Apple Inc.

Trademark Trial and Appeal Board

Sep 23, 2011

No. 77219819 (T.T.A.B. Sep. 23, 2011)

Hearing: Mailed:
April 20, 2011 September 23, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Apple Inc.
________

Serial No. 77219819
_______

Glen Gunderson, Erik Bertin and Jacob Bishop of Dechert
LLP, and Thomas R. La Perle, Esq. for Apple Inc.1

April K. Roach, Trademark Examining Attorney, Law Office
115 (John T. Linconski, Managing Attorney).
_______

Before Zervas, Taylor and Lykos, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Apple Inc. is the owner of an application (application
Serial No. 77219819, filed pursuant to Trademark Act
§§ 1(b) and 44(d), 15 U.S.C. §§ 1051(b) and 1126(d), for
registration of the term MULTI-TOUCH (in standard character
form) for International Class 9 goods ultimately identified
as:

1 Mr. Gunderson argued for applicant at the oral hearing. Except
for the reply brief, Mr. La Perle signed all of the papers filed
with the Office.
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77219819
2
Handheld mobile digital electronic devices with
electronic mail, digital data transmission,
audio player, video player, handheld computer,
personal digital assistant, electronic
organizer, electronic notepad, telephone,
computer gaming, and camera functions.

Applicant’s identification of goods is directed to
applicant’s iPhone product.
The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that applicant’s proposed mark is
merely descriptive of applicant's goods. Applicant then
(i) filed an amendment to allege use asserting first use on
January 9, 2007 and first use in commerce on June 29, 2007;
(ii) amended its application to seek registration under the
provisions of Trademark Act § 2(f), 15 U.S.C. § 1052(f);
and (iii) submitted evidence in support of its Section 2(f)
claim of acquired distinctiveness. The examining attorney
was not persuaded by applicant’s showing of acquired
distinctiveness and issued a final Office action
maintaining the Section 2(e)(1) mere descriptiveness
refusal and her finding that applicant's Section 2(f)
showing is insufficient.
Applicant has appealed the examining attorney’s final
refusal to the Board. Both applicant and the examining
Ser. No. 77219819
3
attorney have filed briefs2 and the Board conducted a
hearing on April 20, 2011. We affirm the refusal to
register.
The Federal Circuit, our primary reviewing court, has
stated that “the greater the degree of descriptiveness the
term has, the heavier the burden to prove it has attained
secondary meaning.” In Re Bongrain Int'l (Am.) Corp., 894
F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990). The
examining attorney and applicant disagree on the degree of
descriptiveness of the applied-for term. Thus, we begin
our analysis with a determination of the degree of
descriptiveness of the term in relation to the goods
identified in the application.3
The examining attorney maintains that “multi-touch” is
“highly descriptive” and identifies a type of touchscreen
interface which “allows a user to manipulate and control
the functions of an electronic device by using more than

2 Applicant submitted with its brief a copy of most, if not all,
of the evidence it submitted during the prosecution of its
application. The Board prefers not to have duplicates of
material already submitted; it merely adds to the bulk of the
record and wastes the time of Board staff in handling or scanning
the papers and the time of the judges in reviewing the additional
papers.
3 Applicant did not contest the Section 2(e)(1) determination in
its brief, thus, applicant has waived any argument that the mark
is not merely descriptive. The only issue presented in this
appeal is whether the evidence of record is sufficient to support
applicant’s claim of acquired distinctiveness under Section 2(f).
Ser. No. 77219819
4
one finger simultaneously.” Brief at unnumbered p. 2.
Applicant’s specimen of use explains:
Multi-Touch control.

With its large Multi-Touch display and
innovative software, iPhone lets you control
everything using only your fingers. Type using
the predictive keyboard, glide through albums
with Cover Flow, scroll through photos with a
flick, or zoom in and out on a section of a web
page – all courtesy of Multi-Touch.

How it works.

The Multi-Touch display layers a protective
shield over a capacitive panel that senses your
touch using electrical fields. It then transmits
that information to the LCD screen below it. And
the iPhone software enables the flick, tap and
pinch.

The examining attorney relies on, inter alia, (a) a
definition of “multi-touch” taken from
http://mobileburn.com (submitted with the February 9, 2009
Office action) stating, “Multi-touch is a method of input
on a touchscreen that allows two or more fingers to be used
on the screen at one time”; (b) a http://online.wsj.com
article (submitted with the July 10, 2008 office action)
stating,
This interface is generally called “multitouch,”
and it involves using one or more fingers on a
screen or touchpad to perform special gestures
that manipulate lists or objects on a screen --

See TBMP § 1203.02(g)(3d ed. 2011); and In re Gibson Guitar
Corp., 61 USPQ2d 1948 (TTAB 2001).
Ser. No. 77219819
5
without moving a mouse, pressing buttons, turning
scroll wheels or striking keys;

and (c) a http://www.popularmechanics.com article
(submitted with the July 10, 2008 office action) stating,
A new technology called multitouch, which
responds to multiple inputs by multiple fingers—
even multiple users—at the same time, could
transform the way we interact with computers.
Why? Because simultaneous finger inputs allow
more complex gestures than simple pointing and
clicking, such as rotating or resizing a photo by
grabbing two corners and pulling or navigating a
map by pulling and twisting the image with your
fingers.4

In addition, the examining attorney submitted the
following evidence to support her contention that the mark
is highly descriptive:5
• “Apple Sues Nexus One Maker HTC,” from
http://www.nytimes.com (accessed March 26, 2010):

4 Applicant makes the point at p. 2 in its reply brief that many
of the documents forming the examining attorney’s evidence were
written in early 2008 and do not reflect the purchaser’s current
perception of the MULTI-TOUCH mark in light of the success of the
goods since the articles were written. There is ample evidence
in the record post-2008. The evidence from 2008 – which was not
too long ago - is probative, as is evidence with a later date.
Applicant’s argument is also not well taken because applicant has
not established much, if any, awareness of MULTI-TOUCH as a mark
among potential purchasers (see discussion below), even as of
2010, when applicant filed its briefs.
5 Applicant has challenged the probative value of press releases
because the average consumer would never encounter them, several
articles because they merely report product rumors and previews
and blogs because the examining attorney has not proven they are
widely read by consumers. These challenges are not well taken;
purchasers of applicant’s goods are the general public and the
evidence demonstrates use of the term by the general public or
directed to the general public, and may be accessed by the
general public through the internet.
Ser. No. 77219819
6
Since last fall, Google has been gradually
adding multitouch capabilities to phones running
Android through software updates.

• “Wee Mousie, Fear Not a Touch PC,” from
http://www.nytimes.com (accessed March 26, 2010):

The iPhone brought multitouch to the real
world. You want to push a button? So push it.
You want to turn a page? Flick the screen like a
real page. Move down a map by dragging with your
finger, as you would a real map. Spread two
fingers on the glass to zoom into a page or a
photo, as if it’s printed on a sheet of rubber.
Twist two fingers against the glass to rotate a
photo. It’s direct, it’s logical, it’s
addictive.
But why should multitouch be confined to
your phone? We should have multitouch screens on
our computers, right?
***
Multitouch regular PCs, however, are a long
way away from being usable or pleasant. Until
the consistency and design problems go away,
multitouch will only complement, not replace, the
mouse.

• “Multitouch Screens Could Enliven New Devices,”
from the online New York Times, available at
http://bits.blogs.nytimes.com (accessed March 26,
2010):

Multitouch screens have been a little slower
to enter the electronics marketplace than
consumers might have hoped. Since Jeff Han, a
research scientist at New York University’s
Courant Institute of Mathematical Sciences, first
presented his multitouch wall at the TED
Conference in 2006, we’ve seen other multitouch
technologies trickle into the electronic
marketplace. The cellphone has used the
technology most, starting with the iPhone, and
then moving into other smartphones using Google’s
Android platform and Hewlett-Packard TouchSmart
countertop computer. But with the exception of a
few outliers and device manufacturer research
Ser. No. 77219819
7
demos, we haven’t really seen multitouch used in
other consumer electronics yet.
***
As you can see from the images below, there
are lots of potential applications and devices
that could use inexpensive multitouch technology.

• “A Tablet PC That Lets The User Decide Whether to
Type or Touch,” from http://www.nytimes.com
(accessed March 26, 2010):

The TX2Z from Hewlett-Packard is the first
multitouch convertible tablet PC, which means you
can turn the screen to hide the keyboard and use
only your fingers on the laptop’s 12-inch
display.

• “Fujitsu Announces 9 New Notebooks,” from PC
Magazine, available at http://www.lexis.com
(accessed March 26, 2010):

Fujitsu has announced several new additions
to the LifeBook Series. The models run the gamut
from mini-notebooks to multi-touch tablets.
Next up is the LifeBook UH900 Multi-Touch
Mini-Notebook, that is by far the lightest in the
series, being a mere 1.1 lbs with a 5.6-inch
screen. Small enough to fit in a pocket, this
handheld device delivers full PC functionality,
while giving it the same portability as a smart
phone.

• “Hands On: Dell Mini 3 and Mini 5,” from PC
Magazine, available at http://www.lexis.com
(accessed March 26, 2010):

The Mini 5 is even more intriguing. It's a
5-inch, touchscreen Android tablet, with a wide
screen, a slim body, and both HSDPA and WiFi
connectivity. The Mini 5 has a 5-megapixel
camera with LED flash on the back, and a smaller
camera on the front. It supports multitouch and
works with Android Market applications. While
AT&T didn't announce support for the Mini 5, Dell
said it would sell it both through carriers and
directly at retail stores.

Ser. No. 77219819
8
• “The Best of CES 2009,” from PC Magazine,
available at http://www.lexis.com:

PALM PRE Deemed the hottest product at CES
by Editor-in-Chief Lance Ulanoff, the Pre boasts
a new people-centric OS that consolidates contact
information from various sources and makes it
easy to connect with people in any number of
ways. Add to that a large multitouch screen, a
powerful processor, an accelerometer, a hidden
QWERTY keyboard, GPS, 802.11g, and a 3.2-
megapixel camera, and you've got the most
innovative smartphone since the iPhone.

• “HTC Nexus One by Google,” from cnet reviews,
available at http://reviews.cnet.com:

Editors' note: In the days following this
review, T-Mobile has acknowledged user complaints
over 3G connectivity issues. We continue to test
our phone and will update the review as needed.
On February 2, 2010, Google issued an update to
the Nexus One that added multitouch capability.
We have changed this review the new feature.

• “Motorola Droid,” from cnet reviews, available at
http://reviews.cnet.com (accessed March 26,
2010):

The capacitive display's touch interface is
quick and responsive and we love the added
multitouch capability.

• “LifeBook® T900 Tablet PC,” available at
http://store.shopfujitsu.com (accessed March 26,
2010):

The unmatched 13.3-inch display with 160
degree vertical and horizontal viewing angles and
optional multi-touch screen provides the optimal
combination to efficiently interact with on-
screen applications.

This evidence suggests that “multi-touch” identifies the
technology used in applicant’s device and in similar
Ser. No. 77219819
9
devices of other manufacturers for controlling various
features of the devices.6
Other evidence in the record indicates that multi-
touch identifies how the interactive surface of the kind
used on applicant’s goods operates.7 See page from “Next
Window’s Multi-Touch Overview,” submitted with February 8,
2009 Office action, stating:
What is Multi-Touch?
Multi-touch simply refers to a touch-sensitive
device that can independently detect and
optionally resolve the position of two or more
touches on screen at the same time. In contrast,
a traditional touch screen senses the position of
a single touch and hence is not a multi-touch
device.

● A single-touch touch screen allows users to
interact with software by touching the screen
instead of using a mouse, for example. …

● A multi-touch touchscreen, not only provides
the intuitive human-computer interface as above,
but also surpasses the capability of traditional
pointing devices. Multi-touch provides a much
richer set of gestures. For example, you can use

6 Applicant states at p. 2 of its January 12, 2009 response that
“touchscreen” and “capacitive” are the generic terms for
applicant’s input technology. At Exhibit C to the same response
are internet printouts from freshpatents.com and reuters.com
referring to devices using “two finger inputs” on touch screens.
Despite applicant’s contention and evidence, the balance of the
evidence, including the dictionary definition of “multi-touch”
which applicant has not challenged, persuades us that that
“multi-touch” is a generally accepted term that identifies this
input technology.
7 The definition of “multi” submitted with the February 8, 2009
Office action from the online edition of The American Heritage
Dictionary of the English Language (4th ed. 2000) located at
bartleby.com is “1. Many; much; multiple; multicolored. 2a.
More than one … b. More than two ….”
Ser. No. 77219819
10
your finger and thumb in a stretching, squeezing
or rotating action to manipulate an object on
screen.

● Furthermore, multi-touch allows you to perform
more than one action at the same time. …

Also, from http://elotouch.com (submitted with February 8,
2009 Office action), is the following:
First of all, what is “multi-touch?” At its
simplest, multi-touch is the ability to recognize
multiple touch points simultaneously. Some touch
technologies can realistically handle only two
simultaneous points; others are unlimited.

And, the article submitted with the February 8, 2009 Office
action entitled “[N]okia recovering, readying multi-touch
phone?” at http://electronista.com states, “Alleged market
sources tell DigiTimes today that Nokia is planning a
resurgence that may hinge on multi-touch devices. … While
unconfirmed, the news would make Nokia only the second
company outside of Apple to have plans for multi-finger
touch controls.”
Applicant has submitted evidence to show that three
other manufacturers of electronic devices use particular
trademarks to identify the touchscreen features of their
devices. See Ex. J to applicant’s brief. This evidence
has limited probative value; it only demonstrates that the
three manufacturers have adopted their own trademarks for
the touchscreen feature of their products.
Ser. No. 77219819
11
Thus, from the foregoing, we find that “multi-touch”
not only identifies the technology, but also describes how
a user of the goods operates the device. Based on the
evidence discussed above, as well as other evidence in the
record, we agree with the examining attorney that MULTI-
TOUCH indeed is highly descriptive of a feature of the
identified goods. We now consider whether applicant has
submitted sufficient evidence to establish acquired
distinctiveness of this highly descriptive term.
It is applicant's burden to establish a prima facie
case of acquired distinctiveness. See Yamaha Int’l Corp.
v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001
(Fed. Cir. 1988). In determining whether secondary meaning
has been acquired, the Board may examine copying,
advertising expenditures, sales success, length and
exclusivity of use, unsolicited media coverage, and
consumer studies (linking the name to a source).8 Cicena

8 See also TMEP § 1212.06 (7th ed.), stating:
Under Trademark Rule 2.41(a), 37 C.F.R. §2.41(a), an
applicant may submit affidavits, declarations under 37
C.F.R. §2.20, depositions, or other appropriate
evidence showing the duration, extent, and nature of
the applicant’s use of a mark in commerce that may
lawfully be regulated by Congress, advertising
expenditures in connection with such use, letters, or
statements from the trade and/or public, or other
appropriate evidence tending to show that the mark
distinguishes the goods or services.
Ser. No. 77219819
12
Ltd. v. Columbia Telecomms Group, 900 F.2d 1546, 14 USPQ2d
1401 (Fed. Cir. 1990). “On this list, no single factor is
determinative.” In re Steelbuilding.com, 75 USPQ2d 1420,
1424 (Fed. Cir. 2005). The amount and character of
evidence required to establish acquired distinctiveness
depends on the facts of each case and particularly on the
nature of the mark sought to be registered. See Roux
Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ
34 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ
381 (CCPA 1960); and In re Gammon Reel, Inc., 227 USPQ 729
(TTAB 1985). Typically, more evidence is required where a
mark is so highly descriptive that purchasers seeing the
matter in relation to the named goods or services would be
unlikely to believe that it indicates source in any one
entity. See, e.g., Bongrain, 13 USPQ2d at 1727 n. 4,
citing Yamaha Int'l, 6 USPQ2d at 1008 (“the greater the
degree of descriptiveness the term has, the heavier the
burden to prove it has attained secondary meaning”).
Applicant has used MULTI-TOUCH for a limited time
period – only two and a half years. Applicant’s evidence
for the most part consists of Internet and Nexis articles,
as well as applicant’s webpages, describing the iPhone
Ser. No. 77219819
13
product.9 This evidence establishes that the iPhone is a
very successful product that has generated much interest
among potential purchasers. However, as the examining
attorney correctly pointed out, the applied-for mark is not
IPHONE, it is MULTI-TOUCH. Thus, applicant’s evidence
pertaining to the success, sales volumes and, to a limited
extent, advertising expenditures of the iPhone, is not
helpful in establishing that the purchasing public
associates the term MULTI-TOUCH with applicant. As has
been stated in the past, a successful product and even high
advertising expenses for the product do not necessarily
translate into a mark acquiring descriptiveness. See In re
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) (claim based on annual sales under the mark of
approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars,

9 Some of the articles submitted by applicant use “multi-touch”
in a trademark manner, i.e., with initial capital letters and, in
some instances, the “TM” designation next to the term. On
balance, these uses, although not insignificant in number, do not
establish that the public has come to view MULTI-TOUCH as a
source indicator. In fact, some of the articles support the
examining attorney’s assertion of non-trademark use. See,
“iPhone taps into a new era” from Newark Morning Ledger Co.
(January 10, 2007) accessed from www.lexis.com stating, “All
functions are activated by tapping the screen with your finger, a
patented technology called ‘multi-touch.’”; and “It’s not the
iPhone, but G1 at least some competition” from The San Francisco
Chronicle (October 17, 2008) accessed from www.lexis.com stating,
“It isn’t capable of the multitouch that distinguishes the
iPhone, but it’s sensitive.”

Ser. No. 77219819
14
not sufficient to establish acquired distinctiveness in
view of highly descriptive nature of mark); Braun Inc. v.
Dynamics Corp., 975 F.2d 815, 827, 24 USPQ2d 1121, 1133
(Fed. Cir. 1992) (“[L]arge consumer demand for Braun's
blender does not permit a finding the public necessarily
associated the blender design with Braun.”); Bongrain, 13
USPQ2d at 1729 (growth in sales may be indicative of
popularity of product itself rather than recognition as
denoting origin).
The record does not reveal that MULTI-TOUCH has been
used on the goods or even on packaging for the goods. For
this reason too we are not sympathetic to applicant’s
arguments that the success of the product sold under the
IPHONE trademark translates to acquired distinctiveness of
the term MULTI-TOUCH. Rather, the record reflects use by
applicant of MULTI-TOUCH on webpages describing the
operation of the goods. See, e.g., the specimen of use,
which is a printout of one of applicant’s webpages.
Because such use is on a website, applicant should have
introduced evidence showing how long the term was used on
the website and what levels of traffic it had on the
website. All we know about exposure to the website is what
appears in an article from http://nielsenbuzzmetrics.com
(Exhibit C to applicant’s August 19, 2009 filing) entitled
Ser. No. 77219819
15
“Unprecedented Pre-Launch Buzz Sets High Expectations for
iPhone, Sales and Customers, Nielsen BuzzMetrics Reports,”
dated June 25, 2007, which states in relevant part that
“the iPhone section of the site had 1.79+ million unique
visitors in January 2007,” and refers to visitors through
May 2007, specifically noting that there were “more than
701,000 unique visitors a month prior to release.” That
article, even in combination with other evidence, only
establishes exposure to applicant’s webpages during a
limited period in 2007; there is no indication in the
record of the number of visitors to the website outside of
the times mentioned in the article. Also, the webpages
referred to in the Nielsen report from January 2007 are not
of record so we cannot determine if MULTI-TOUCH even was
featured on the website at that time.
Additionally, applicant makes several statements in
its brief which are not supported by evidence. Clearly, an
applicant may not make assertions of fact in its brief that
are unsupported by evidence properly put into the record.
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27
USPQ2d 1846, 1849 (Fed. Cir. 1993) (“mere attorney
arguments unsubstantiated by record evidence are suspect at
best”). For example, at pp. 8 – 9 of its brief, applicant
states that “[t]he continued success and sales growth of
Ser. No. 77219819
16
the iPhone device means that more and more consumers have
encountered the MULTI-TOUCH mark in advertising, user
manuals, and in-store product demonstrations, which
reinforces the fact that they view MULTI-TOUCH mark as an
indicator of source for Applicant’s products.” The record
includes no user manuals, little advertising showing MULTI-
TOUCH and no evidence regarding in-store product
demonstrations in which the MULTI-TOUCH term is used.
Additionally, applicant states at p. 10 of its brief that
its “national television commercials have demonstrated the
touchscreen interface of MULTI-TOUCH devices.” Again,
there is no evidence in the record regarding national
television commercials, including the frequency of such
commercials and even if MULTI-TOUCH was mentioned or
promoted as a mark in such commercials, which would be
important to applicant’s claim of acquired distinctiveness.
Last, applicant submitted copies of several
registrations from other countries for MULTI-TOUCH. These
registrations are irrelevant to our analysis because they
may have issued under different standards and rules than
those which we are bound to follow.
We also point out that applicant did not submit other
types of evidence which the Board typically considers in
determining acquired distinctiveness. Specifically, there
Ser. No. 77219819
17
are no affidavits, declarations, depositions, or other
appropriate evidence showing the extent and nature of the
applicant’s use of MULTI-TOUCH, advertising expenditures in
connection with the use of MULTI-TOUCH,10 letters, or
statements from the trade and/or public in the record. We
know nothing about the quantity, frequency and scope of any
advertising of MULTI-TOUCH. Simply put, the record
contains little direct or circumstantial evidence that
purchasers of applicant’s goods view MULTI-TOUCH as a
distinctive source indicator for applicant’s goods.
Clearly, MULTI-TOUCH is not the primary mark for
applicant’s goods, and it is not apparent from the material
submitted by applicant to what extent MULTI-TOUCH has made
an impression on purchasers as a source indicator for
applicant’s goods.
Thus, in view of the foregoing, and given the highly
descriptive nature of the designation MULTI-TOUCH, we would
need substantially more evidence (especially in the form of
direct evidence from customers) than what applicant has
submitted in order to find that the designation has become

10 Applicant’s counsel states at p. 7 of its brief, without citing
to any specific evidence, that applicant spent $388 million on
advertising in its fiscal year 2006, $467 million in 2007 and
$486 million in 2008. Even if the statement was supported by the
record, it is not helpful to applicant because it does not
indicate how much of this advertising, if any at all, was for
MULTI-TOUCH.
Ser. No. 77219819
18
distinctive of applicant's services. In re Lens.com Inc.,
83 USPQ2d 1444 (TTAB 2007). Again, simply because the
applied-for term has been used in association with a highly
successful product does not mean the term has acquired
distinctiveness.
Decision: The examining attorney’s finding that the
Section 2(f) showing is insufficient is affirmed.