The U.S. Patent & Trademark Office has rejected Apple’s application for a trademark on the term Multi-Touch, which apple introduced when it announced the iPhone. The application had already been rejected by an USPTO examiner, and on Friday, September 23rd, the Office’s Appeals Board upheld that decision.
Apple introduced the term in January 2007 when then-CEO Steve Jobs unveiled the iPhone, and the company filed for a trademark on the term shortly thereafter. In examining the trademark application, a USPTO attorney found that the term is a “highly descriptive” term, but fell short of passing the litmus test needed for gaining trademark protection for Apple.
Apple appealed that ruling on the basis that the term had acquired secondary meaning. Apple presented evidence to that effect, but the Appeals Board wasn’t swayed.
According to the ruling, which was posted to ScribD by MacRumors, the appeals board cited an earlier ruling that said, “the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.”
“We find that ‘multi-touch’ not only identifies the technology, but also describes how a user of the goods operates the device,” the Appeals Board wrote in its ruling. “Based on the evidence discussed above, as well as other evidence in the record, we agree with the examining attorney that MULTI-TOUCH indeed is highly descriptive of a feature of the identified goods.”
In examining whether or not the term has attained secondary meaning, the Board wrote that while Apple claimed it used the term in user manuals, the company didn’t submit any evidence of that. There was also no evidence the term was used in marketing materials or packaging.
“Thus, in view of the foregoing,” the ruling stated, “and given the highly descriptive nature of the designation MULTI-TOUCH, we would need substantially more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant’s services.”
Part of the original examiner’s findings included many examples of the term multi-touch or multitouch being used to generically describe the concept of a touchscreen interface that would accept two or more touches to perform different tasks on a device.
In some ways, Apple’s trademark application essentially fell victim to the company’s success at introducing a multitouch smartphone to the world. For years, Apple was the only company offering a multitouch interface—for instance, Android didn’t feature multitouch gestures until the release of Android 2.0 in 2009. Apple’s name for the concept became the de facto standard to which everyone matched their expectations.
In other ways, the Board appears to be saying that if Apple had been more aggressive in promoting the term it was trying to trademark, that it might have been granted.