By Scott Nyman
Lately, companies are increasingly filing trademarks applications for single words. Mark has provided a great example of this practice in his coverage of Facebook’s battle for “face” and “book.” Now, Apple seems to be jumping on the bandwagon by filing a trademark application for the word, “Retina.” In its trademark prosecution, Apple will most likely argue that its use of “Retina” to describe a display is arbitrary, much like it own brand name, Apple. Most likely, however, the “Retina” mark will be classified as a suggestive mark, which is one step weaker than an arbitrary mark.
Arbitrary marks are formed when words are used to describe goods or services that have no relation to the word’s common definition. Apple Inc. is the most common example of an arbitrary mark, since typically fruit has nothing to do with computers. Suggestive marks suggest a characteristic of a good or service, without plainly describing that characteristic. Microsoft is a common example of a suggestive mark, since the term Microsoft makes the consumer think of computers without descriptively stating, “software for microprocessors.” Basically, if Jeff Goldblum can figure it out, it’s suggestive.
This past summer, with the release of the iPhone 4, Apple increased the resolution on their popular smart phone to 960-by-640 pixels on a 3.5 inch screen. With the combination of high pixel count and small-ish screen (by today’s standards, at least), the iPhone 4 has the most densely packed pixels in the business. The Apple marketing department has dubbed this screen the Retina Display.
Even if Apple is successful in acquiring the “Retina” trademark, it will not be able use the mark’s protection to stop every doctor and optometrist from diagnosing their patients. As stated in the published application, Apple’s trademark is only directed to “electric hand-held game units other than those adapted for use with an external display screen or monitor;” and “hand-held electronic games and apparatus other than those adapted for use with television receiver only.” The medical field may continue to operate worry-free, since most consumers of medical treatment are not likely to confuse their medical diagnosis with a phone display.
You can view the Apple trademark application by navigating to the USPTO website, clicking on “SEARCH MARKS,” and searching for the word “retina.” I would provide a direct link, but the web pages expire quickly in a USPTO trademark search.