On Wednesday, Apple Inc. filed an opposition before the Trademark Trial and Appeal Board against applicant Pod Shedz LLC’s application for the PODSHEDZ mark, citing consumer confusion and dilution over the use of “POD” in its mark in relation to Apple’s -POD family of marks.
Apple noted that it “owned and used a family of marks for audio devices that each share the suffix ‘POD,’ ” including iPod, EarPods, AirPods, AirPods Pro, and HomePod (the ‘-POD family of marks’), which share the Pod formative characteristic, before the applicant applied to register its trademark. Apple contended that since 2001 it has used the -POD family of marks, at first in connection with the iPod mark for its handheld digital music player. The applicant filed its application on October 12, 2019, in Class 9, to cover “(e)arphone accessories, namely, earphone cases; Protective cases for audio equipment in the nature of wireless headphone cases.” The application noted that the first use of the mark in U.S. commerce was September 24, 2019.
Apple asserted that the common characteristic in the -POD family of marks “is distinctive” and “associated with Apple and its various audio and audio-related devices.” Apple claimed that its -POD family of marks was used in advertising and marketing while also garnering media attention. Thus, according to Apple, there is great consumer recognition and association with these marks and Apple. Furthermore, Apple claimed that its marks are famous and were such before the applicant’s application.
Apple cited the likelihood of confusion and likelihood of dilution as grounds for opposition. Notably, Apple pointed to the applicant’s mark as “confusingly similar in appearance, sound, and commercial impression to Apple’s -POD Family of Marks.” The opposition noted that the applicant has marketed its products “as compatible with, and indeed intended for use with, Apple’s AIRPODS device,” for example, stating, “‘Podshedz attach to your phone case giving you storage for you air pods.’” Apple contended that “POD is the dominant feature of Applicant’s Mark and the goods listed in the Application include earphone accessories.” Meanwhile, Apple claimed that it has used its -POD family of marks in connection with similar or related goods that the applicant seeks to cover in its registration application. Apple stated that the applicant “merely adds the descriptive term SHEDZ, an obvious misspelling of ‘sheds’ (i.e., storage spaces) … to POD,” again bringing Apple’s marks and products to mind. Consequently, Apple claimed that the similarity is likely to cause consumers to falsely believe there is a connection, association, endorsement, or other affiliation with Apple. Apple also proffered that the famous and distinctive qualities of its -POD family of marks will be diluted if the applicant’s mark is registered.
Apple alleged that it will be harmed by the registration of the applicant’s mark and has sought for its opposition to be sustained and for the registration of the applicant’s mark to be refused. Apple is represented by Kilpatrick Townsend & Stockton LLP.
