and cover art accompanied the
music on an LP.” Br. at 4. Applicant argues that LP describes a
very specific analog medium for audio recordings and since
applicant provides only digital audio and video content, “it is
simply impossible for the unambiguous term ‘LP’ to be merely
descriptive” of the digital content.” Br. at 3.
In support of the requirement for a disclaimer, the
Examining Attorney made of record excerpts from dictionaries,
third-party websites, and applicant’s iTunes website to
demonstrate public understanding of the meaning of the term LP.
The following examples are illustrative:
• http://encyclopedia.thefreedictionary.com/Long+Playing –
(An article discussing the evolution of the gramophone
record album including a discussion of the features of
the “long playing” or “LP” record format)
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“Starting in the 1930s, record companies began issuing
collections of 78 rpm records by one performer or of one
type of music in specially assembled albums. By the
1940’s these albums featured their own colorful paper
covers and were in both 10-inch and 12-inch sizes, and
could include either a collection of related popular
songs, either by performer or style, or extended length
classical music, including complete symphonies. The
result is that when the LP came along and included
multiple songs, the name “album” came along too.”

“LPs are universally packaged in cardboard covers with a
paper (usually additional artwork, photography, and/or
lyrics) or plastic liner . . . protecting the delicate
surface of the record. . . . With the advent of long-
playing records, the album cover became more than just
packaging and protection, [sic] and album cover art
became an important part of the music marketing and
consuming experience.” (Emphasis added) (Office Action
of January 27, 2010);

• http://encyclopedia.thefreedictionary.com/lp - (Providing
a thesaurus listing showing that “LP” is a synonym for
“album” and “record”)

“LP noun album, record his first LP since 1986.”
(Emphasis added) (Office Action of March 7, 2011);

• http://lpcoverlover.com – (An excerpt from a web page
devoted to LP cover artwork)

“LP COVER LOVER The World’s Greatest LP Album Covers
. . . Welcome to the weird and wonderful world of record
covers from the golden age of LP’s.” (Emphasis added)
(Office Action of March 7, 2011);

• www.brookstone.com – (An excerpt from a retail store
website featuring frames for displaying LP album covers
as art)

“LP Album Cover Frames . . . Showcase your collection of
classics with these record album frames. LP covers
captured the joy, imagination, and angst of entire
generations.” (Emphasis added) (Office Action of March
7, 2011);

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• http://www.apple.com/itunes/whats-new/#itunes-lp – (An
excerpt from applicant’s website)

“What’s new in iTunes? . . . The best thing to happen to
fandom. The visual experience of the record album
returns with iTunes LP. Download select albums and
experience a beautifully designed, interactive world
right in your iTunes library on a Mac or PC.” (Emphasis
added) (Office Action of January 27, 2010);

• http://www.apple.com/ituneslp-and-extras - (An excerpt
from applicant’s website)

“iTunes LP lets listeners hear an album and view lyrics,
liner notes, band photos, performance videos, and more.”
(Emphasis added) (Office Action of January 27, 2010);

• http://gigaom.com – (A review of iTunes LP)

“When it was first unveiled, Apple’s new iTunes LP format
. . . promised to give consumers a new reason to buy
albums instead of individual songs. Offering expanded
cover art, lyrics, videos, animation and other digital
goodies, iTunes LP was intended to evoke the feeling of
spinning an LP record and holding the jacket in your
hands. . . . [C]onsumers were promised a digital
experience that mimicked a physical one.” (Emphasis
added) (Office Action of January 27, 2010);

• www.engadget.com – (A review of iTunes LP)

“Apple iTunes LP format gets dissected, explained . . .
Did you hear the news? Apple resurrected the LP! . . .
OK, so maybe we are a little jaded -- our busy 21st
century lives generally don't afford us the time to stare
glassy-eyed at our computer screen (any more than we have
the time to stare glassy-eyed at 12-inch album covers
while sitting on the floor of our incense-soaked Haight-
Ashbury crash pads).” (Emphasis added) (Office Action of
January 27, 2010); and

• http://news.cnet.com – (A review of iTunes LP)

“New iTunes LP format is live . . . Apple has revealed
its new LP format for iTunes. It's called iTunes
LP. . . . The new format includes more album art, lyrics,
writing about the record, video (such as interviews with
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band members), and perhaps additional songs.” (Emphasis
added) (Office Action of January 27, 2010).

We agree with the Examining Attorney that this evidence
shows that the term LP is understood to mean more than just the
physical format of a “microgroove phonograph record designed to
be played at 33⅓ revolutions per minute.” Rather, the evidence
shows that the term LP has a broader meaning to consumers and is
understood to encompass the additional features typically
associated with a long playing record album such as cover art,
song lyrics, liner notes, and band photographs. Moreover, the
thesaurus listing shows that LP is synonymous with the term
“album” and thus it conveys the same musical and cultural
associations. The evidence regarding the history of the LP shows
that the additional materials such as cover art, song lyrics,
liner notes, and band photographs formed an “important part of
the [LP] music marketing and consuming experience” surrounding
the sale and enjoyment of record albums by music fans. Indeed,
at least for older listeners who grew up listening to LP records,
the Brookstone website may not be exaggerating when it proclaims
that “LP covers captured the joy, imagination, and angst of
entire generations.”
The evidence also shows that applicant’s iTunes LP service
allows consumers to purchase, not only entire albums, but also
additional content such as artwork, lyrics, photos, and even
videos. That is, applicant is providing to its consumers, albeit
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in digital form, the same visual materials that made the LP
record album a “consuming experience.” Applicant’s own website
confirms this intent to duplicate or re-create the LP album’s
additional materials when it proclaims: “[t]he visual experience
of the record album returns with iTunes LP.”
http://www.apple.com/itunes/whats-new/#itunes-lp. Even consumers
of applicant’s iTunes LP service recognize that the term LP
refers to the additional materials traditionally associated with
the LP record album. Third party reviews of applicant’s iTunes
LP service tout the connection: “iTunes LP was intended to evoke
the feeling of spinning an LP record and holding the jacket in
your hands”; and “Did you hear the news? Apple resurrected the
LP!”
Given the demonstrated understanding of the meaning of the
term LP by applicant’s own consumers as more than just an
outdated analog format, we agree with the Examining Attorney that
when ITUNES LP is used in connection with applicant’s identified
goods and services, LP will convey an immediate idea of a feature
of the goods or services, namely that applicant’s digital music
files will include precisely the kinds of additional materials
commonly associated with LP record albums. In re Abcor, 200 USPQ
at 217. We do not find, as applicant urges, that the evidence
shows that LP records are so obsolete and long-forgotten that
consumers would not recognize the term LP and its associations.
On the contrary, applicant’s musically-minded consumers seem well
Serial No. 77860835

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aware of the significance of term LP and are quick to transfer
these associations to applicant’s digital content, just as the
term album has migrated from 78 rpm records to LPs, to compact
discs, and now to digital music.
Applicant also argues against the disclaimer requirement by
citing to the registration of other music-related marks
incorporating the term LP. We find the argument unpersuasive.
First, only one of these marks is used in connection with musical
sounds recordings and it is highly stylized. The other listed
marks are for goods and services that do not encompass musical
sound recordings likely to include visual materials such as those
found in LP record albums. Second, it is well-settled that
third-party registrations are not conclusive on the question of
descriptiveness. Each case must stand on its own merits and a
mark that is merely descriptive should not be registered on the
Principal Register simply because other such marks appear on the
register. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001); In re theDot Communications Network LLC, 101
USPQ2d 1062 (TTAB 2011).
Finally, we are not persuaded by the argument that the mark
is registrable because applicant is the only one using the term
LP in connection with digital audio goods and services. It is
not necessary that a term be in common usage in the particular
field in order for it to be merely descriptive. See In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020
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(TTAB 1983). Even if applicant were the only user of the term LP
in connection with digital audio goods and services, it would not
be dispositive where, as here, the term unquestionably conveys a
merely descriptive connotation.
Decision: The refusal to register based on the requirement
for a disclaimer of LP is affirmed. However, if applicant
submits the required disclaimer of LP to the Board within thirty
days, this decision will be set aside as to the affirmance of the
disclaimer requirement.2 See Trademark Rule 2.142(g), 37 C.F.R.
§ 2.142.

2 The standardized printing format for the required disclaimer text is
as follows: “No claim is made to the exclusive right to use LP apart
from the mark as shown.” TMEP § 1213.08 (a) (8th ed. 2011).