Seed IP's Litigation & Enforcement Team recently scored a major victory for its client, Mr. Gang Cao, in successfully opposing Apple Inc.’s trademark application for the proposed mark LIVE PHOTOS. In a unanimous opinion dated June 26, 2021, the Trademark Trial and Appeal Board sustained the opposition brought by Mr. Cao on all grounds – finding that LIVE PHOTOS is generic, and alternatively, that the mark is merely descriptive and that Apple failed to show the mark has acquired distinctiveness.

Apple launched its Live Photos software feature in Fall 2015. The software’s purpose, as advertised by Apple, is to “capture photos that come alive when you touch them.” Apple also named the resulting hybrid video-photos created by the software as “Live Photos.” Apple sought registration of LIVE PHOTOS for "Computer software for recording and displaying images, video and sound." Here is the specimen that Apple submitted in support of its trademark application:

Mr. Cao, an inventor who has developed software that creates a similar moving-image effect as Apple’s software, had purchased the domains<livephoto.com> and <livephoto.ca> before Apple launched its Live Photos feature, with the intention of using the domains and the term “live photos” to refer to his own products. Mr. Cao’s plans were put on hold, however, when Apple subsequently launched its Live Photos software and applied for the challenged trademark, threatening both Mr. Cao and any other party who would seek to use “live photos” in a generic or descriptive manner.

In an 87-page opinion, the Board agreed with Cao that consumers perceive the term “live photos” to refer to “a thing, not a source.” The Board considered Cao’s evidence including dictionary definitions, Apple's own use of the term, and significant third-party usage by members of the public, media, and by major Apple competitors alike to arrive at the conclusion that mark is generic, and thus not registrable.

In addressing Mr. Cao’s alternative grounds of mere descriptiveness, the Board found, by extension of its genericness holding, that “Live Photos” is not only merely descriptive but highly descriptive of Apple’s goods. The Board was not convinced by Apple’s attempted showing of secondary meaning, finding that Apple’s own use of the term did not emphasize that “Live Photos” is a trademark for its software, Apple could not claim substantially exclusive use of the mark in light of a plethora of third party uses, and evidence of sales success pointed to the success of Apple’s iPhones and iPads rather than consumer perception of the term “Live Photos.”

The Board also rejected Apple’s challenge to Mr. Cao’s statutory entitlement to bring the action (formerly known as standing), finding that Mr. Cao has a real interest in the proceeding.

The case is Gang Cao v. Apple Inc., Opposition No. 91239006 (June 26, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Opposer Gang Cao was represented by Seed IP’s Marc Levy, Brigid Mahoney, Tom Shewmake, Jennifer Ruppert, and Ashley Baxter.

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