Apple, Inc.v.Sector Labs, LLC

Trademark Trial and Appeal Board

Mar 19, 2012

No. 91176027 (T.T.A.B. Mar. 19, 2012)

Mailed:
March 19, 2012
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Apple, Inc.
v.
Sector Labs, LLC
________

Opposition No. 91176027
against Serial No. 78215335
_______

Marie C. Seibel and Margaret C. McHugh of Kilpatrick
Townsend & Stockton LLP for Apple, Inc.

Ana I. Christian, of Law Offices of Ana I. Christian for
Sector Labs, LLC.
_______

Before Bucher, Taylor and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Sector Labs, LLC seeks registration on the Principal
Register of the mark VIDEO POD (in standard character
format) for “video projectors using an optical means to
reproduce moving picture signals on a remote surface, for
business and entertainment purposes” in International Class
9.1

1 Application Serial No. 78215335 was filed on February 14,
2003, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. No claim is made to the exclusive
right to use the word “Video” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91176027
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Apple, Inc. has opposed this application on the ground
that the applied-for mark is a merely descriptive term under
Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1), and
alternatively, on the ground of priority of use and
likelihood of confusion, alleging that applicant’s mark,
when used in connection with the identified goods, so
resembles the following registered marks:
IPOD for “portable and handheld digital electronic devices
for recording, organizing, transmitting, manipulating,
and reviewing audio files; computer software for use in
organizing, transmitting, manipulating, and reviewing
audio files on portable and handheld digital electronic
devices” in International Class 9;2 and
IPOD for “portable and handheld digital electronic devices
for recording, organizing, transmitting, manipulating,
and reviewing text, data, and audio files; computer
software for use in organizing, transmitting,
manipulating, and reviewing text, data, and audio files
on portable and handheld digital electronic devices” in
International Class 9;3
as to be likely to cause confusion, to cause mistake or to
deceive, under Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d).4

2 Registration No. 2835698 issued on April 27, 2004; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
3 Registration No. 3089360 issued on May 9, 2006; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
4 During the course of this litigation, both parties have
brought claims and raised defenses that we will not deal with in
this opinion. Although opposer alleged a likelihood of dilution
under Section 43(c) [see original Notice of Opposition of March
6, 2007, ¶¶ 12-14, TTABVue Entry #1; and ¶¶ 15-17 of first
amended pleading of August 20, 2009, TTABVue Entry #34], and
fraud [see second amended Notice of Opposition of November 19,
Opposition No. 91176027
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Respondent, in its answer, denied all the salient
allegations of the notice of opposition.
I. THE RECORD
In addition to the pleadings, the file of Sector Labs
LLC’s opposed application Serial No. 78215335 is part of the
record without any action by the parties. Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b). Opposer introduced into
evidence the trial testimony (designated “CONFIDENTIAL”),
taken on September 8, 2010, of Thomas La Perle, Assistant
Secretary, Legal, for Apple Inc., and having attached
thirty-five exhibits [TTABVue Entry ## 82-84].
Additionally, on September 20, 2010, opposer filed its first
Notice of Reliance with Exhibits 1 through 213 [TTABVue
Entry ## 63-68] and its Second Notice of Reliance, dated May
2, 2011, with Exhibits 214 through 222. [TTABVue Entry
# 81].

2009, ¶¶19-25, TTABVue Entry #41] approved by the Board on May
19, 2010 [TTABVue Entry #56]; and applicant raised affirmative
defenses of estoppel, waiver, laches and unclean hands [see
applicant’s answer to amended notice of opposition dated November
25,2009, ¶¶ G-I, TTABVue Entry #42]; inasmuch as these claims and
defenses are not discussed in the final briefs, we treat them as
having been waived.

Opposition No. 91176027
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On November 19, 2010, Applicant filed its Notice of
Reliance [TTABVue Entries ## 70-71].5 Additionally,
applicant introduced into evidence the trial testimony taken
on November 15, 2010, of Daniel Kokin, President and Founder
of Sector Labs, LLC, and having attached applicant’s Exhibit
Nos. 1-5 and opposer’s Exhibits A-J [TTABVue Entries ## 79-
80].
Both parties have fully briefed the issues remaining
before the Board.6
II. PRELIMINARY MATTERS
Each of the parties has raised objections to our
consideration of various portions of the record.
Opposer objects on the basis of hearsay to copies of
the online contributions of anonymous Internet bloggers that
applicant has placed into the record.7 Applicant quotes at
length from bloggers’ criticisms of the fact that Apple even

5 We note that although opposer had earlier asked [TTABVue
Entries ## 72, 77] that this untimely filing be stricken from the
record, in an order of April 1, 2011 [TTABVue Entry #78], the
Board found excusable neglect and therefore we have considered
this evidence in reaching our final determination.
6 We note that the Board has also denied two successive
motions for summary judgment filed by opposer. Opposer’s first
summary judgment motion was filed on January 13, 2009 [TTABVue
Entry ##21-25], based on Section 2(d), denied on July 22, 2009
[TTABVue Entry #31], and opposer’s second summary judgment motion
was filed on November 19, 2009 [TTABVue Entry #40], based on
Section 2(e)(1), denied on April 20, 2010 [TTABVue Entry #55].
7 Opposer’s reply brief at 16-17 [TTABVue Entry #89].
Opposition No. 91176027
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filed this opposition. Applicant uses these blogs in an
effort to buttress its position that members of the relevant
public would never associate applicant’s “Video Pod” mark
with Apple or IPOD.
Apart from whether or not this represents a large or
small number of persons commenting on this particular
litigation, we accord no weight to the harsh criticisms of
Apple from anonymous bloggers. It is commonplace in the
cyberworld for public officials and commercial
establishments to be maligned by intemperate users of the
blogosphere who hide behind anonymity or pseudonymity as a
cloak of protection. Hence, even if we should choose not to
exclude these comments under the hearsay rule, given their
inherent unreliability, we find substantially no
credibility, trustworthiness or probative value in these
blogs on the issues before us, and especially as to whether
prospective consumers would find the parties’ marks
confusingly similar and/or would be confused about the
source of applicant’s named goods.
Opposer has also objected to Exhibits 2 and 3 from Mr.
Kokin’s trial deposition, as well as any transcript
Opposition No. 91176027
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testimony about these exhibits.8 Opposer argues that
applicant is attempting to introduce evidence at trial that
it failed to produce in discovery.
Consistent with its identification of goods in the
application as filed, applicant invariably took the position
throughout the discovery phase of this proceeding, that the
only goods it intended to sell under its VIDEO POD mark
would be “video projectors using an optical means to
reproduce moving picture signals on a remote surface, for
business and entertainment purposes.”9
Specifically, opposer’s Request for Documents #2 asked
for “all documents referring or relating to” the named goods
to be sold under the VIDEO POD mark.10 Opposer asked for
documents and propounded interrogatories about any proposed
or actual agreements involving the named projectors.11

8 See opposer’s motion to exclude certain portions of the
testimony deposition of D. Kokin [TTABVue Entry # 85] and
declaration of M. Seibel in support of opposer’s motion to
exclude portions of D. Kokin’s testimony [TTABVue Entry # 86].
9 See Seibel Decl., Ex. A at 2; Ex B at 2; and Ex. E at No. 1
[TTABVue Entry # 86].
10 DOCUMENT REQUEST NO. 2: All Documents or things referring
or relating to goods offered or intended to be offered by
You or services provided or intended to be provided by You
under Your Mark.
RESPONSE TO REQUEST NO. 2: 1. Brochure page v6.pdf; Video
Pod product brochure page.
11 DOCUMENT REQUEST NO. 33: All documents or things referring
or relating to any proposed or actual agreements for the
advertising, promotion, sponsorship and/or endorsement of
the goods/services You promote or intend to promote under
Opposition No. 91176027
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Opposer asked for any written or printed materials used to
display, market or label these projectors.12 Opposer also

Your Mark in any channel of trade.
RESPONSE TO REQUEST NO. 33: Naka.ppt (rough draft) created
for a proposed joint venture with Nakamichi America Corp.
Sector ultimately met with Dean Miller, the acting
President/Director, Int’l Marketing. Created May 29, 2002.
* * *
INTERROGATORY NO. 8: Identify all documents referring or
relating to proposed or actual agreements for the
advertisement, promotion, sponsorship, and/or endorsement of
the goods/services You promote or intend to promote under
Your Mark in any channel of trade.
RESPONSE TO INTERROGATORY NO. 8: Document Naka.ppt
(attached) is a Powerpoint (rough draft) created for a
proposed joint venture with Nakamichi America Corp. Sector
ultimately met with Dean Miller, the acting
President/Director, Int'l Marketing. Created May 29, 2002
FIRST SUPPLEMENTAL RESPONSE: Sector objects to the
interrogatory to the extent that it is vague, ambiguous or
burdensome. Sector also objects to the extent that
information sought is protected under a claim of trade
secret and/or confidentiality.
The information PowerPoint (Naka.ppt) was provided in
error. The proposed relationship with Nakamichi America
Corp. predated the development of the VIDEO POD. Sector
requests that the OPPOSER remove said document.
As stated in Sector Labs' response to interrogatories 4
and 5, a few attempts were made to develop marketing,
manufacturing, and distribution partnerships with Sojitz,
Microtek, and Funai; however none of the proposed joint
ventures were successfully agreed upon.
Sector continues to identify documents and reserves
the right to supplement the identification of documents with
respect to INTERROGATORY No. [8].
12 INTERROGATORY NO. 15: Identify all labeling, packaging,
displays, or other written and printed materials that have
been or will be used to display, market, and/or label each
good offered and/or service provided under Your Mark.
RESPONSE TO INTERROGATORY NO. 15: Sector has insufficient
information to answer this question. Sector will make this
information available in the event that any additional
information is found to exist.
FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 15: Sector
objects to the interrogatory to the extent that it is vague,
ambiguous, and burdensome. Sector also objects to the extent
that information sought is protected under a claim of trade
Opposition No. 91176027
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asked for any documents concerning intended or actual
customers for the projectors.13
Nonetheless, when applicant took the testimonial
deposition of its president, Daniel Kokin, on November 15,

secret and/or confidentiality.
Sector will supplement this response as documents are
identified.
13 DOCUMENT REQUEST NO. 14: Documents sufficient to identify
all categories of actual or intended purchasers (e.g.
retailers, general public, wholesalers, individual
consumers) of each category of good and/or service
advertised, distributed, provided or sold or intended to be
advertised, distributed, provided or sold by You or on Your
behalf under Your Mark.
RESPONSE TO REQUEST NO. 14: Sector has insufficient
information to answer this question. Sector will make this
information available in the event that any additional
information is found to exist.
* * *
INTERROGATORY NO. 16: Identify the actual or intended
categories of purchasers (e.g. retailers, general public,
wholesalers, individual consumers) of each category of good
and/or service that is or will be advertised, distributed,
provided or sold by You or on Your behalf under Your Mark.
RESPONSE TO INTERROGATORY NO. 16: Sector has insufficient
information to identify the intended categories of
purchasers of each category of goods and/or services that
will be advertised, distributed, provided or sold by Sector
or on Sector's behalf under the VIDEO POD mark.
FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 16: Sector
objects to the interrogatory to the extent that it is vague,
ambiguous, and burdensome. Sector also objects to the
extent that information sought is protected under a claim of
trade secret and/or confidentiality.
As stated in interrogatories 4 and 5, Sector plans to
use the resources of a marketing/manufacturing/distribution
partner. The actual or intended categories of purchasers
will ultimately depend on the type of joint venture. For
example, if Sector may choose to sell and distribute
products under the VIDEO POD mark. If so, Sector may choose
to sell directly to consumers, in addition to wholesale and
retail channels.
Sector’s second supplemental response will provide more
information.
Opposition No. 91176027
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2010, two of the five exhibits introduced by applicant’s
counsel had not been produced to opposer during discovery.
The first document is entitled “Video pod, Request for
Proposal,” dated July 8, 2002, seemingly created at a time
when applicant was seeking a development partner. This
document describes the projector and displays many aspects
of applicant’s “Video Pod” devices.14 The second document is
entitled “Video Pod, Preliminary Product Description /
Demonstration Unit Development / Beta Unit Development,”
dated August 21, 2002 (six weeks after the above document),
which similarly describes and displays applicant’s “Video
Pod” projectors and purports to describe “the market from
which the Pod will find its highest levels of demand.”15
Opposer’s counsel objected immediately and on the
record to the surprising introduction of these exhibits.16
In spite of what seem to be unambiguous discovery requests,
applicant never produced these two exhibits in its initial
or in any supplemental production.
In the face of opposer’s case under Section 2(e)(1) of
the Act, applicant effectively altered the weight of the

14 TTABVue Entry # 79, Exhibit 2.
15 TTABVue Entry # 79, Exhibit 3 at pp. 5, 11-12.
16 D. Kokin Depo. at 11 and 13, Ex. 2 and 3 [TTABVue Entry
#79].

Opposition No. 91176027
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record and charted a new course for the litigation. In
stark contrast to earlier discovery and litigation
responses, where applicant was adamant that it had chosen
the name “Video Pod” because of the product’s “pod-like
shape,” these exhibits support allegations that applicant
considered other “non-pod-like” configurations for the
“Video Pod” product. In fact, during trial, applicant
referred to these two documents as evidence supporting a
conclusion that the final planned iteration of the product
form was not necessarily pod-shaped.
Because Exhibits 2 and 3 were plainly encompassed by
opposer’s discovery requests and yet were never produced to
opposer, opposer was denied the opportunity to conduct
further meaningful discovery on or timely evaluate the
importance of these documents.
While applicant concedes that these documents were
“inadvertently not produced in discovery,” it argues that
the exhibits and related testimony should be considered
inasmuch as they are relevant, related to other documents in
the record and that opposer will not be harmed by their
consideration.17 We disagree.

17 Applicant’s trial brief at 4 [TTABVue Entry # 88].
Opposition No. 91176027
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These two trial documents stressing non-pod-like
configurations, if admitted and unrefuted, contradict
applicant’s earlier, unchanging position during discovery
and pretrial motions that a significant characteristic of
the involved goods was their “pod-like shape.”18 Applicant
has not provided substantial justification for its failure
to disclose these documents during discovery. With the
degree of surprise and potential harm to opposer represented
by these documents, the mere fact that opposer had an
opportunity to cross-examine Mr. Kokin does not provide an
adequate remedy. In fact, to permit applicant to rely upon
these documents and Mr. Kokin’s related testimony would be
to countenance the very type of unfair trial tactic that the
Federal Rules19 and the Board's precedent20 are meant to

18 Although it should also be noted that many of the images in
both documents retain an overall configuration or form that would
accurately be described as “pod-shaped.”
19 Fed. R. Civ. P. 37(c)(l): “If a party fails to provide
information … as required by Rule 26(a) or (e), the party is not
allowed to use that information … to supply evidence at a trial …
unless the failure was substantially justified or is harmless.”
20 See Super Valu Stores Inc. v. Exxon Corp., 11 USPQ2d 1539,
1543 (TTAB 1989) (party may not refuse to answer interrogatories
by claiming confidentiality and then introduce responsive
information during its trial period); Presto Products Inc. v.
Nice-Pak Products Inc., 9 USPQ2d 1895, 1896 n.5 (TTAB 1988)
(trademark search report not produced under attorney-client
privilege, albeit rightfully withheld, still cannot be relied
upon to support motion for summary judgment); ConAgra Inc. v.
Saavedra, 4 USPQ2d 1245, 1247 n.6 (TTAB 1987) (exhibits
demonstrating pronunciation not produced during discovery, though
encompassed by discovery requests, excluded from consideration);
and National Aeronautics and Space Administration v. Bully Hill
Opposition No. 91176027
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prevent. Accordingly, these exhibits and their related
testimony have been excluded from consideration in this
proceeding.
On the other side of the coin, applicant objects to
much of opposer’s cross-examination testimony from this same
deposition of Mr. Kokin. One of the most frequent
objections is that certain questions posed by opposer’s
counsel “called for speculation.” These objections were
timely asserted by Mr. Kellar, applicant’s counsel and
effectively warned the witness to avoid any speculation.
Nonetheless, Mr. Kokin proceeded to answer many of the
objected-to questions based upon his personal knowledge.
Significantly all of those topics were relevant to issues
raised by opposer in this litigation – likelihood of
confusion, descriptiveness, and the veracity of the witness
– and all of them topics anticipated by applicant’s counsel
during Mr. Kokin’s direct examination testimony.
Applicant also interposed objections to Mr. Kokin’s
testimony on the basis of relevance and heresay (at 55). As
to those objections, the most significant exchange during

Vineyards Inc., 3 USPQ2d 1671, 1672 n.3 (TTAB 1987) (opposer’s
exhibits identified in applicant’s brief as within the scope of
documents requested by applicant but not produced by opposer
during discovery, excluded from consideration). See also TBMP
§ 527.01(e), Note 2.

Opposition No. 91176027
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this portion of this cross-examination testimony (at 55-56)
related back to the topic of “color compatibility” between
applicant’s intended video projector and large players in
the field such as X-Box, Apple, Sony, Nintendo, etc. This is
relevant subject matter raised by opposer’s Exhibit E, and
discussed earlier by applicant’s witness (at 44). As to
applicant’s objections to opposer’s Exhibit E (at 43), we
conclude from Mr. Kokin’s own testimony that Mr. Damir Perge
controls an important source of funds for applicant’s
product development.21 We find that Mr. Kokin did receive a
copy of Mr. Perge’s email and read its contents. From the
copy of this colorful email document, we conclude only that

21 Q: [Stewart Kellar (redirect)]: “ … I want to turn your
attention to Plaintiff’s Exhibit E. It’s an e-mail from
Damir Perge. Now, can you explain to me again who is
Damir?
A: [Daniel Kokin]: Damir Perge was the fund manager for
Tesla Capital, the investment group I became a
portfolio member of.
Q: Was he a member of Sector Labs?
A: Only in the sense that he considers – considered himself
the founder because he helped fund us.
Q: Was he listed as a member in the operating agreement for
Sector Labs?
A: I cannot recall.
Q: Okay. Did he have any final authority with regard to
the form of the product that you intended to
introduce to market?
A: Only in the sense that he – only in the sense that if he
didn’t like what he saw, we would lose our funding.
Kokin Depo. 84-85.
In other documentary evidence in the record, Mr. Perge is
clearly identified as a “Co-Founder” of applicant and “Tribe
Chieftain,” Managing Partner of Tesla Capital, LLC and CEO of
Opposition No. 91176027
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one of applicant’s critical sources of funding was offering
his opinions on the benefits to applicant of “color
compatibility” with equipment from Xbox, Apple, Sony and
Nintendo. Hence, while we find this email exchange to be
relevant and highly related to Mr. Kokin’s testimony on
direct examination, we agree with applicant it should be
treated as hearsay, meaning that we cannot accept it for the
truth of the matter asserted as to the benefits of color
compatibility. In a similar fashion, we find that the
relevance, reliability and probative value of any other
email exchanges that Mr. Kokin had with third parties (e.g.,
Mr. John Chaisson,22 Mr. Hoffman Hibbet,23 Ms. Natalia
Daniel,24 etc.) is weighed in light of the nature of their
involvement with Sector Labs and/or their relationship with

Futuredex. See naka.ppt, final page at TTABVue # 80, p.20 of
138.
22 At one point, Executive Vice President of applicant.
Applicant’s Exhibit 4, p. 2. “John is responsible for strategic
business management, corporate and organizational development and
strategic relationships for Sector Labs. see naka.ppt, final
page at TTABVue #80, p.20 of 138. Consistent with Mr. Kokin’s
testimony (at 85), he is also described as “active as a strategic
advisor.” TTABVue #80, p.28 of 138; and “advisor, Board Member.”
TTABVue #80, p.87 of 138.
23 Former Chief Operating Officer of applicant. Applicant’s
Exhibit 4, p. 2. He has been described as an electrical engineer
who offers business consulting services “for early stage
companies.” TTABVue #80, p.28 of 138; “advisor, Board Member,”
TTABVue #80, p.87 of 138; as well as the colorful a.k.a. of
“Texas Chainsaw Oil Tumbleweed Millionaire and Man of Mystery.”
TTABVue #80, p.100 of 138.
24 An ex-girlfriend of Mr. Kokin. Kokin Depo. 56-58, 61, 87
[TTABVue Entry # 79].
Opposition No. 91176027
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Mr. Kokin. In this context, we agree with applicant that
the email exchanges should all be treated as hearsay,
meaning that we conclude only that the exchanges took place,
and that we cannot accept them for the truth of the matters
asserted therein. On balance, however, we find no fault
with the scope of the questions posed by opposer’s counsel
during this cross-examination – including cross-examination
directed to these emails of record. Accordingly, we do not
strike any portion of the cross-examination testimony or
related exhibits, but consider them solely as evidence that
certain communications took place as corroborated by the
testimony of this deponent.
Applicant has objected to many of opposer’s unpleaded
registrations inasmuch as they were not pleaded in any of
the Notices of Opposition. However, opposer did not
introduce these registrations for purposes of establishing
priority under Section 2(d) likelihood of confusion, but
only to attempt to show the relatedness of the goods, and to
support Apple’s arguments as to the natural zone of
expansion for opposer’s IPOD media device and IPOD marks.
See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1035 (TTAB
2010) (unpleaded registrations could not be used as a basis
for the opposition, but like third-party registrations, they
should be considered for “whatever probative value” they may
Opposition No. 91176027
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lend to opposer’s showing under the du Pont factors in its
case in chief).
Applicant also has objected to the errata sheet
submitted by opposer’s primary witness, Thomas La Perle.
Applicant argues that with the submission of his errata
sheet, Mr. La Perle made substantive changes to his
testimony. We disagree. For example, we note Mr.
La Perle’s correction that during his testimony, surely he
said “an Apple” (not “a Apple”), and that with the
transcription, the reporter had inadvertently changed the
meaning of his testimony with the insertion of an errant
comma (i.e., “ … product comes[,] out … ”).25 Overall, we
find nothing untoward about the thirteen minor corrections
Mr. La Perle made to 135 pages of transcribed testimony.26
Finally, as to applicant’s objection to the fact that
Mr. La Perle’s entire testimony was marked “Confidential,”
we agree with opposer’s contention that “ … the testimony
clearly addressed sensitive items, such as Apple’s marketing
plans and other confidential data, that provide Apple with
an advantage in a highly competitive industry.” However,

25 TTABVue Entry # 82.
26 Interestingly, this appears to be fewer corrections than
applicant’s primary witness, Mr. Kokin, made to far fewer pages
of his own testimony.

Opposition No. 91176027
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only in very rare instances should an entire submission be
deemed confidential. TBMP § 703.01(p); 37 C.F.R.
§ 2.126(c); TBMP §§ 120.02 and 412.04. In fact, opposer has
referenced key parts of this testimony (e.g., figures of
annual gross sales and advertising expenditures) in its
public brief.27 Accordingly, we request that opposer submit
for the public record within thirty days of this decision a
redacted version of Mr. La Perle’s testimony, employing a
rule of reasonableness to decide which pages or portions of
deposition transcript pages need to be redacted in order to
protect sensitive, confidential information.
III. FACTUAL FINDINGS
As legend would have it, Apple was launched from a
Silicon Valley garage in the 1970s. After kicking off the
personal computer revolution, opposer moved into a variety
of other areas involving consumer electronic devices. Apple
remains one of the most innovative enterprises in the world,
having enjoyed tremendous success in industries such as
computer hardware and software, consumer electronic devices

27 Most of these annual gross sales figures and advertising
expenditures are also drawn from publicly-available documents
included in the TTABVue public record in the form of opposer’s
Notices of Reliance.
Opposition No. 91176027
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and digital media.28 Opposer’s nation-wide distribution is
handled through its own retail and online stores as well as
an extensive network of authorized distributors and
resellers.29 Apple generated over $151.7 billion in net sales
revenue between 2001 and 2009, of which approximately $88
billion resulted from sales to customers in the United
States.30
In addition to the federal registrations upon which the
opposition is based, the record also contains copies of
another ten of Apple’s U.S. trademark registrations, for
IPOD (class 9);31 IPOD (class 25;32 IPOD (classes 9 and 22);33
(classes 9, 16, 28, 35, 39, 41 and 42);34 IPOD CLASSIC

28 La Perle Depo. 10:3-11 [TTABVue Entry # 82].
29 La Perle Depo. 10:19-11:4 [TTABVue Entry # 82].
30 Opposer’s Not. Of Rel. 1 – See Ex. 1 at 12, 18, Internet 12
and 16 of 87, TTABVue Entry # 63 (48 and 52 of 300); Ex. 2 at 13,
19, Internet 11 and 15 of 84, TTABVue Entry # 63 (135 and 139 of
300); Ex. 3 at 15, 23, Internet 17 and 25 of 122, TTABVue Entry
# 63 (226 and 234 of 300); Ex. 4 at 15, 26, Internet 16 and 27 of
115, TTABVue Entry # 64 (49 and 60 of 300); Ex. 5 at 19, 47,
Internet 19 and 47 of 97, TTABVue Entry # 64 (168 and 196 of
300); Ex. 6 at 12, 35, Internet 14 and 37 of 128, TTABVue Entry
# 64 (261 and 284 of 300); Ex. 7 at 11, 36, Internet 13 and 38 of
98, TTABVue Entry # 65 (90 and 115 of 300); and Ex. 8 at 14, 35,
41, Internet 14, 37 and 43 of 99, TTABVue Entry # 65 (191, 214
and 220 of 300).
31 Registration No. 3341191 issued on November 20, 2007.
32 Registration No. 3823241 issued on July 20, 2010.
33 Registration No. 3497047 issued on September 2, 2008.
34 Registration No. 3741470 issued on January 26, 2010.
Opposition No. 91176027
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(class 9);35 IPOD TOUCH (class 9);36 IPOD NANO (class 9);37
(class 9);38 IPOD SHUFFLE (class 9);39 and POD (class 9).
Applicant is a concept and development company founded
in September 2001. Daniel Kokin, co-founder and President
of Sector Labs, founded the company with an eye on the
digital viewer and projection devices market. However, the
only product applicant currently markets is an unrelated
plumbing device that is offered for sale on applicant’s
website. Over the past decade, a number of concepts and
designs have been displayed on applicant’s website as it
sought investors for its product concepts. At the time the
record closed in this prolonged litigation, applicant had
still not brought to market the “video projector for the
masses” envisioned by applicant and described in the
identification of goods in this intent-to-use application.40

35 Registration No. 3517722 issued on October 14, 2008.
36 Registration No. 3489972 issued on August 19, 2008.
37 Registration No. 3192683 issued on January 2, 2007.
38 Registration No. 3341286 issued on November 20, 2007.
39 Registration No. 3453564 issued on June 24, 2008.
40 See also applicant’s brief at 5.

Opposition No. 91176027
- 20 -
IV. ANALYSIS
A. Opposer’s Standing
Because opposer’s registrations are of record, opposer
has established its standing. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000);
and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).
Accordingly, there is no question but that opposer has
established a real interest in preventing the registration
of applicant’s mark and, therefore, pursuant to the
controlling case law, opposer may also object to the
registration of applicant’s mark as being merely
descriptive. See Coach Services, Inc. v. Triumph Learning
LLC, 96 USPQ2d 1600 (TTAB 2010).
B. Is Applicant’s mark merely descriptive?
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
function, or characteristic of the goods or services.”
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive
Opposition No. 91176027
- 21 -
of analgesic product]. See also In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
[MONTANA SERIES and PHILADELPHIA CARD are merely descriptive
of applicant’s “affinity” credit card services; a “mark is
merely descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the product
or service”]; In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK
is merely descriptive of bicycle racks]; In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE
PIE is merely descriptive of a potpourri mixture]; and In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods. Gyulay, 3 USPQ2d at 1009. Descriptiveness of a mark
is not considered in the abstract, but in relation to the
particular goods for which registration is sought. That is,
when we analyze the evidence of record, we must keep in mind
that the test is not whether prospective purchasers can
guess what applicant’s goods are after seeing only
applicant’s mark. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”; “Appellant’s
Opposition No. 91176027
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abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute.”]. Rather, the question is whether
someone who knows what the goods are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); and In re
Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB
1998).
In addition to considering the applied-for mark in
relation to the goods for which registration is sought, the
proper test for descriptiveness also considers the context
in which the mark is used and the significance that the mark
is likely to have on the average purchaser encountering the
goods in the marketplace. In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods.
Opposition No. 91176027
- 23 -
“Whether a given mark is suggestive or merely descriptive
depends on whether the mark ‘immediately conveys … knowledge
of the ingredients, qualities, or characteristics of the
goods … with which it is used,’ or whether ‘imagination,
thought, or perception is required to reach a conclusion on
the nature of the goods.’” (citation omitted) In re Gyulay,
3 USPQ2d at 1009; In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corp., 226 USPQ 365 (TTAB 1985).
Hence, the first substantive question before us is
whether the term VIDEO POD conveys information about a
significant characteristic, purpose, function or use of
applicant’s goods with the immediacy and particularity
required by the Trademark Act.
Applicant has disclaimed the word “Video” inasmuch as
the involved goods are identified as “video projectors,” and
hence the word “video” would be a highly descriptive
designation for the identified goods. However, the parties
disagree over whether the applied-for term as a whole,
“Video Pod,” is merely descriptive of applicant’s intended
products.
We begin by noting that a composite term consisting of
a combination of descriptive terms is itself merely
Opposition No. 91176027
- 24 -
descriptive if it fails to evoke any new or unique
commercial impression. The first word in applicant’s mark
is “video.” Inasmuch as its goods are “video projectors,”
it takes little analysis to agree that applicant
appropriately disclaimed this highly descriptive, if not
generic, wording.
Hence, our determination under Section 2(e)(1) of the
Trademark Act turns on the connotation of the word “Pod” to
someone who is acquainted with the involved goods, and
whether the combination of “Video” and “Pod” immediately
conveys knowledge of a significant form or feature of the
goods.
In responding to opposer’s discovery requests,
applicant has repeatedly explained its use of the word “pod”
by reference to “pod-shaped” or a “pod-like appearance” of
its video projectors:
• “Sector intends to sell pod-shaped video projectors
under the VIDEO POD mark.”41
• “The VIDEO POD mark is believed to have been used to
describe its associated device back in 2002 …. The
VIDEO POD mark is still used to describe its
associated device.”42
• “While ‘POD’ denotes a pod-like appearance, the
‘VIDEO’ portion of the VIDEO POD mark specifically

41 Opposer’s Not. of Rel. 1, Ex. 209 (Response to Interrogatory
No. 1) [TTABVue Entry # 68, 240 of 295].
42 Opposer’s Not. of Rel. 1, Ex. 209 (Response to Interrogatory
No. 2) [TTABVue Entry # 68, 240 of 295].
Opposition No. 91176027
- 25 -
informs consumers about the product’s ability to
store, record, or transmit video.”43
• “The VIDEO POD Mark was/is intended to denote both
form and function. The ‘VIDEO’ portion of the VIDEO
POD Mark clearly indicates that goods and/or
services under the VIDEO POD Mark have the ability
to playback, record, and/or store video content.
The ‘Pod’ portion of the VIDEO POD Mark is intended
to convey a pod-like and/or pod-shaped form
factor.”44
• “ … It was sometime during April or May [2002] the
team noticed that many of the form factors were pod-
like in their appearance. The project was
subsequently referred to as the ‘Pod’ or ‘Video
Pod.’”45
• “The ‘Pod’ portion of the VIDEO POD Mark is intended
to convey a pod-like and/or pod-shaped form
factor."46

Then in applicant’s attempts to defeat opposer’s motion
for summary judgment on the question of likelihood of
confusion, applicant made a series of statements
undercutting its current arguments against a finding of mere
descriptiveness:
• “While the other prototypes were being innovated,
sometime in mid-2002, as this last incarnation was
taking shape, the lab began calling it the Video
Pod, as a description of its shape and function."47

43 Opposer’s Not. of Rel. 1, Ex. 206 (Response to Request for
Admission No. 15) [TTABVue Entry # 68, 216 of 295].
44 Opposer’s Not. of Rel. 1, Ex. 209 (Response to Interrogatory
No. 20) [TTABVue Entry # 68, 242 of 295].
45 Opposer's Not. of Rel. 1, Ex. 210 (Supplemental Response to
Interrogatory No. 2) [TTABVue Entry # 68, 252 of 295].
46 Opposer's Not. of Rel. 1, Ex. 209 (Response to Interrogatory
No. 21) [TTABVue Entry # 68, 243 of 295].
47 March 16, 2009 Declaration of Daniel Kokin in Support of
Sector's Response to Apple's Motion for Summary Judgment and
Sector's Cross-Motion for Summary Judgment, ¶ 8 (emphasis added).
See TTABVue Entry # 27. Applicant's founder, Daniel Kokin,
confirmed the descriptive nature of the term VIDEO POD in his
Opposition No. 91176027
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• “Contrary to Apple’s assertions, the Video Pod was
named for its pod shape and had nothing to do with
the iPod. The Video Pod is oval shaped,
approximately twelve inches in diameter with
speakers on each side that bulge out, creating a pod
shape.”48
• “Staying true to the organic, biomorphic natural
shapes of the predecessor designs, the Product
became a pod—like oval shape.”49
• “The design, staying true to the organic,
biomorphic, natural shapes of its predecessors in
the lab, turned into a pod-like device, with its
shape very closely resembling a pod."50

However, after Mr. Kokin presumably became more aware
of the potential harm to applicant’s chances of obtaining a
registration based on such explanations, he recalled in his
testimony having been inspired by the parallels between his
dream of a family of video products and “pods” of whales,51
or even a scene involving an “escape pod” from the movie
“2001. A Space Odyssey” (1968)52 We find these tardy
explanations to be most unconvincing.

declaration to support Applicant’s response to Apple’s first
Motion for Summary Judgment and Applicant's Cross-Motion for
Summary Judgment.
48 Sector’s March 16, 2009 Response to Apple’s Motion for
Summary Judgment and Sector’s Cross-Motion for Summary Judgment
at 1. See TTABVue Entry # 27.
49 Sector’s March 16, 2009 Response to Apple’s Motion for
Summary Judgment and Sector’s Cross-Motion for Summary Judgment
at 3. See TTABVue Entry # 27.
50 March 16, 2009 Declaration of Daniel Kokin in Support of
Sector’s Response to Apple’s Motion for Summary Judgment and
Sector’s Cross-Motion for Summary Judgment, ¶ 8. See TTABVue
Entry # 27.
51 Kokin Depo. at 21-22; 47-48 [TTABVue Entry # 79].
52 Kokin Depo. at 20, 49 [TTABVue Entry # 79].
Opposition No. 91176027
- 27 -
Before the more interesting explanations pointing to
Stanley Kubrick and Arthur C. Clarke, or the obscure
references to families of whales, applicant had offered
several more prosaic explanations for the origins of the
term “pod.” As seen in the discovery statements recited
above, the “oval” shape of applicant’s most frequently
pictured prototypes during the odyssey of 2002 clearly had
the dictionary connotation of ‘a rounded enclosure where the
length/height exceeding any other dimension.’ With the
origins of this word in “organic, biomorphic, natural” seed
vessels (e.g., pea “pods”), the word “pod” has historically
been used in connection with an elongated enclosure.
Dictionary definitions seem to suggest that in recent years,
as applied to science, it has become short for a detachable
unit having a special function (space capsules, etc.).53
Certainly, in the period immediately prior to filing
this application, applicant was using visual representations
of the proposed video projector having a shape that Mr.
Kokin has repeated described as “pod-shaped form factor”:

53 In describing another video projector he “invented” in 2000,
Mr. Kokin describes a mockup the “size of a pack of cigarettes”
having a “small, kind of all-in-one, encapsulated type of
appearance.” Even if not necessarily fitting the “rounded edges”
theme, it seems to fit with this latter connotation of a
detachable unit. Kokin Depo. at 19-20. See also claim that Mr.
Kokin “invent[ed] the world’s smallest micro-digital projector.”
see naka.ppt, final page at TTABVue # 80, p.20 of 138.
Opposition No. 91176027
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54 55 56
Interestingly, even after Mr. Kokin introduced mental
images of whales and A Space Odyssey, Mr. Kokin again agreed
(November 15, 2010) that the word “Pod” does indeed describe
the pod-like nature of the applied-for video players:
Q. Okay. If I can turn your attention to paragraph 8,
this declaration states as follows:
The design, staying true to the organic,
biomorphic, natural shapes of its predecessors
in the lab, turned into a pod-like device, with
its shape very closely resembling a pod. While
the other prototypes were being innovated,
sometime in mid-2002, as this last incarnation
was taking shape, the lab began calling it the
Video Pod, as a description of its shape and
function. A true and correct copy of the final
shape and design known as the Video Pod, with
use of the mark as intended, is attached hereto
as Exhibit 4.
Do you see that?
A. Yes, I do.
* * *
Q. When you used the term "pod" in that paragraph, what
were you referring to?
A. I was referring to its shape.57

54 Applicant’s Exhibit A, brochure_page_v6_copy.pdf, TTABVue
# 79, p.204 of 300.
55 Exhibit 3 at p.22 of 33 [TTABVue Entry # 79, p. 159 of 300].
56 Exhibit 3 at p.23 of 33 [TTABVue Entry # 79, p. 160 of 300].
Opposition No. 91176027
- 29 -
This Research & Development document of the “Video Pod”
(Revision 6) dated February 19, 2003, contained multiple
images of the “last incarnation” of the “Video Pod” not
unlike those images reproduced above.
Accordingly, we find that the evidence supports the
conclusion that the term “Video Pod” is merely descriptive
of a pod-shaped video player, and the applied-for term is
therefore unregistrable on the Principal Register absent a
showing of acquired distinctiveness. Inasmuch as applicant
has never used this mark in commerce for the claimed goods,
the “Video Pod” term cannot have acquired distinctiveness.
Accordingly, we sustain the opposition based upon Section
2(e)(1) of the Act, and registration is hereby denied to
applicant.
C. Alternatively, has opposer proven a likelihood of confusion?
In the interest of completeness, we will also consider,
in the alternative – should we be reversed on the issue of
descriptiveness – whether opposer has demonstrated a

57 Kokin Depo. of November 15, 2010, at p.38, of 33 [TTABVue
Entry # 79, p. 42 of 300], and Ex. B [TTABVue Entry # 79, p. 207
of 300]. In this testimony of late-2010, Mr. Kokin was
reflecting on his earlier declaration (early-2009) in opposition
to opposer’s first summary judgment motion.

Opposition No. 91176027
- 30 -
likelihood of confusion herein with applicant’s mark, which
we will presume to be highly suggestive.
1. Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
mark and the products covered by the registrations. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974).
2. Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion
under Section 2(d) of the Trademark Act. Our determination
must be based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
a. The fame of opposer’s marks
This du Pont factor requires us to consider the fame of
opposer’s mark. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection. A famous mark has
Opposition No. 91176027
- 31 -
extensive public recognition and renown. Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1897 (Fed. Cir. 2000); and Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods identified by the
marks at issue, “by the length of time those indicia of
commercial awareness have been evident,” widespread critical
assessments and through notice by independent sources of the
products identified by the marks, as well as the general
reputation of the products and services. Bose Corp. v. QSC
Audio Products Inc., 63 USPQ2d at 1305-1306, 1309.
Moreover, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
protection it receives, it is the duty of the party
asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007). Opposer introduced into the record
extensive evidence in order to establish the fame of its
mark.
Opposition No. 91176027
- 32 -
We recounted above a brief history of more than forty
years of successes associated with opposer. Among Apple’s
many successful products is the IPOD media player. Opposer
argues that as a result of extensive sales, advertising, and
unsolicited media attention, Apple’s IPOD mark and the
associated media player are recognized and associated
strongly with Apple -- both in the United States and
throughout the entire world.
Apple announced the IPOD music player on October 23,
2001, and sent out its first shipments of the product on
November 10, 2001. Initially, the IPOD was a portable music
player capable of storing and playing up to 1000 songs from
a pocket-sized device.58 The product was an immediate and
enormous success, and sales of IPOD media players increased
dramatically over time, as set out below.59

58 La Perle Depo. 41, Ex. 8; Opposer’s Not. of Rel. 1, Ex. 1 at
2, and Ex. 14.
59 La Perle Depo. 85-90; and Exs. 31-35; Opposer’s Not. Of Rel.
1 – See Ex. 1 at 23, Internet 20 of 87, TTABVue Entry # 63 (56 of
300); Ex. 2 at 25, Internet 19 of 84, TTABVue Entry # 63 (143 of
300); Ex. 3 at 28, Internet 30 of 122, TTABVue Entry # 63 (239 of
300); Ex. 4 at 31, Internet 32 of 115, TTABVue Entry # 64 (65 of
300); Ex. 5 at 54, Internet 54 of 97, TTABVue Entry # 64 (203 of
300); Ex. 6 at 42, Internet 44 of 128, TTABVue Entry # 64 (291 of
300); Ex. 7 at 41, Internet 43 of 98, TTABVue Entry # 65 (120 of
300); and Ex. 8 at 41, Internet 43 of 99, TTABVue Entry # 65 (220
of 300).
Opposition No. 91176027
- 33 -

Fiscal Year
[Ending Sept] iPod Units Sold iPod Revenue
2002 381,000 $ 143 million
2003 939,000 $ 345 million
2004 4,416,000 $ 1.306 billion
2005 22,497,000 $ 4.540 billion
2006 39,409,000 $ 7.676 billion
2007 51,630,000 $ 8.305 billion
2008 54,828,000 $ 9.153 billion
2009 54,132,000 $ 8.091 billion

On April 9, 2007, Apple announced that 100 million IPOD
media players had been sold.60 As of September 2010, some
250 million units of IPOD media players had been sold.61
Inasmuch as Apple’s annual SEC Form 10-K shows that opposer
realizes about 45% of its gross sales overseas, the units
and revenue in the United States would comprise more than
half of the volume shown above.62
The first IPOD released in November 2001 was primarily
a digital music playing device. The product has evolved
through the ability to store and display photos (October 26,

60 Opposer’s Not. of Rel. 1, Ex. 110.
61 La Perle Depo. 83-84; Opposer’s Not. of Rel. 1, Ex. 1 at 19-
20, 48, Ex. 2 at 18-19, 48, Ex. 3 at 30-31, 73, Ex. 4 at 32, 70,
Ex. 5 at 54 and 82, Ex. 6 at 44-45, 67, Ex. 7 at 43, 65, and Ex.
8 at 43, 66.
62 See footnote 30, supra.
Opposition No. 91176027
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2004)63 and having video capabilities (October 12, 2005).64
Over the last decade, Apple has released successive
generations of its IPOD device having ever-more
sophisticated functionalities such that it is now more
accurately characterized as a handheld digital content
device as opposed to solely a music player.65 The full line
of IPOD products include the IPOD CLASSIC, the IPOD NANO, the
IPOD TOUCH, and the IPOD SHUFFLE, having varying price points
and capabilities.66 The current suggested retail prices
vary between $50 and $400, with all but the lowest end IPOD
SHUFFLE device capable of playing video.67
Opposer has used its IPOD mark continuously since the
November 2001 launch of the media player.68 On each of the
over 250 million IPOD media players sold by the time the
record in this case closed, the IPOD mark always appeared on
the packaging and on the product itself.69 This product is
distributed online though opposer’s Apple Store, through

63 La Perle Depo. 50-51, Ex.13; Opposer’s Not. Of Rel. 1, Ex.
131.
64 La Perle Depo. 39, 49-50, Exs. 14 and 15; Opposer’s Not. of
Rel. 1, Ex. 132.
65 La Perle Depo. 39; Opposer's Not. of Rel. 1, Ex. 14, 102-
116, 131, 132.
66 La Perle Depo. 42-43, 49-50, Ex.13; Opposer's Not. of Rel.
1, Ex. 14 at 19-20, 48, Ex. 2 at 18-19, 48.
67 La Perle Depo. 49-50, 54-55, and Ex. 13.
68 La Perle Depo. 41-42, Ex. 8 and Ex. 13; Opposer’s Not. of
Rel. 1, Ex. 119.
69 La Perle Depo. 42.
Opposition No. 91176027
- 35 -
third-party distributors and through national retailers such
as Circuit City, Sears, Best Buy, Costco, Target, Amazon.com and
Wal Mart.70 Consumers are also able to purchase the IPOD
media player at Apple's brick-and-mortar stores. In fact,
there are now more than 230 such stores in the United
States.
The record shows that opposer has spent significant
amounts of money advertising and promoting its goods and
services under the IPOD mark, as seen below:

Fiscal Year
[Ending Sept]
Advertising
Expenditures
2001 $ 261 million
2002 $ 209 million
2003 $ 193 million
2004 $ 206 million
2005 $ 287 million
2006 $ 338 million
2007 $ 467 million
2008 $ 486 million
2009 $ 501 million

Although detailed advertising figures remain
confidential, we note that Apple’s sales of IPOD players
constituted 34% of net sales in 2007, 28% in 2008, and 22%
in 2009. Accordingly, we conclude that a large portion of

70 La Perle Depo. 39, 79-80, 83; Opposer’s Not. of Rel. 1, Exs.
Opposition No. 91176027
- 36 -
the above totals was devoted to promoting the IPOD media
player, as one of the company’s key products.71 Apple’s
advertising campaign has included regularly issued press
releases,72 outdoor billboards, posters and other outdoor
advertisements, as well as prominent advertisements in
popular magazines such as The New Yorker, Wired, Fortune,
Esquire, Newsweek, Time, Business Week, Sports illustrated,
Vanity Fair, Vogue, and Rolling Stone,73 commercials on
television networks such as ABC, NBC, MSNBC, MTV, ESPN and
others, and on Internet websites such as apple.com, the
Apple Store, and the iTunes Store,74 and has undoubtedly
reached a large portion of the United States public.
Apple’s IPOD media player has consistently attracted
widespread, unsolicited attention from national and local
media outlets. The dozens of articles appearing in national
publications that have been made a part of this extensive
record include excerpts from The Wall Street Journal, The

122-129.
71 La Perle Depo. 69-70, 85-86, 90-92, Ex. 2 at 2-3, Exs. 31-
35; Opposer’s Not. of Rel. 1, Ex. 1 at 48, Ex. 2 at 48, Ex. 3 at
73, Ex.4 at 70, Ex. 5 at 82, Ex. 6 at 67, Ex. 7 at 65 and Ex. 8
at 66.
72 Opposer’s Not. Of Rel. 1, Ex. 14, 102 to 116, 131 & 132.
73 La Perle Depo. 70-73, Ex. 25; Opposer’s Not. of Rel. 1, Ex.
141.
74 La Perle Depo. 46-47, 78-79, 81-83, Ex. 6; Opposer’s Not. of
Rel. 1, Exs. 119-121, 134, 136-137, 185-188.
Opposition No. 91176027
- 37 -
New York Times, Time, Newsweek, USA Today, Fortune, Business
Week, MacWorld and PC World.75
The unsolicited attention to the IPOD media player
started with its launch. Walter Mossberg praised the IPOD
media player in The Wall Street Journal.76 As sales of the
IPOD grew exponentially, the unsolicited media coverage kept
pace. For example, the May
12, 2003, edition of Fortune
magazine featured a cover
story on Apple’s success in
moving into the music
business, with the cover
photograph showing musician
Sheryl Crow standing with an
IPOD media player, and
Apple’s founder, the late
Steve Jobs, sitting beside
her listening to the IPOD through those iconic white
earbuds.77

75 Representative samples are found in Opposer’s Not. of Rel.
1, Exs. 143-182. See also Exs. 47-100.
76 “Apple Brings Its Flair for Smart Designs to Digital Music
Player,” The Wall Street Journal, November 1, 2001; La Perle
Depo. 44-46, Ex. 10, 79; Opposer’s Not. of Rel. 1, Ex. 149.
77 La Perle Depo. 47-49, Ex. 12; Opposer’s Not. of Rel. 1, Ex.
144.
Opposition No. 91176027
- 38 -
Several years later (June 27, 2005), the following
excerpt appeared in another Fortune magazine article
entitled “It’s iPod’s Revolution”:
“We Just Live In it,” author Andy Serwer
stated: “[i]t’s hard to recall any branded
recreational product that has carried the
cultural oomph that the iPod now has. The
Hula-Hoop was a fad … As for the Walkman, the
iPod’s mobile-music ancestor, it generated
massive sales. But it never impacted
behavior or peripheral markets quite the way
the iPod has.”78

Based upon the entire record, we find that opposer’s
IPOD mark is famous in the United States for purposes of
likelihood of confusion. The record shows that the IPOD
transformed Apple, changed the way hundreds of millions of
consumers interact with their music, and when the advent of
this device is combined with the availability of the iTunes
Store, has revolutionized the music industry itself. In
fact, applicant seems to concede the most critical point in
our likelihood of confusion analysis, namely, that the IPOD
mark is famous.79
b. Similarity of the marks
We turn then to the du Pont factor dealing with the
similarity or dissimilarity of the marks in their entireties

78 La Perle Depo. 47-48, Ex. 12; Opposer’s Not. of Rel. 1, Ex.
174.
79 Opposer’s Not. of Rel. 1, Ex. 205, at 6, and Ex 206, at 5.
Opposition No. 91176027
- 39 -
as to appearance, sound, connotation and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The test under this du Pont
factor is whether the marks are sufficiently similar that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
We find that applicant’s VIDEO POD mark is similar to
opposer’s famous, coined IPOD mark. The “Pod” component of
opposer’s famous mark was arbitrary upon adoption and after
years of widespread usage, the term “Pod” even moved into
the vernacular as a slang term used to refer to the IPOD
products.80 We have noted above the highly descriptive
nature of the word “video” when used in connection with
applicant’s intended goods. Otherwise, the VIDEO POD
designation incorporates the most prominent component of
Apple’s famous IPOD mark. Apart from Apple’s ownership of a
trademark registration for the mark POD alone for portable
and handheld digital electronic devices, the record does not
show third-party use or registrations for “Pod”-formative

80 Opposer’s Not. of Rel. 1, Exs. 46-100.
Opposition No. 91176027
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marks on similar electronic devices in International Class
9.81
As also noted above, when comparing the marks, the
extraordinary fame of Apple’s IPOD mark weighs heavily
against applicant, because “[a]s the fame of a mark
increases, the degree of similarity between the marks
necessary to support a conclusion of likely confusion
declines.” Starbucks US. Brands, 78 USPQ2d at 1750.
Accordingly, this critical du Pont factor favors a
finding of likelihood of confusion.
c. Relationship of the goods
A key part of applicant’s argument on likelihood of
confusion is that it has priority over Apple in the “field
of video projection.” Certainly, opposer cannot argue that
its IPOD devices had the ability to play videos on February
14, 2003. Nonetheless, in the context of the parties’
dueling claims of priority, opposer counters that video
projectors are within its natural expansion of trade. Under
this doctrine, the first user of a mark in connection with
particular goods possesses superior rights in the mark as
against subsequent users of the same or a similar mark for
any goods which purchasers might reasonably expect to

81 Not. Of Rel. 1, Ex. 213.
Opposition No. 91176027
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emanate from it in the normal expansion of its business
under the mark.
This Board has recently found that applying this
doctrine requires a specific analysis that often does not
appreciably add to our understanding of the relatedness of
the goods. Accordingly, we do not find it outcome
determinative that opposer may not have used its IPOD mark
on video devices in 2003. Rather, we choose to treat this
as part-and-parcel of the du Pont factor focused on the
relatedness of the goods. See General Mills Inc. v. Fage
Dairy Processing Industry SA, 100 USPQ2d 1584, 1598 n.28
(TTAB 2011).
Specifically, we find that the goodwill established by
Apple in the area of music players would carry over into the
area of video projectors. That is, the reasonably prudent
consumers familiar with opposer’s IPOD device in February
2003 – had they seen an electronic video device being sold
under VIDEO POD – would have confused its source. This
direction from audio to video was clearly not a distinct
departure from Apple’s digital media empire. Specifically,
the dozens of articles in this extensive record lauding the
iconic nature of the IPOD media player reinforce the idea
that Apple, throughout the tenure of the late Steve Jobs,
Opposition No. 91176027
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has been on the cutting edge of technology and consumer
trends.
From our vantage point, it is clear that in our digital
age, moving the capabilities of a device from simply audio
to audio and video is a natural extension of the technology.
Clearly, the record herein demonstrates that both the
channels of trade and classes of customers for audio players
and video display devices are the same. With the wonderful
benefit of 20:20 hindsight, adding digital photography and
then video to this audio device seems quite logical.
However, the question of what should be deemed to be
“natural” in the relevant trade in February 2003 is tricky
business. In order to protect its famous mark, it should
not be incumbent upon opposer to prove, counter-intuitively,
that in February 2003, before the sale of its millionth iPod
device, everyone with a digital musical player was
anticipating the arrival of a media device having the
capabilities (video and otherwise) of a much later
generation IPOD TOUCH — perhaps the 300 millionth media
device bearing the IPOD mark.
Rather, we find based on the entire record that the
goods identified in applicant’s “Video Pod” application are
Opposition No. 91176027
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highly related to the goods offered by opposer and its
licensees under the IPOD mark.
Applicant has admitted that Apple uses the IPOD mark
for portable and handheld media devices for both
entertainment and business purposes, and that indeed the
products are related.82 Applicant has admitted to “limited
compatibility” (e.g., connecting with correct fittings to
video-output capable devices). “The goods identified in the
VIDEO POD Trademark Application are, can or will be used in
connection with the handheld and portable media devices that
Apple promotes under the IPOD Mark … ”83
During the entire relevant time period covered by the
discovery and trial of this case, applicant was exploring a
number of related video display products (e.g., a lamp/desk
video and a StretchVision television) having explicit
docking capabilities for IPOD devices. As seen in
applicant’s continuing development of this concept between
2002 and 2010, when the trial record closed in this
litigation, applicant’s president concedes that applicant’s

82 Opposer’s Not. of Rel. 1, Ex. 206 (Response to Request for
Admission Nos. 4, 5, 9, 10 and 23) [TTABVue Entry # 68, 215, 217
of 295].
83 Opposer’s Not. of Rel. 1, Ex. 206 (Response to Request for
Admission Nos. 17 and 18) [TTABVue Entry # 68, 216 of 295]
Opposition No. 91176027
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projectors were to be designed to be compatible with Apple’s
IPOD media player devices.
Both opposer and competing third parties manufacturers
(e.g., TOSHIBA, DELL, POLAROID, etc.) have been using the
same mark with both video/movie projectors and handheld
audio/video players.84 Apple also licenses its IPOD mark to
its MFi licensees for use with applicant’s
precise goods, i.e., video projectors.85
Optoma EP-PK-101
Pico Pocket Projector
ViewSonic PJ258D
projector
SHOWWX Laser Pico
Projector

86
87
88

In fact, as seen above, it is possible that members of
the public could purchase applicant’s intended video

84 Opposer’s Not. of Rel. 1, Exs. 27-45.
85 La Perle Depo. 58-65, Exs. 18-22, Opposer's Not. of Rel. 1,
Exs. 138-140.
86 La Perle Depo., Ex. 16.
87 La Perle Depo., Ex. 21. We also note that Mr. Kokin
testified that he would think of ViewSonic as one of applicant’s
competitors for its video projector, and that “it’s a logical
combination of features” for such projector manufacturers to make
their products compatible with the popular IPOD Device. Kokin
depo. 62-63.
88 La Perle Depo., Ex. 22.

Opposition No. 91176027
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projector to be used in connection with Apple’s devices,
including the IPOD media player.
Accordingly, even without finding a strict overlap of
the goods on which opposer has a clear priority, and without
resorting to a finding of natural expansion of trade to
expand the scope of its priority claim, we find, based only
upon the close relationship of the goods, this critical
du Pont factor also favors a finding of likelihood of
confusion.
d. The similarity of trade channels
Based on this entire record, we must presume that the
goods identified in applicant’s identification of goods will
travel in identical channels of trade as do Apple’s goods
and services. See Starbucks US. Brands, 78 USPQ2d at 1751;
Hewlett-Packard, 62 USPQ2d at 1005. Furthermore, applicant
has admitted that its product was intended for sale in
“traditional consumer electronic oriented distribution and
retail channels.”89 Applicant identified Best Buy, Target, Circuit
City and Wal Mart as being among the retail stores through
which it wanted ultimately to sell its VIDEO POD products.
This would place them quite close to Apple’s IPOD products.90

89 Opposer’s Not. of Rel. 1, Exs. 208-209, Interrog. No. 4.
90 Opposer’s Not. of Rel. 1, Exs. 194, 195 at 5; Kokin Depo.
40-41.
Opposition No. 91176027
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We also find that as to the conditions under which and
buyers to whom sales are made, these respective items would
be sold to the same class of ordinary consumers.
Accordingly, these critical du Pont factors also favor a
finding of likelihood of confusion.
e. Inherent strength of IPOD mark
As to the du Pont factor focusing on the number and
nature of similar marks in use on similar goods, as we saw
above in our discussion of the fame of opposer’s IPOD mark,
Apple’s IPOD mark is a conceptually strong mark deserving of
broad protection. This is a coined, fanciful mark as
applied to Apple’s goods and services, making it entitled to
broad protection. See Stork Rest. v. Sahati, 76 USPQ 374
(9th Cir. 1948). There are no indications that third parties
use the word “POD” in connection with similar electronic
devices. Furthermore, Apple has made consistent efforts to
protect the exclusivity of its IPOD mark. We find nothing
in this extensive record suggesting that Apple does not
enjoy exclusive use of its IPOD mark with the relevant goods
in International Class 9.91

91 Opposer’s Not. of Rel. 1, Ex. 213; La Perle Depo. 66-67, Ex.
23.

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f. The variety of goods on which IPOD is used
The evidence of record show that over the years, the
IPOD mark has been used on a growing family of products.
Over almost a dozen years, this famous mark has appeared on
several generations of devices sold to hundreds of millions
of consumers.
Conclusion on Likelihood of confusion
In the event that the VIDEO POD mark should be found
not to be merely descriptive, our findings above that
Apple’s IPOD mark is inherently strong and most famous, that
the respective marks are similar, that the IPOD mark has
been used on a family of products and related accessories,
that these respective goods are related and would travel
through some identical trade channels to the same classes of
ordinary consumers, on balance, support the finding that the
proposed use of VIDEO POD on applicant’s goods would result
in a likelihood of confusion with the IPOD mark.
Decision: The opposition to the registration of the
VIDEO POD mark is hereby sustained under both Section
2(e)(1) and Section 2(d) of the Lanham Act.