Apple v. ZeroDensity was a civil action in the Eastern District of Virginia in which Apple appealed a TTAB ruling. ZeroDensity, which had applied to register the marks REALITYHUB, REALITY ENGINE, and REALITY KEYER, filed an opposition to two of Apple’s trademark applications, REALITY COMPOSER and REALITY CONVERTER.
Alleging that Apple’s marks were merely descriptive, ZeroDensity won at the TTAB. Apple appealed to the Eastern District of Virginia. For the appeal, Apple hired four expert witnesses, each testifying to the different issues regarding the distinctiveness of their marks.
Consumers, computer programmers, and linguists were surveyed by the experts and, not surprisingly, they supported Apple’s argument that these trademarks were not merely descriptive. Moreover, they testified, relevant “consumers” don’t see “reality composer” or “reality converter” as denoting anything other than Apple’s products — and no dictionaries tie the words together.
ZeroDensity’s only new argument was that it was unfair to allow Apple to introduce new evidence. ZeroDensity didn’t offer any new evidence of its own and — most problematically – didn’t hire its own expert witnesses to refute Apple’s expert witnesses.
The court addressed ZeroDensity’s assertion that it was unfair for Apple to introduce new evidence. The court noted that a district court provides a “de novo” review of a TTAB decision and has the prerogative to accept new evidence. It noted that the Federal Circuit, another option for appealing a TTAB decision, relies more heavily on the original proceeding, but Apple had not chosen to take that path. (With good reason…)
The court went on to reverse the TTAB, finding that REALITY COMPOSER and REALITY CONVERTER were not merely descriptive as the defendant alleged. Notably, Apple had used these trademarks in the same font and style as its other trademarks, and such consistency suggested the marks were not used descriptively. Also, no third parties had used either of the two disputed marks, as one would expect from a merely descriptive mark. Further, the court said that by combining REALITY with each of COMPOSER and CONVERTER, the marks defeated the allegation of descriptiveness.
When reviewing an opposition, the TTAB only examines what is in front of it in terms of describing the scope of the trademarks. It doesn’t care a great deal about how the trademarks might be used in reality, like a court would. In this case, Apple got four expert witnesses to draw a picture of a reality in which people don’t see the REALITY COMPOSER and REALITY CONVERTER as denoting anything other than Apple’s products.
The lessons from this case are reminders that the TTAB does not have the last word, especially if you can afford to hire multiple expert witnesses to address matters that were ruled to your detriment. Also, using trademarks consistently helped to support Apple’s claims of secondary meaning. Finally, it’s best not to let your adversaries’ expert witnesses testify without hiring your own.
