August 11th, 2006
Apple's Threatening Letter regarding use of "POD" in a trademark
The following letter was sent to Carolee Ellison on July 27, 2006 by an intellectual property law firm that represents Apple Computer. Carolee and Dave Ellison own Mach 5 Products. The company designs games and technology for the arcade game industry. The letter claims that one of Mach 5’s products — the Profit Pod — infringes on Apple’s iPod trademark. The product looks nothing like an iPod and does nothing that’s remotely similar to what an iPod does. For the blog post relating to this letter, go here.
Re: Infringement of Apple’s Trademarks: PROFIT POD (Serial No. 76/589,480)
Dear Ms. Ellison:
We represent Apple Computer, Inc. in intellectual property matters.
Apple recently learned that Mach 5 Products filed an ITU trademark application for PROFIT POD (Serial No. 76/589,480), on April 30, 2004, for "infrared data transmission and collection system, namely an infrared data transmission and collection system for amusement games comprised of a meter for counting input signals from switches, a processor for processing the signals so that they may be transmitted by an infrared signal, an infrared signal generator and software for programming hand held computers that can detect and process infrared ignals" in Class 09. Our subsequent investigation revealed that Mach 5 Products is promoting the PROFIT POD product on its website at www.mach5products.com. As set forth below, Apple is concerned that the application for and use of the PROFIT POD mark infringes its trademark rights and dilutes Apple’s famous IPOD brand. As the deadline to oppose the PROFIT POD application is July 27,2006, we have filed a 90-day request for an extension of time to oppose the application to provide us with time to try and resolve this matter privately.
Apple has used its IPOD mark since at least as early as October 2001. Since that time,the IPOD mark indicates to consumers that portable electronic devices and related goods and services bearing those and similar marks originate from or are sponsored by Apple. Apple’s extensive promotion and use ofthe IPOD mark has resulted in strong consumer association of
that mark with Apple.
Apple owns, inter alia, U.S. Trademark Registration Nos. 2,835,698, 2,781,793, and 3,089,360 for its IPOD mark for portable and handled digital electronic devices, as well as several pending U.S. applications for the IPOD mark. Apple has filed trademark applications for IPOD in more than one hundred other jurisdictions worldwide and has already obtained registrations covering more than fifty international jurisdictions, including Canada, Mexico, China, Japan, and the European Community.
Apple considers its trademarks to be among its most valuable intellectual property assets. In sum, Apple has expended a great deal of time and money to build up considerable worldwide recognition and goodwill in its marks. Apple’s rights are protected by federal, state, and foreign laws. Apple aggressively polices its trademark rights in order to protect itself and its consumers.
We believe there is confusing similarity between Apple’s IPOD mark and the PROFIT POD mark. PROFIT POD is a POD-formative mark and incorporates a substantial portion of Apple’s IPOD mark. The products are likewise related. Both devices receive and transmit data and are used with computers, both are used in connection with video games, and both have other similar components. Moreover, it has not gone unnoticed that, like Apple’s IPOD device, the PROFIT POD product is a small, flat, round corned rectangular device with a display screen. In addition to the likelihood of confusion between the products, because Apple’s mark is famous, it is entitled to protection from dilution attributable to the PROFIT POD mark.
Accordingly, we must ask that Mach 5 Products immediately abandon the pending application for PROFIT POD, agree to cease all use ofthe PROFIT POD mark and not to use or file any other applications for similar marks in the U.S. or elsewhere. Provided that full cooperation is forthcoming, Apple is willing to provide Mach 5 Products with a reasonable time in which to phase out use of the product.
Apple is hopeful that this matter can be resolved expeditiously and amicably. Please contact us within ten (10) days from the date of this letter to provide us with Mach 5 Products’response. Nothing in this letter should be construed to limit Apple’s rights or remedies.
Very truly yours,
Jennifer D. Arkowitz
Townsend, Townsend, and Crew LLP
JDA/dhy
