Logo Spat Pits Apple vs Big Apple

April 4, 2008 — -- The Big Apple has a new logo, and Apple says: Drop dead.

At issue is the emblem for New York City's GreeNYC campaign, which has started to appear around the city on bus shelters, hybrid gasoline-electric taxicabs and even Whole Foods shopping bags.

The GreeNYC logo shows a stylized apple with a stalk and a leaf. It bears a resemblance to Apple's famous logo -- a resemblance Apple says infringes on its trademark.

The city has applied for a trademark on the logo, but Apple has filed a formal opposition (.pdf) obtained by Wired.com.

The Cupertino, California, company calls for the trademark to be denied, claiming the city's logo will confuse people and "seriously injure the reputation which [Apple] has established for its goods and services."

New York says: Getdafugoutaheya.

"The city believes that Apple's claims have no merit and that no consumer is likely to be confused," says Gerald Singleton, the intellectual-property lawyer representing the Big Apple. "This well-known city is using its new design in a variety of contexts that have absolutely nothing to do with Apple Inc."

Apple, of course, is no stranger to trademark disputes, but has typically been on the receiving end of infringement claims. Apple Corps, holder of the Beatles' business interests, battled the company for years over its trademark. That legal spat was finally resolved last year, with Apple walking away with the entire brand and an apparent agreement to license certain trademarks back to Apple Corps.

Cisco Systems also filed suit over Apple's use of the iPhone trademark last year, and both companies finally agreed to share the iPhone name.

"When you talk about trademark infringement, the key issue is likelihood of confusion," says Beth Goldman, an attorney at Heller Ehrman and head of the firm's San Francisco trademark group.

Trademark protection extends to sight, sound and meaning, Goldman says, and if a company can prove there's confusion over such matters, it may very well have a case.

In the case of very famous marks or logos, there's also the issue of dilution, she says, when someone else uses it in a manner that blurs or tarnishes the trademark.

Dilution is harder to prove with a logo, Goldman says, as it's not usually descriptive of a product. Nevertheless, the U.S. Patent and Trademark Office will consider such arguments.

NYC & Company, the nonprofit responsible for the city's official tourism website, applied for a trademark on the new logo on May 14, 2007. The company and its lawyers have filed a counterclaim asking that Apple's trademark registration for its apple logo be canceled.

Apple did not immediately respond to Wired.com's requests for comment.

The GreeNYC campaign is intended to promote "environmentally friendly policies and practices" and "economically sustainable growth."

The next step in the Apple-New York City trademark scuffle, according to trademark lawyers, will be to commission a series of independent surveys -- what are known as mall-stop surveys -- to gauge people's reaction to the new logo, in order to see whether Apple's opposition holds any merit.

"The ultimate arbiter is the consumer," Goldman says.

Singleton says the dispute will play out over the next six to nine months, before a final decision is made by the Trademark Trial and Appeal Board of the patent office.