Last week, United States District Court for the Southern District of New York granted Apple’s motion for summary judgment and dismissed a claim of trademark infringement brought against Apple by Black Tower Press.

Black Tower alleged that Apple infringed on its use of “ibooks” because Black Tower and its predecessor had been publishing books under the “ibooks” brand since 1999.  Apple’s “iBooks” software has allowed users to purchase and read electronic books and content on its devices since 2010.  However, Black Tower never actually obtained a trademark for its brand from the U.S. Patent and Trademark Office, and Apple successfully trademarked “iBooks” in 2010.  Furthermore, Black Tower did not present sufficient evidence that would support finding that Apple’s use of “iBooks” would be confusingly similar to Black Tower’s use under the 8 factor trademark infringement test.

Apple prevailed in part because Black Tower never published its trademark.  Additionally, Apple’s use of the term “iBooks” describes its software for purchasing and delivering electronic reading material.  The court found nothing to suggest from Apple’s use of “iBooks” that one would come to the conclusion that Apple entered the publishing business.  Furthermore, all content delivered through the “iBooks” software bears the respective publisher’s name.  Therefore, Black Tower failed to produce evidence that Apple’s “iBooks” was confusingly similar to Black Tower’s “ibooks” publishing brand.

If Black Tower had gotten its trademark published originally, it would have at least given them a better chance at making their claim.  Black Tower would have been entitled to the benefits of trademark publication.  An experienced trademark lawyer would have made a difference in publishing their trademark with sufficient clearance to ensure protection of their brand.

Avoid placing yourself in the losing situation like Black Tower.  The experienced trademark lawyers at Revision Legal can ensure that your trademarks are published and protected.  If you have trademark concerns, contact us today.