Apple, Inc. is seeing red over New York City’s attempts to register a trademark for green-friendly services, and the dispute challenges one of Apple’s trademark registrations for its ubiquitous logo.

Apple has filed an Opposition (No. 91/181,984) with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board against NYC & Company, Inc.’s attempts to register the “Infinite Loop Apple” design mark (shown above at left). Apple asserts that use of NYC’s mark would likely cause confusion with Apple’s famous logo (shown at right) especially given the presence of Apple’s flagship Manhattan retail location.

NYC’s application states the mark is to be used for, among other things, promoting “education on environmentally friendly policies and practices of the City of New York” (See Application Nos. 77/179,942 and 77/179,968). Apple claims that confusion would be likely because of the similarities in appearance and commercial impression between the marks, and because certain of the goods and services recited by NYC are identical or highly related to goods and services offered under the Apple mark.

NYC answered the Notice of Opposition and filed a Counterclaim seeking to cancel Apple’s registration for the logo as used in connection with “mugs, dishes, drinking glasses, and wine glasses.” NYC claims that Apple procured the registration through fraud, because it knowingly misrepresented that it was using the mark in connection with those goods on its Declaration of Use and Renewal Application under sections 8 & 9 of the Trademark Act, when it fact no such use was being made. If the Board finds such fraud, Apple faces cancellation of its entire registration for those goods. Fraud has been a recurring issue before the TTAB of late, as evidenced by this recent post from John Welch’s TTABlog.

Apple, of course, denies the allegations of fraud. In any event, if the cancellation is successful, Apple’s most important marks (i.e., for computer hardware) would remain intact.

Time will tell whether Apple’s efforts to protect its mark will bear fruit. The company probably feels even more incentive to keep others from trading on its reputation and goodwill after hearing about this recent study, which found that people who see the Apple logo may feel more creative.

“Lowest perceptive capabilities.” Is that code for “a moron in a hurry“?

Chicago-based BlueAir, Inc. has apparently been getting some threats from Apple over BlueAir’s pending trademark registration for the mark AIRPOD, to be used in connection with desk top air purifiers. Apple says AIRPOD will infringe on the IPOD mark.

BlueAir has gone on the offensive, asking the U.S. District Court for the Northern District of Illinois to enter a declaratory judgment of no infringement.

The heart of BlueAir’s allegations are as follows:

“There is no reasonable likelihood of confusion, mistake, or error in the marketplace for persons of even the lowest perceptive capabilities who are seeking an iPod music player considering or buying an AIRPOD desktop air cleaner instead.”

This dispute has been going on for a few months, and it is interesting to see suit filed now, to essentially coincide with the introduction of the MacBook Air.

BlueAir, Inc. v. Apple, Inc., No. 08-427 (N.D. Ill. filed January 18, 2007)
[Download the Complaint]