In a 71-page opinion, District Judge Denise Cote gave chapter and verse of the ways in which plaintiffs failed to establish triable issues of fact in their "reverse confusion" trademark claim against Apple Inc. for its use of "iBooks" for its software ebook reading app. J.T. Colby & Co. v. Apple Inc., No. 11-cv-4060 2013 WL 1903883 (S.D.N.Y. May 8, 2013), aff'd in unpublished opinion (2d Cir. No. 13-2227-cv, Sept. 29, 2014).
Plaintiffs are small, independent book publishers who used "ibooks" as an imprint for hard copy books and ebooks. Plaintiffs sought to protect their unregistered mark under Section 43(a) of the Lanham Act.
Apple conceded that plaintiffs were senior users of the mark but claimed that it was unaware of plaintiffs' mark when Apple began using it. Apple sought summary judgment after discovery, arguing that plaintiffs' mark was merely descriptive and thus unprotectable and that there were no triable issues of fact supporting likelihood of confusion with Apple's mark.
Judge Cote agreed. She granted summary judgment dismissing plaintiffs claims, first finding that plaintiffs' was merely descriptive, and no triable issues on likelihood of confusion, applying the eight-factor test in Polaroid Corp. v.. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961).
The 2d Circuit's unpublished decision affirmed Judge Cote's summary judgment for Apple. It agreed that plaintiffs had failed to establish triable issues as to likelihood of confusion. It thus found it unnecessary to address whether plaintiffs' mark is protectable at all.
The 2d Circuit concluded: "[Apple] does not publish books and the Plaintiffs do not create a marketplace to purchase them; their products do not directly compete, serve a similar purpose, or appear in the same channels of commerce." Slip Op. 4-5. The Court also rejected plaintiffs contention that there were triable issues as to Apple's good faith in adopting its mark.