Q&A with Margaret Millikin
Apple seeks to protect property with trademark of store design
Q: Why did Apple register its store design as a trademark?
A: Apple understands intellectual property (IP) is a valuable asset and acts strategically to protect the IP that it owns or controls. Trademarks, as an asset class of IP, identify one's goods and services and distinguish them from the goods and services of others. Almost anything can serve as a trademark, even smells, sounds and colors. The color red is registered for Christian Louboutin shoe soles. The Pillsbury doughboy giggle is a federally registered trademark. Even the scent of plumeria blossoms for embroidery thread has been registered as a trademark.
The design of a building can serve as a distinctive trademark or “trade dress.” This is nothing new. Many will remember the recognizable design of the rectangular Fotomat buildings with tiered, trapezoidal rooflines. Fotomat registered its distinctive building design as a service mark more than 40 years ago (No. 911388). Microsoft registered its retail store design (No. 4036534) in 2011. Apple believes that its store design is distinctive and sought protection for it. The U.S. Trademark Office agreed and registered the store design last month for Apple's retail store services.
Q: What elements are included in the registration?
A: The registration is a picture of the Apple retail store design and layout. It describes in detail the glass paneled facade, the modern recessed lighting regime, the tiered and stacked shelving arrangements and the display table configuration. (See Reg. No. 4277914).
Q: How will the registration be enforced in the U.S. and abroad?
A: The registration may be enforced in the United States and will receive the benefits accorded all federally registered marks. The registration creates a legal presumption of Apple's ownership of the mark and its exclusive right to use the mark nationwide in connection with retail store services. Apple may use the registration to prevent competitors from using confusingly similar designs for competitive retail store services, sue in federal court and receive statutory or punitive damages for willful infringement.
A U.S. registration may be enforced only in the United States. However, the U.S. registration may serve as a basis for registering the same mark in other countries.
Q: What is the penalty for violation of the trademark?
A: A successful plaintiff may be entitled to a variety of remedies for trademark infringement, including an injunction against further use of the infringing mark to prevent ongoing damage. Money damages may be awarded and are based upon a variety of factors, such as the amount of the defendant's profits, a reasonable royalty, the plaintiff's damages and even triple damages where the infringement is willful.
Wise entrepreneurs will conduct trademark clearance searches before adopting a new mark. These clearance searches also are useful before organizing a new corporation or LLC since a business name may infringe an existing trademark or service mark.
PAULA BURKES, BUSINESS WRITER