A small New York publisher that uses the label “ibooks” has struck out in its lawsuit against Apple,(s AAPL) after a New York court on Wednesday held that the publisher’s mark was not distinct and that consumers would not confuse the two companies’ products.
The case began in 2011 after Black Tower Press, a publisher of sci-fi and fantasy titles, filed a trademark suit in response to Apple’s announcement that it would use the word “iBooks” to describe software that allows users to purchase online books. Here’s a look at the two marks:
Black Tower came into possession of the “ibooks” mark in 2006 by purchasing the assets of another publishing company that had used the word for an imprint that sold millions of sci-fi and horror books in the early 2000’s. Neither Black Tower nor its predecessor, however, obtained a registered trademark for the word.
Apple, on the other hand, did obtain registered trademark rights. It first obtained a license to use “iBook” from another software company in 1999 to describe a line of colorful computers; in 2010, Apple bought the other company’s trademark entirely.
In a detailed decision, U.S. District Judge Denise Cote explained that the word “ibooks” was simply descriptive of books sold on the internet, and that Black Tower had not acquired any distinctive meaning in the word — only in the word and lightbulb logo used together.
Cote also wrote that she was granting summary judgment to Apple for a second reason: that no consumers would be confused by the two companies’ products:
They have offered no evidence that consumers who use Apple’s iBooks software to download ebooks have come to believe that Apple has also entered the publishing business and is the publisher of all of the downloaded books, despite the fact that each book bears the imprint of its actual publisher.
You can read a copy of the decision, spotted by Law360 (sub req’d), below with important parts highlighted. (Publishing insiders — check out the judge’s skewering at pages 31-35 of the expert testimony of industry veteran, Michael Shatzkin).