Steve Jobs, the late co-founder of Apple, is synonymous in the minds of most people with the technology brand that he helped become an empire. That is, unless you’re talking fashion. No, no, not the quintessential black turtleneck, jeans, and sneakers look (hard to pull off); we’re talking Italian fashion. Or something claiming to be Italian fashion.
As one of the final weird news stories of a very weird 2017, it was announced that two Italian brothers, Vincenzo and Giacomo Barbato, had registered a trademark for “Steve Jobs” in connection with their fashion company by the same name. They didn’t just register the trademark in Italy, though (that happened back in 2014); instead, the announcement came after the mark had received international registration. If you’re anything like me (scary thought), then you probably had the same reaction to the news: uhh…what? Like, how?
To answer that question, we need to go back to 2012 (call me, maybe?), when the brothers first conceived of the mark at issue: the “logo comprising a large J with a bite taken out of it.” They did so after “[noticing] that Apple, one of the best known companies in the world, never thought about registering its founder’s brand, so [they] decided to do it.” You have to give them points for honesty.
While Apple challenged the mark, the challenge was wholly rejected by the European Union Trademark Office, with the Office reasoning that “the letter ‘J’ isn’t edible and therefore the bite could not be ripping off Apple’s own iconic logo”. To further complicate matters, it appears Apple never objected to a separate registration for the word mark “Steve Jobs,” which may or may not have made a difference with the mark now at issue.
It should be noted that the trademark registration process differs substantially between Italy and the United States, such that marks registrable there may not be registrable on their own here. That’s because the United States Patent and Trademark Office looks at different factors when considering whether to grant or refuse a trademark registration, including likelihood of confusion (in sound, meaning, and appearance, to name a few), whether the mark is merely descriptive, and whether the mark is deceptively misdescriptive. Deceptively misdescriptive marks exist where “(1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misdescription conveyed by the mark is plausible.”
Pursuant to Section 2(d) of the Trademark Act, the USPTO may refuse a mark “due to likelihood of confusion with another mark”; and this refusal “is normally based on the [USPTO] examining attorney’s conclusion that the applicant’s mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion.” When determining likelihood of confusion under this provision, the “issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon.”
In the case of the mark at issue here, had the brothers tried to register the mark in the United States initially, it could be argued that the mark could have been denied based on likelihood of confusion, as there could be confusion as to the source or sponsorship of the goods bearing the “Steve Jobs” mark. However, as mentioned above, the potentially confusing mark has to conflict with a mark that is already registered; therefore, the examining attorney would have to conclude that, based on the registrations Apple had at the time of the new application, there could be a likelihood of confusion between those marks and the proposed “Steve Jobs” mark. Alternatively, it could have been considered deceptively misdescriptive, as the mark conjures the co-founder of Apple without any further relation to the company.
For the time being, the brothers are legally able to sell their clothing items; however, it will be interesting to see what happens if and when they branch out into other areas (for example, technology, which they have already expressed an interest in doing). There is already speculation that expansion into other areas, especially those directly competing with Apple, may present an opportunity for Apple to have the last bite at the…well, you get where I was trying to go with that one.
While this appears to be a sort of one-off event, it is interesting to consider the potential consequences if this scenario played out with other parties. What if there were Kevin Plank branded home furnishings? A Peter Thiel music streaming service? Jeff Bezos branded alcohol? Ok, the last one would be pretty cool. But you get the point – where is the line crossed in terms of blurring those who have become almost synonymous with their respective companies such that there could be a legitimate concern of consumer confusion? Or is this a job better served by right of publicity law?
It looks like we’ll be left wondering, at least for now. In the meantime, share your thoughts with us below!