On the question how New York City (NYC) acquired the name the Big Apple, there seems to be some uncertainty, but it seems certain that horse racing had something to do with it. There are recorded references to the phrase "bet a big apple" going back to 1847 and it would seem that by the late 1920s, NYC was already referred to as the Big Apple.
Fast forward to 2007 and NYC's trade mark applications in the United States for an Apple device trade mark in respect of inter alia publications, thermal containers for beverages, T-shirts and information services (figure 1).
Figure 1 |
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Despite the fact that NYC has been known as the Big Apple for many decades, the transformation of this name into a visual representation of an apple was not looked upon too kindly by Apple Inc. With three flagship Apple stores in Manhattan and the Apple brand being valued in 2007 at more than $11 billion, it is no surprise that Apple opposed NYC's trade mark applications at the USPTO based on its own Apple device trade mark (figure 2).
Figure 2 |
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There are some striking visual similarities between the NYC and Apple trade marks and with identical goods of interest to both (printed matter, containers for beverages, clothing and educational services) Apple may be correct that the NYC mark is likely to cause confusion among consumers. Of more importance to Apple, however, may be the risk that NYC's use of its proposed mark will dilute its own trade mark by eroding the mark's ability to identify exclusively the goods and services of Apple.
Although the opposition to the NYC trade mark is still pending and it would be premature to comment too much on the matter, one might be tempted to bet a big apple that the NYC mark will not mature to registration in its current form. What can be learnt from this opposition is that business needs not only to realize the importance and value of existing trade marks. To stay ahead, business must think ahead and seriously consider the future potential and value of derivative marks.
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Waldo Steyn |
Al Tamimi & Company
Dubai International Financial Centre
6th Floor, Building 4 East
Sheikh Zayed Road, Dubai
United Arab Emirates
Tel: +971 4 364 1641
Fax: +971 4 364 1777
