Apple Inc.v.Relix LLC Apple Corps Ltd. v. Relix LLC

Trademark Trial and Appeal Board

Sep 12, 2012

No. 91175475 (T.T.A.B. Sep. 12, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Hearing: March 22, 2012 Mailed: September 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Apple Inc.

v.

Relix LLC

Opposition No. 91176659
to application Serial No. 78822935

and

Apple Corps Ltd.

v.

Relix LLC
_____

Opposition No. 91175475
also to application Serial No. 788229351
_____

Joseph Petersen, Robert N. Potter and Allison Scott Roach of
Kilpatrick Townsend & Stockton LLP for Apple Inc. and Apple
Corps Ltd.

Michael H. Sproule of Akabas & Cohen for Relix LLC.
______

Before Cataldo, Mermelstein and Ritchie,
Administrative Trademark Judges.2

1 Opposer Apple Inc.’s motion to consolidate the above
proceedings was granted in a Board order issued on March 26,
2008.
2 Judge Wolfson sat on the panel at the oral argument but
subsequently has recused herself. Judge Ritchie has been
Opposition Nos. 91175475 and 91176659
2

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Relix LLC, filed an application to register
in standard characters on the Principal Register the mark
GREEN APPLE, based upon an assertion of its bona fide intent
to use the mark in commerce for
Streaming of audio material on the Internet;
Streaming of video material on the Internet,

in International Class 38; and
Entertainment namely, live performances by a
musical band; Entertainment services, namely,
providing a web site featuring musical
performances, musical videos, related film clips,
photographs, and other multimedia materials;
Entertainment, namely live music concerts,

in International Class 41.3
Registration has been opposed by Apple Inc. and Apple
Corps Ltd. (“opposers”). As grounds for opposition,
opposers assert in their amended notice of opposition that
opposer, Apple Inc., provides numerous goods and services
related to computers, mobile communications and media
devices, downloading and streaming digital music and
audiovisual content under its famous APPLE and apple logo
marks; and that it is the owner of, inter alia, the
following marks, previously used and registered on the
Principal Register:

substituted for Judge Wolfson. The change in composition of the
panel does not necessitate a rehearing of the oral argument.
Hunt Control Systems Inc. v. Koninklijke Philips Electronics
N.V., 98 USPQ2d 1558, 1560 (TTAB 2011). See also In re Bose, 772
F.2d 866, 227 USPQ 1, 4 (Fed. Cir. 1985).
Opposition Nos. 91175475 and 91176659
3
APPLE
(“APPLE mark”) in standard characters for
Communication filed by computer, namely,
electronic transmission of data and documents via
computer, delivery of messages by electronic
transmission,

in International Class 38;4 and

(“apple logo”) for goods including
Computer software for use in authoring,
downloading, transmitting, receiving, editing,
extracting, encoding, decoding, playing, storing
and organizing audio, video, still images and
other digital data

in International Class 9;5 and
for services including
Telecommunications services, namely, electronic
transmission of data and images via computer
networks; electronic transmission of data and
information by computer,

in International Class 38.6
Opposers further assert that opposer, Apple Corps Ltd.,
provides video and sound recordings, live performances, and
video games, relating primarily to the musical band, The

3 Application Serial No. 78822935.
4 Registration No. 2079765 issued on July 15, 1997. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
5 Registration No. 2715578 issued on May 13, 2003. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
Opposition Nos. 91175475 and 91176659
4
Beatles; and that opposer Apple Inc. is the owner by
assignment from opposer Apple Corps Ltd. of, inter alia, the
following famous marks, previously registered on the
Principal Register:
APPLE
(“APPLE Corps mark”) in standard characters for goods
including
Musical sound records; sound records featuring
music, musicians, documentaries, biographies,
interviews, performances, reviews, drama and
fiction; musical video records; downloadable
musical sound and video records; downloadable
sound and video records featuring or relating to
music, entertainment and films,

in International Class 9;7 and

(“whole apple logo”) for
Musical sound recordings; musical video
recordings; downloadable musical sound and video
records; downloadable sound or video records
featuring or relating to music, entertainment and
films,

in International Class 9.8 Opposers further assert that
opposer, Apple Corps Ltd., continues its use of the Apple
Corps marks as the exclusive licensee of opposer, Apple Inc.

6 Registration No. 2870477 issued on August 3, 2004. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
7 Registration No. 3317089 issued on October 23, 2007.
Opposition Nos. 91175475 and 91176659
5
Opposers allege in addition that applicant’s mark, when used
in connection with applicant’s services, so resemble
opposers’ previously used and registered marks for their
recited goods and services as to be likely to cause
confusion, to cause mistake, and to deceive; that in
addition, registration of applicant’s mark will cause the
distinctiveness of opposers’ famous marks to be diluted; and
that opposers will be damaged thereby. Opposers also allege
that at the time the application was filed, applicant lacked
a bona fide intent to use the mark in commerce in connection
with the services recited in International Class 38; and
that, as a result, the application is void ab initio with
regard to those services.9
Applicant’s answer consists of denials of the
allegations in the notice of opposition.10
The Record
The record in this case consists of the pleadings and
the file of the involved application. In addition, during

8 Registration No. 3221275 issued on March 27, 2007.
9 We note that in the amended notice of opposition, opposers
assert a pleading of fraud. However, the parties’ arguments and
evidence on this issue appear to be directed to opposers’
asserted claim of lack of a bona fide intent to use the mark in
commerce, and have been so construed.
10 It appears that, as a result of an inadvertence on the part of
the Board, applicant did not file an answer to the amended notice
of opposition. However, it is clear from applicant’s arguments
that it denies the additional allegations, which relate to its
asserted lack of a bona fide intent to use the mark in commerce
in connection with the Class 38 services. Accordingly, any
allegations in the amended notice of opposition not addressed by
applicant’s original answer are deemed denied.
Opposition Nos. 91175475 and 91176659
6
the assigned testimony period, opposers introduced the
testimony affidavits, with accompanying exhibits, of Thomas
La Perle, director of legal affairs for Apple Inc., and
Jeffrey Vaughan Jones, the chief executive officer of Apple
Corps Ltd.11 In addition, opposer submitted notices of
reliance.
During its assigned testimony period, applicant
submitted notices of reliance.
Opposers and applicant filed main briefs on the case,
and opposers filed a reply brief. In addition, counsel for
both parties presented arguments at an oral hearing held
before this panel on March 22, 2012.
Opposer’s Standing and Priority of Use
Because opposers have properly made their pleaded
registrations of record, we find that opposers have
established their standing to oppose registration of
applicant’s mark.12 See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Moreover, because opposers’ pleaded registrations are
of record, Section 2(d) priority is not an issue in this
case as to the marks therein and goods and services covered

11 The parties’ stipulation to introduce testimony by affidavit
was approved by the Board on June 4, 2010.
12 Opposer’s second notice of reliance.
Opposition Nos. 91175475 and 91176659
7
thereby. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Opposers’ Pleaded APPLE and APPLE Corps Marks
In this case, we will concentrate our discussion of the
issue of likelihood of confusion on those registrations of
opposers which are closest to the marks and services for
which applicant is seeking registration, namely:
opposer Apple Inc.’s Registration No. 2079765 for the mark
APPLE (standard characters)
for
Communication filed by computer, namely,
electronic transmission of data and documents via
computer, delivery of messages by electronic
transmission

in International Class 38; and
Opposition Nos. 91175475 and 91176659
8
opposer Apple Corps Ltd.’s Registration No. 3317089 for the
mark
APPLE (standard characters)
for goods including
Musical sound records; sound records featuring
music, musicians, documentaries, biographies,
interviews, performances, reviews, drama and
fiction; musical video records; downloadable
musical sound and video records; downloadable
sound and video records featuring or relating to
music, entertainment and films,

in International Class 9.
Fame of Opposers’ APPLE and APPLE Corps Marks
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposers’ APPLE and APPLE Corps marks and to
give great weight to such evidence if it exists. See Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322,
54 F.2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
Opposition Nos. 91175475 and 91176659
9
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305.
Opposer Apple Inc.’s APPLE Mark
In support of their claim that opposer Apple Inc.’s
APPLE mark is famous, opposers cite to the following
evidence:13
- Continuous use of the APPLE mark since 1977;
- Steady increase in sales of goods bearing the APPLE
mark from $3 billion in 2003 to $14.5 billion in
2009;
- Total revenues in United States of $65 billion
between 2001 and 2009;
- Exposure to APPLE and apple logo marks on opposer
Apple Inc.’s internet website by 100 million users
per year from 2002 to 2004 and increased exposure
since then;
- Exposure to APPLE and apple logo marks in opposer
Apple Inc.’s 200 brick and mortar stores in the
United States by over 100 million visitors per year;
- Advertising and promotional expenditures of nearly
$4 billion since 1994 of goods and services bearing
the APPLE and apple logo mark in magazines,
television, the internet, billboards and signage;

13 La Perle affidavit and exhibits thereto.
Opposition Nos. 91175475 and 91176659
10
- Extensive print advertisement in major publications
and television advertisement on major network and
cable stations as well as the internet;
- Extensive unsolicited media recognition in major
publications such as The Wall Street Journal; Time;
and Newsweek.
Based upon the evidence of record, highlighted above, we
find that opposers have made an overwhelming showing that
opposer Apple Inc.’s APPLE mark is famous for purposes of
our likelihood of confusion determination.
Opposer Apple Corps Ltd.’s APPLE Corps Mark
In support of their claim that opposer Apple Corps
Ltd.’s APPLE Corps mark is famous, opposers cite to the
following evidence:14
- Continuous use of the APPLE Corps mark since 1968,
in connection with essentially all sound recordings
released under the Apple Corps label, beginning with
the release of the single “Hey Jude” by the Beatles,
and including all subsequent studio albums by the
Beatles and all compilation albums released from the
1980s to the present;
- Steady sales of Beatles studio and compilation
albums numbering in the millions of units sold,

14 Jones affidavit and exhibits thereto.
Opposition Nos. 91175475 and 91176659
11
including 32 million units of sound recordings sold
under the APPLE Corps mark between 2000 and 2009;
- Continuous use of APPLE Corps mark since 1960s in
connection with the marketing and sale of films and
video recordings, including the films “Help!,”
“Magical Mystery Tour,” “Yellow Submarine,” “Concert
for Bangladesh,” and documentary films released in
1994 and 2004;
- Sales of such films and videos numbering over one
million units between 2002 and 2009;
- Use of the APPLE Corps mark in connection with
advertisements for the show “The Beatles LOVE” in
collaboration with Cirque du Soleil in 2006;
- Use of the APPLE Corps mark in connection with the
video game “The Beatles: Rock Band” in 2009,
featuring 45 Beatles songs to which players may sing
and play along;
- Sales of such video game numbering 1.3 million units
in 2009 alone;
- Advertisement of goods and services under the APPLE
Corps mark in print, internet and other media
outlets, including such publications as Rolling
Stone and New York Times and opposer Apple Corps
Ltd.’s website beatles.com;
Opposition Nos. 91175475 and 91176659
12
- Extensive exposure to APPLE Corps mark on
beatles.com website, including over 600,000 visits
from internet users in the United States between
January and April 2010;
- Unsolicited media recognition of APPLE Corps mark in
third-party books, National Public Radio, and such
publications as Fast Company, New York Times,
Washington Post, USA Today, and Life.
Based upon the evidence of record, highlighted above, we
find that opposers have made a sufficient showing that
opposer Apple Corps Ltd.’s APPLE Corps mark, while perhaps
not a famous mark for purposes of the fifth du Pont factor,
nonetheless is well-known and strong as applied to its goods
and services.15
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s GREEN APPLE mark and opposers’ APPLE mark and
APPLE Corps mark, all registered in standard character form,
are similar or dissimilar when viewed in their entireties in
terms of appearance, sound, connotation and overall
commercial impression. See Palm Bay Imports, Inc. v. Veuve

15We recognize that this case presents an unusual situation
inasmuch as the APPLE and APPLE Corps marks point to two iconic
sources. Nonetheless, we find no evidence that opposers’ use of
these marks somehow lessens the strength of either. In addition,
opposers’ relationship as owner of both marks (Apple Inc.) and
exclusive licensee of the APPLE Corps marks (Apple Corps) would
appear to mitigate any potential weakening of opposers’ marks.
Opposition Nos. 91175475 and 91176659
13
Clicquot, supra. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods and/or services offered under
the respective marks is likely to result.
Because the similarity or dissimilarity of the marks is
determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. V. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It
is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion”). On the
other hand, different features may be analyzed to determine
whether the marks are similar. Price Candy Company v. Gold
Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268
(CCPA 1955). In fact, there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in
Opposition Nos. 91175475 and 91176659
14
their entireties. In re National Data Corp., 224 USPQ at
751.
In comparing the marks, we note that applicant’s mark,
GREEN APPLE, incorporates the entirety of the wording in
opposers’ APPLE and APPLE Corps marks. Thus, the marks are
similar in that they contain the identical term APPLE. In
addition, applicant’s mark contains the term GREEN which
modifies the term APPLE. Although the term GREEN does not
appear in opposers’ marks, it does little to distinguish
applicant’s mark from them because a “green apple” is a
common type of apple. As used in applicant’s mark, GREEN
reinforces the similarity of its mark with opposers’ more
than it distinguishes them. We thus find that the term
APPLE is the dominant portion of applicant’s mark while the
term GREEN possesses less source identifying significance.
For this reason, we find that the term APPLE as it appears
in applicant’s mark is entitled to more weight in our
analysis. Id.
With regard to connotation, the term APPLE in opposers’
marks appears to be arbitrary as applied to the goods and
services identified thereby. Applicant argues that its
GREEN APPLE mark is used in connection with music festivals
promoting environmental consciousness and as a result the
term GREEN in its mark has an environmental connotation.
However, there is no evidence of record of the extent to
Opposition Nos. 91175475 and 91176659
15
which the consuming public is aware of such connotation. As
a result, on this record it appears just as likely that
consumers would view applicant’s GREEN APPLE mark as
connoting unripe or green varieties of apples.
Based upon the foregoing, we find that, when viewed in
their entireties, the marks GREEN APPLE and APPLE are more
similar than they are different. Applicant has taken the
wording in opposers’ marks, which as discussed above are
famous and very strong, respectively, and added a term
commonly used to modify it. Thus, it is likely that the
marks would be viewed as variations of each other, but still
pointing to opposers or connoting an association with or
sponsorship by them.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
The Goods and Services
With respect to the goods and services, it is well-
established that the goods and services of the parties need
not be similar or competitive, or even offered through the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective goods
and services of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing thereof are such that they would or could be
encountered by the same persons under circumstances that
Opposition Nos. 91175475 and 91176659
16
could give rise to the mistaken belief that they originate
from the same source. See Hilson Research, Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993);
and In re International Telephone & Telephone Corp., 197
USPQ 910, 911 (TTAB 1978). The issue, of course, is not
whether purchasers would confuse the parties’ goods and
services, but rather whether there is a likelihood of
confusion as to the source thereof. See In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
We base our determination of the similarity or
dissimilarity between the parties’ respective goods and
services, as we must, upon the services recited in the
involved applications and opposers’ above-noted
registrations. See Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”)
In this case, applicant recites “Streaming of audio
material on the Internet; Streaming of video material on the
Internet,” in Class 38. As recited, these services involve
providing audio and video files over the internet, by means
of a computer. Opposer Apple Inc.’s Registration No.
2079765 recites “communication filed by computer, namely,
electronic transmission of data and documents via computer,
Opposition Nos. 91175475 and 91176659
17
delivery of messages by electronic transmission” in Class
38. Thus, as recited, opposer Apple Inc.’s services
encompass those of applicant. That is to say, the broadly
worded “electronic transmission of data and documents by
computer” must be presumed to include applicant’s more
narrowly identified transmission of all types of data and
documents, including audio and video files streamed on the
internet. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634
(TTAB 2009)(finding “recreational vehicles, namely, travel
trailers and fifth wheel trailers” to be encompassed by and
legally identical to “trailers”); and In re Linkvest S.A.,
24 USPQ2d 1716 (TTAB 1992)(finding “computer software for
data integration and transfer” to be encompassed by and
legally identical to “computer programs recorded on magnetic
disks”).
Applicant also recites “Entertainment namely, live
performances by a musical band; Entertainment services,
namely, providing a web site featuring musical performances,
musical videos, related film clips, photographs, and other
multimedia materials; Entertainment, namely live music
concerts,” in Class 41. Opposer Apple Corps Ltd.’s
Registration No. 3317089 recites goods including “musical
sound records; sound records featuring music, musicians,
documentaries, biographies, interviews, performances,
reviews, drama and fiction; musical video records;
Opposition Nos. 91175475 and 91176659
18
downloadable musical sound and video records; downloadable
sound and video records featuring or relating to music,
entertainment and films,” in Class 9. Thus, opposer Apple
Corps provides downloadable sound and video recordings,
musical performances and films. These goods are identical
in subject matter to the musical performances, music videos,
and film clips provided by applicant’s web site. Thus,
opposer Apple Corps’ goods in Class 9 are related on their
face to applicant’s Class 41 services.
We are not persuaded by applicant’s arguments that
because its services are in the nature of environmentally
conscious music festivals, they are somehow distinct from
opposers’ goods and services. Because neither opposers’ nor
applicant’s recitation of goods or services articulates any
limitations as to the type of musical goods or services
provided under their marks, we must presume that applicant’s
services as well as opposers’ goods and services encompass
any musical events, regardless of whether they feature an
environmental theme. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
Opposition Nos. 91175475 and 91176659
19
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) Thus, we do not
read limitations on the parties’ goods or services, but
rather base our determination on the goods and services as
identified in their respective registrations and
application.
The face of their respective recitations supports a
finding that opposers’ goods and services and applicant’s
services are related. In view thereof, this du Pont factor
also favors a finding of likelihood of confusion.
Channels of Trade
Because there are no recited restrictions as to the
channels of trade or classes of purchasers of the goods or
services identified in either opposers’ pleaded
registrations or the services in the involved application,
we must assume that the goods services are available in all
the normal channels of trade to all the usual purchasers for
such goods and services. See Octocom Systems, Inc. v.
Houston Computers Services Inc., supra. See also Paula
Payne Products v. Johnson Publishing Co., supra.
Furthermore, because the goods and services of both parties,
as identified, are the type of goods and services that are
offered to the general public, the classes of consumers are
presumed to be the same. As a result of the foregoing, this
Opposition Nos. 91175475 and 91176659
20
du Pont factor also favors a finding of likelihood of
confusion.
Actual Confusion
Another du Pont factor discussed by the parties is the
existence or lack of actual confusion. Opposers argue that
the application at issue is based upon intent to use and
that applicant has only asserted use of the mark in
connection with an annual music event for five years. Thus,
opposers argue that the lack of actual confusion is not
probative in this case. On the other hand, applicant
asserts, without evidentiary support, that its “festival has
taken place in cities all across the Unites States for five
years,” “has been extensively advertised,” and attended by
“more than a million people.”16
Applicant’s mere reliance upon contemporaneous use of
the marks in the United States for five years, and its
unsupported allegations regarding the extent of
advertisement and attendance of its musical events, is not
probative. See, e.g., Saul Zaentz Co. v. Bumb, 95 USPQ2d
1723, 1725 n.7 (TTAB 2010). In assessing this du Pont
factor, five years is not a particularly long time.
Therefore, in order for the absence of evidence of actual
confusion to be a significant consideration, we would expect
solid evidence of a very high level of contemporaneous use

16 Applicant’s brief, page 6.
Opposition Nos. 91175475 and 91176659
21
of the marks under such circumstances that confusion, if
likely, would not only have occurred, but would likely have
been reported. Applicant has not established such a record.
It has often been recognized that evidence of actual
confusion is very difficult to obtain. Lebanon Seaboard
Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB
2012). Moreover, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). As a result, this du
Pont factor is neutral.
Conclusion
We have carefully considered all of the evidence
pertaining to priority of use and the relevant du Pont
factors, as well as all of the parties’ arguments with
respect thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that opposers have established priority of
use and that consumers familiar with opposers’ goods and
services under their APPLE mark and APPLE Corps mark would
be likely to believe, upon encountering applicant’s GREEN
APPLE mark for its recited services, that the parties’
services originate with or are associated with or sponsored
by the same entity. In making our determination, we have
balanced the relevant du Pont factors. The factors of fame
Opposition Nos. 91175475 and 91176659
22
of opposer Apple Inc.’s APPLE mark and the strength of
opposer Apple Corp Ltd.’s APPLE Corp mark, the similarity
between the marks and the relatedness of the goods and
services weigh strongly in opposers’ favor.
Dilution and Bona Fide Intent to Use
Given our determination that there is a likelihood of
confusion, we decline to reach a determination on the
questions of dilution and whether applicant lacked a bona
fide intent to use the applied-for mark in commerce as to
the services in Class 38 in this proceeding.
DECISION: The opposition is sustained, and
registration to applicant is refused on the ground of
priority and likelihood of confusion.