After a nearly three-year review of 850 pages of supporting materials, the U.S. Patent and Trademark Office (USPTO) has granted trademark status to Apple’s retail store design, offering the company some measure of protection against copycat competitors. The approval came despite two application rejections by the government agency, including one that oddly stated the store design wasn’t “inherently distinctive.” In both cases Apple was able to submit additional materials and drawings that eventually convinced the USPTO examiner to issue a trademark certificate this past week. Obtaining trademarks is a common practice among retailers and, in fact, Apple’s trademark application included trademarks granted to several other retailers to prove the uniqueness of its own storefronts. The design Apple submitted for trademark status was of the so-called V2.0 mall store that features glass windows framed by stainless steel panels, topped by a back-lit Apple logo, stone floors, interior stainless steel walls and wood display tables. The Columbia (Md.) retail store was the first to qualify for the trademark, opening on September 23, 2006.
Download the entire package (pdf, 181 Mb) of trademark application documents, the USPTO correspondence with Apple and the final approval documents.
Apple’s retail chain generally existed without competition for its first 10 years. But in mid-2009 Microsoft announced it would open a chain of retail stores, and several other companies have begun to embrace retailing as a way of promoting—if not selling—their products. Many of the competitors have re-used some elements of Apple’s store design, although arguably those elements could be considered standard in the industry and not an infringement on Apple’s trademark.
The first 30 or so Apple retail stores were designed with black-coated steel storefronts, and back-lit Apple logos on either side of a single or double entrance. Later stores featured a narrow frame of bead-blasted stainless steel or—very few—with stone exterior walls. Inside, early stores had wood floors, frosted glass partitions and non-illuminated wall graphics. But in September 2006 Apple introduced V2.0 of the interior design, featuring stainless steels walls, back-lit wall graphics and stone floors. It’s this latter design that Apple has trademarked.
Apple applied for the store design trademark on May 10, 2010, including a drawing and the following text description:
Five months after Apple submitted its application, the USPTO sent back a letter refusing the trademark, and stating, “The applied-for mark is not inherently distinctive because the mark is not described as having any particular inherently distinctive features.”
Apple then submitted 122 more pages of supporting materials, including the results of a customer survey (pdf), affidavits from ordinary store visitors describing the stores’ distinctive features, and print-outs of various Web stories about the stores (including by ifoapplestore.com). The company also submitted a new drawing depicting the store elements being trademarked.
The survey consisted of 180 interviews conducted at nine locations, mostly malls where Apple does not have a retail store. Those interviewed were shown photographs (without logos), and asked if they recognized the company. Of those interviewed, 43 percent recognized the store as belonging to Apple, while 49 percent had no answer. Another eight percent of respondents “guessed Apple” or mentioned other companies.
The survey results were directly related to the respondent’s age: just 13 percent of those over 66 years-old correctly recognized the store as Apple, while 53 percent of those from 18 to 25 years-old recognized it. Among those who recognized the store, respondents mentioned the key elements as the large windows, table layout, openness of the interior and the wall graphics.
The supporting additional material included copies of trademark applications from various other companies, including the Snap, Crackle and Pop characters from Kellogg Company (1997), the Colonel Sanders facial logo from Kentucky Fried Chicken (1966) and the Jolly Green Giant character from 1965. Copies of several other store design trademarks were attached, including Forever 21, Microsoft, Chipolte Mexican Grill, and even the Spearmint Rhino “adult cabaret” chain.
Apple’s attorneys also included print-outs from various Web stories about Apple retail store grand opening, showing the crowds that have stood in line to enter the stores.
Despite all the additional documentation, in August 2011 the USPTO again refused the application, saying the drawings didn’t show the entire applied-for mark. “The specimen consists of a photograph of the applicant’s storefront,” the USPTO wrote. “However, the photograph is cropped so that the vertical panels appearing on the sides of the storefront are not visible.” The USPTO also complained that the two display windows on the storefront drawing were, “filled with two large advertising displays, and the store itself filled with customers; these displays and customers hide and/or obscure salient features of the mark claimed by the applicant.”
The USPTO also stated, “The current description of the mark is extremely vague. Applicant must submit a new description which explicitly states which features are being claimed as part of the mark and which are not.” They requested another version of the drawing, and asked that it show only the pertinent parts of the proposed mark, not interior features like stools, display shelving or tables that are considered standard retail items.
On February 12, 2012 Apple officially changed attorneys handling the trademark application. Lisa Widrup, one of the company’s in-house patent and trademark attorneys, was replaced with the Atlanta-based firm Kilpatrick Townsend and Stockton on all the USPTO forms. It’s not clear why the change was made, although the growing complexity of the application could provide the answer.
On February 27, 2012 Apple submitted 681 more pages of documentation in support of its trademark application, including many pages of storefront photographs. Apple argued that many other companies had successfully trademarked store designs, but had not been required to eliminate various standard elements from their drawings. The USPTO immediately went back to work reviewing the materials.
Both objections added time to the review process. But in one letter to Apple the USPTO apologized for internal delays that lengthened the usual time for the trademark review.
Finally, in April 2012 the USPTO finished its review and notified Apple that its application has been approved. The entire package of materials and the trademark certificate was then formally posted on January 22, 2013.
Update: In September 2013 Apple applied for a design trademark in Europe, but the application was denied because the design was “not distinctive.” After appeals, the Court of Justice of the European Union ruled the store design could be trademarked.