Alice Xie is an IPilogue Writer and a 1L JD Candidate at Western University’s Faculty of Law.
Tech giant Apple has recently filed a lawsuit against the United States Patent and Trademark Office (“USPTO”) and Director Kathi Vidal over the Office’s refusal to register Apple’s “SMART KEYBOARD” trademark based on genericness. A quick search on the USPTO’s trademark database shows that Apple first filed the trademark registration for SMART KEYBOARD back in December 2015 as an iPad Pro accessory. The USPTO rejected the application in 2018, and the Trademark Trial and Appeal Board (“TTAP”) upheld this decision in 2021. Apple is now appealing in the US District Court for the Eastern District of Virginia.
A string of refusals
After Apple amended their “SMART KEYBOARD” application multiple times, the USPTO’s final decision was a refusal of the mark because it was a generic term for technologically advanced keyboards for mobile digital devices. The “generic” ground in trademark law refers to a description of an entire type of product or service that fails to carry out the proper function of a trademark to distinguish one product or service from another. Generics cannot have trademark protection.
In 2021, the TTAP reviewed and upheld the refusal, prompting Apple to put forth a narrow identification description of the mark and argued that the “SMART KEYBOARD” is an “accessory for a handheld mobile digital device, namely a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard.” The TTAP rejected Apple’s narrow identification. After evaluating relevant evidence, the TTAP concluded that prospective purchasers understanding the term SMART KEYBOARD to refer to a genus of goods, namely technologically advanced keyboards for mobile digital devices. SMART KEYBOARD is thus generic and cannot become a trademark.
Apple is not giving up
Apple then turns to a US district court to appeal the USPTO and TTAP’s decisions. Apple makes a number of arguments to advance the distinctiveness of the mark. Apple, citing USPTO’s past approvals, points out that the Office has granted registrations to hundreds of trademarks that consist of “smart” with another word in the technology space. The successful registrations include Apple’s own marks like SMART COVER, SMART CASE, SMART CONNECTOR, and SMART FOLIO. Apple also highlights that competitors and the press use “wireless keyboard case” or “Bluetooth keyboard stand” in order to describe tablet cases with keyboards. Apple argues that this is a sign that they, along with consumers, associate the phrase “smart keyboard” specifically with Apple. Additionally, Apple argues that its use of SMART KEYBOARD has been substantially exclusive since the product’s release seven years ago, which exceeds the five-year period that courts typically consider to be a sufficient demonstration of acquired distinctiveness. Apple asks the district court to require USPTO to approve its SMART KEYBOARD mark registration.
A ruling against Apple would uphold the bar for genericness in trademarks and, in particular, for marks that combine the term “smart” with a generic product. On the other hand, if the Court rules in Apple’s favour, the decision can inform the flexibility of a trademark in being considered generic or distinctive. As technology rapidly develops, the common understanding of the term “smart” may have changed from when smart technology first emerged. It is important to highlight current or recent evidence when trademark owners in the technology space are registering marks that are susceptible to refusal based on genericness.