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It’s Apple vs. Startup in Faceoff Over Who Can Use Fruit Logos

Sept. 10, 2020, 9:30 AM

Apple Inc. says even if consumers recognize the difference between an apple and a pear, in trademark law they’re not apples and oranges. And it could cost a five-person startup tens of thousands of dollars to fight that logic.

Apple is opposing federal registration of food prep app Prepear’s logo as a trademark, arguing the green pear-with-leaf logo “readily calls to mind” its iconic bite-out-of-an-apple logo.

Allowing Prepear’s registration would confuse consumers and cause “dilution by blurring"—basically make Apple’s trademark less distinctive—the tech giant says in its filing with the U.S. Patent and Trademark Office. But Super Healthy Kids Inc., which runs Prepear, said the logos look nothing alike.

Trademark disputes are difficult to resolve quickly because they hinge on factors specific to each case, such as strength of the trademark, similarity of the goods, and examples of times when consumers were confused. That means large companies like Apple can launch expensive legal battles—even on small companies with that may have strong cases.

Prepear logo

Several lawyers not affiliated with either company and interviewed by Bloomberg Law agreed with Prepear, including law professor Mark McKenna of the University of Notre Dame, an expert in trademark law.

“Apples aren’t pears, and there are plenty of other companies that use fruits,” McKenna said. “I don’t see how Apple can possibly win that. Not all fruits would impair distinctiveness. Otherwise Apple owns the entire field of fruit.”

‘Stand Up to Bullying’

But merits aside, Apple—among the world’s richest brands and valued at some $2 trillion—has used its overwhelming financial heft to thwart dozens of applications for fruit-shaped or apple-mentioning trademarks, Prepear said.

“Everything is designed to make it as onerous as possible so we’ll just drop out and walk away,” said Russell Monson, who started Prepear with his wife, Natalie. He estimated opposing Apple in this registration fight would cost the company at least $50,000 in legal fees.

The median cost of a full opposition lawsuit is $100,000, with an average of $164,000, according to an American Intellectual Property Law Association report.

Apple said it offers “identical and/or highly related goods and services” to Prepear under its trademarks, pointing to its registrations covering health care, nutrition, general wellness, and social networking. Consumers “will conclude” Prepear is associated with Apple upon seeing the pear logo, it said.

But “no one has walked into an Apple store and asked what’s for dinner, and we haven’t had anyone ask us to buy a computer or phone,” Monson said. “We can’t have them bully every small business. We teach our kids to stand up to bullying.”

Apple said it tried to work with Prepear and offered to cover its costs including legal expenses and more. A spokesman declined to elaborate and otherwise declined to comment for this story.

Discovery Phase

The case has moved on to the discovery phase before the Trademark Trial and Appeal Board, and Prepear submitted its first batch of information to Apple on Aug. 27, Monson said. After discovery, briefings are tentatively due in a year, with a request for an optional oral hearing in October 2021.

Registration isn’t required to establish rights, which are conferred upon use in commerce. So Prepear could continue to use its logo indefinitely even without registration—unless Apple were to sue in federal court and secure an injunction.

Apple logo

But registration provides benefits—including a legal presumption of valid rights in court—which the startup won’t enjoy without surviving Apple’s Trademark Trial and Appeal Board challenge.

“It may be closer than people think,” said trademark attorney Jason Rosenberg of Alston & Bird LLP.

Rosenberg said he wouldn’t call Apple’s opposition to the Prepear logo “trademark bullying,” and noted that a plaintiff’s trademark strength is usually the most important factor in a case like this.

Apple’s commercially and conceptually strong logo would work in its favor, especially in the dilution case, Rosenberg said.

‘Multifactor Test’

The subjective, case-specific, and multifactor nature of a consumer confusion analysis makes trademark conflicts difficult to litigate quickly or cheaply, McKenna, the Notre Dame professor, said. Apple’s claim of “dilution by blurring”—a concept in trademark law that can limit the use of logos that sap the distinctiveness from “famous” trademarks—only adds complexity because it doesn’t require consumer confusion the way an infringement claim would.

Dilution claims allow companies with truly famous trademarks to block marks that share similar attributes or concepts and could make their mark stand out less in the broader world of trademarks.

Letting such marks onto the registry would give future applicants evidence undercutting how distinctive the famous mark is.

But Apple is seemingly using the legal system to try to keep the register clear of many other fruit marks, trademark attorney Michael T. Smith of Birch Stewart Kolasch & Birch LLP said.

And the complex nature of the analysis means that “once a company takes a scorched-earth approach, there’s not much you can do” to avoid costly litigation, Smith said. “They’re clearly trying to bludgeon this company to death.”

Other Fruit Fights

Prepear isn’t alone. In the last year Apple also opposed trademark registrations for Appleton Area School District in Wisconsin, and autism charity 3.14 Academy Inc. It blocked education tech company Pear Deck Inc.'s cartoonish pear logo (before allowing registration of a similar logo with the leaf pointed a different direction). Joan’s Apple Bakery abandoned its word-mark application after an Apple opposition in 2019.

Apple also opposed trademarks for musical acts Candy Apple Blue and Franki Pineapple this year, arguing consumers would assume an affiliation.

Candy Apple Blue, a brother-sister indie synth-pop duo, is fighting back, stressing that Apple made money selling and streaming the music on its platform for years before their opposition last November.

“This is more than we can really afford, but what are we supposed to do?” band member Carly Emerick said. “Walk away form 10 years of work?”

Opposition to Opposition

Launched in 2016, Prepear provides recipes, meal prep tools, online grocery ordering, and food blog hosting services. A trademark examiner cleared its logo in late 2019, finding no clear conflicts and moving it to the stage where others can object.

Apple’s notice of opposition filed this March cited the “minimalistic fruit design with a right-angled leaf” of the Prepear logo.

Apple hasn’t sent a cease-and-desist letter or interfered with Prepear on its app store, said Monson. Initially he said he thought Apple would be receptive to Prepear’s case and the startup’s willingness to make minor tweaks.

But after getting a discovery request Prepear decided to make the conflict public in an Aug. 7 Instagram post and launched a Change.org petition, which has more than 230,000 signatures, to pressure Apple to drop its opposition.

Even Rosenberg, the most optimistic about Apple’s legal standing among 10 lawyers who provided feedback to Bloomberg Law on merits of the case, said the bid “seems a bridge too far.”

“I still think Prepear wins,” Rosenberg said.

Julia Anne Matheson, a partner in the trademark group of Potomac Law Group PLLC who has represented major companies in trademark litigation, called Apple’s opposition to Prepear “massive overreaching.”

“I think it’s absurd,” Matheson said. “There are so many times when trademark owners are called bullies when what they’re doing is actually appropriate to enforce their rights. This is not one of those examples.”

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Gregory Henderson at ghenderson@bloombergindustry.com; Renee Schoof at rschoof@bloombergindustry.com; Keith Perine at kperine@bloomberglaw.com

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