Which Fruits are Off-Limits?

Which Fruits are Off-Limits?

Sally Fruits

Photo by Pineapple Supply Co. (Unsplash)

Sally Yoon is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Given the power of Apple’s brand, it is no surprise that they actively challenge trademarks that resemble their own to protect the dilution of their trademark. But this raises some key questions: Should Apple have the right to challenge all trademarks relating to an apple? What about fruits that bear a resemblance to an apple? In its act of trademark enforcement, Apple seems to be casting the net as widely as possible. According to the Tech Transparency Project, a research initiative seeking to hold large technology companies accountable, Apple filed 215 trademark oppositions, nearly two-thirds more than all the trademark oppositions of Microsoft, Amazon, Facebook and Google.

Apple’s numerous filings are targeting smaller businesses and nonprofits that are seemingly unrelated to the company’s brand, including but not limited to “an organization that supports families of children with autism, a school district in Appleton, Wisconsin, and an online test prep service for nursing students”.

The USPTO defines a trademark bully as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”  Apple has taken issue with individuals and businesses trademarking anything related to apples, and even other fruits. Those targeted include individuals and businesses providing services that Apple does not, such as medical care providers. According to the New York Times, Apple also filed an opposition to the trademark of Stephanie Carlisi’s stage name “Franki Pineapple”, as they were “both the names of fruits, and thus convey a similar commercial impression”.

Apple’s argument against these companies in opposition filings mainly emphasizes Apple’s  significant brand value – as a business grows, so do its efforts to prevent the brand’s dilution. Many smaller parties are unable to respond to opposition because of the costs involved; it can often seem like they have no choice at all. With no opposing voice loud enough to fight back, arguments emphasizing brand values only encourage large companies to continue to enforce their trademarks aggressively and boundlessly.

However, brands attached with the term “trademark bully” can face negative consequences and be reprimanded by the courts for filing “weak” cases. In 2016, Louis Vuitton’s inability to pass off My Other Bag’s parodical products as a “joke” led to sour reactions from judges and professors alike. In the ruling, the district judge stated that “[i]n some cases … it is better to ‘accept the implied compliment in [a] parody’ and to smile or laugh than it is to sue”.  For this reason, trademark enforcement can be seen as a double-edged sword.

Sally Fruits 2

Image from United States District Court for the Southern District of New York

In the media, world-famous brands are often vilified for their trademark enforcement efforts, and infringers are sympathized with. Still,  many companies are simply trying to protect their brand’s dilution. Clarifying the thresholds for depreciation of value and distinctiveness of trademarks would be beneficial to ensure that smaller businesses and individuals are not silenced by nets cast too widely and prevent companies from enforcing their trademarks over-aggressively and falling victim to the double-edged sword of trademark enforcement.