Case 1:21-cv-01003-TSE-JFA Document 1 Filed 08/30/21 Page 1 of 23 PageID# 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`(ALEXANDRIA DIVISION)
`
`
`
`Plaintiff/Appellant,
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`Civil Action No. _________
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`
`
`Defendant/Appellee.
`
`COMPLAINT
`
`
`APPLE INC.,
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`
`v.
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`
`GANG CAO,
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`
`
`
`
`
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`Plaintiff Apple Inc. (“Apple”), by and through undersigned counsel for its Complaint
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`against Defendant Gang Cao (“Cao”), alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This action arises out of Canadian citizen Gang Cao’s baseless attempt to prevent
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`Apple from obtaining a federal trademark registration for the mark LIVE PHOTOS—which
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`Apple applied to register for “Computer software for recording and displaying images, video and
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`sound” in January 2016 (Serial No. 86/868,731)—on the basis that the mark is purportedly
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`generic or descriptive without secondary meaning. But LIVE PHOTOS is neither generic nor
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`descriptive. Rather, it is a suggestive term that Apple began using nearly six years ago as a
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`unique name for its celebrated product feature.
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`2.
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`Apple uses its LIVE PHOTOS trademark in connection with software that allows
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`consumers to record and capture a still image along with a snippet of a video (with sound) made
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`one and a half seconds before and after the still image photograph, and combining all the
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`elements into a unique single hybrid medium which can best be described as a “moving picture”
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`or “moving image.” The incongruous pairing of the inanimate term “photo” with the action
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`word “live” creates a suggestive trademark, as consumers must exercise imagination to
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`understand what the LIVE PHOTOS software is. The file that is created using Apple’s software
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`is not actually alive, so LIVE PHOTOS is rather a creative, coined, and suggestive term. Nor is
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`the LIVE PHOTOS mark generic. Tellingly, the phrase “live photos” is not defined in any
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`dictionaries, except for a few that mention it as a brand reference to Apple’s product. Apple’s
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`competitors notably use many terms other than “live photos” to identify similar products. For
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`example, Google uses the terms “motion photos” and “Cinematic moments,” Samsung uses the
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`term “Motion Photo,” and Microsoft uses the term “Living Images.” Similarly, the press uses
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`other terms such as “moving images,” “moving pictures,” and “gif-like images,” a further
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`indication that the mark is neither generic nor descriptive.
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`3.
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`There also can be no serious doubt that the LIVE PHOTOS mark has acquired
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`secondary meaning. Apple has invested heavily in this mark, announcing it on the main stage
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`during a 2015 Apple Special Event, featuring it in multiple national television advertisements
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`that created millions of impressions, and promoting the software as a key feature available on
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`Apple’s iPhone devices during the tenth anniversary of the iPhone device. Press coverage for the
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`LIVE PHOTOS feature has been similarly extensive, with numerous heavily circulated
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`newspapers, such as The Washington Post and The Wall Street Journal, publishing articles
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`discussing Apple’s LIVE PHOTOS feature. Apple also has substantially exclusive use of the
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`mark LIVE PHOTOS, as Apple’s primary competitors use other names, as noted above, for their
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`similar products.
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`4.
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`It should come as no surprise then that the LIVE PHOTOS mark has been
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`registered in over 120 jurisdictions, including every English-speaking jurisdiction in which
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`Apple filed (other than the United States and Canada, where Cao opposed). The Canadian
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`opposition proceeding is still pending.
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`5.
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`Nonetheless, Cao opposed Apple’s registration of the mark LIVE PHOTOS, even
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`though he has never used this phrase in connection with any products or services, has no
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`promotional materials for products containing this phrase, and has never sought to use or register
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`this term as a trademark.
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`6.
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`Specifically, on January 17, 2018, Cao filed an Opposition (the “Opposition”) to
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`Apple’s trademark application (Serial No. 86/868,731) for the mark LIVE PHOTOS (the
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`“Application”) with the Trademark Trial and Appeal Board (“TTAB”) of the United States
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`Patent and Trademark Office (“USPTO”), alleging that the LIVE PHOTOS mark is generic
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`and/or descriptive and that Cao would be “damaged” by its registration. This was surprising, as
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`the USPTO examiner had approved the Application as an inherently distinctive mark. Moreover,
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`although many Apple competitors, such as Google, Samsung, and Microsoft, offered products
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`with functionality similar to the LIVE PHOTOS feature, none of those entities opposed. In fact,
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`Cao is the only person or entity that has ever opposed Apple’s application for the mark LIVE
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`PHOTOS anywhere throughout the world.
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`7.
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`On June 28, 2021, the TTAB sustained Cao’s Opposition finding that Cao had
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`standing to oppose the Application for the mark LIVE PHOTOS (despite not using the term or
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`offering a competing product) and that the term was generic, descriptive, and had not acquired
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`distinctiveness. In doing so, the TTAB seemed to ignore that Cao bore the burden of proof.
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`Indeed, the TTAB noted the thoroughness of Apple’s objections to Cao’s flawed evidence. Yet
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`it nonetheless allowed Cao’s flawed evidence to carry the day. Among other things, Cao’s
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`evidence (a) lacked any consumer testimony; (b) lacked any information about the circulation or
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`likely consumer impact of the purported evidence; (c) originated from non-U.S. sources (despite
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`the central issue being U.S. consumer perceptions); (d) included infringing uses of the phrase
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`“live photo(s)” that had already ceased due to Apple’s enforcement efforts; and (e) included third
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`party uses of “live photo(s)” in connection with products with different functionality than
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`Apple’s product. The TTAB also failed to even consider Google Trends data and other evidence
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`submitted by Apple showing the strong association between Apple and the LIVE PHOTOS
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`mark.
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`8.
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`The TTAB also seemed to ignore well-established precedent that a smattering of
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`instances of either generic or descriptive use of a term does not make that term generic. Rather,
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`what matters is whether consumers primarily understand the term as generic. Nonetheless, the
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`TTAB allowed Cao’s smattering of documents to carry the day, despite the strong doubts as to
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`admissibility, the lack of any generic or descriptive use of “live photos” by well-established
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`news sources, the absence of any generic or descriptive use of “live photos” by Apple’s primary
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`competitors, or any dictionaries defining “live photos” as a generic term.
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`9.
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`LIVE PHOTOS is an important trademark to Apple, leaving it with no choice but
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`to bring this appeal. Otherwise, there is a real risk that third parties (or Cao) could mislead
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`consumers into believing that a non-Apple product using the name “Live Photos” has the same
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`features and quality as Apple’s product, when it does not. In addition, consumers could end up
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`being confused as to the source, sponsorship or affiliation of such a non-Apple product using the
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`name “Live Photos” and mistakenly believe such a product is offered or licensed by or
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`associated with Apple, when it is not. This is precisely the type of consumer deception
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`trademark law is designed to protect against. Fortunately, the standard of review for this appeal
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`is de novo. This Court has the opportunity to take a fresh look at the evidence and in doing so,
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`find that (a) LIVE PHOTOS is not a generic or descriptive term, but rather an inherently
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`distinctive trademark, (b) Apple has acquired secondary meaning in the LIVE PHOTOS mark,
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`and (c) an interloper like Cao, who has never used the mark at issue and does not offer a
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`competing product, lacks standing to challenge Apple’s Application.
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`10.
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`Accordingly, Apple seeks (1) review pursuant to 15 U.S.C. § 1071(b)(1) and 37
`
`CFR §2.145(c) and reversal of the TTAB’s decision in Gang Cao v. Apple, Inc., Opposition No.
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`91239006 (T.T.A.B. June 28, 2021) (the “Opposition Proceeding”), which sustained the
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`Opposition to Apple’s Application for federal registration for the mark LIVE PHOTOS and
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`prevented the Application from proceeding to registration; and (2) a declaratory judgment that
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`Apple’s LIVE PHOTOS trademark is a valid and enforceable trademark.
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`THE PARTIES
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`11.
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`Plaintiff Apple Inc. is a California corporation with its principal place of business
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`in Cupertino, California. Apple is the Applicant in the Opposition Proceeding.
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`12.
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`Upon information and belief, Defendant Gang Cao is an individual residing in
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`West Vancouver, British Columbia, Canada. Cao is the Opposer in the Opposition Proceeding.
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`JURISDICTION
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`13.
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`This is an action arising under the Lanham Act, 15 U.S.C. § 1051 et seq.,
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`including in particular 15 U.S.C. § 1071(b)(1), and the Declaratory Judgment Act, 28 U.S.C.
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`§§ 2201 and 2202.
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`14.
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`This Court has subject matter jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C.
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`§§ 1331 and 1338(a), in that this matter involves an action arising under the Lanham Act.
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`Further, this Court also has jurisdiction over this matter pursuant to 15 U.S.C. § 1071(b)(1), in
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`that this matter involves an appeal from a TTAB proceeding. This Court also has jurisdiction
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`over this matter pursuant to 28 U.S.C. §§ 2201 and 2202 because Apple seeks a declaration of
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`rights regarding an actual case and controversy between the parties.
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`15.
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`Because Cao resides in a foreign country, this court has personal jurisdiction over
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`Cao under 15 U.S.C. § 1071(b)(4).
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`16.
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`Venue is appropriate in this District pursuant to 28 U.S.C. §§ 1391(b)(3) and
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`(c)(3), because Cao does not reside in the United States and is subject to the personal jurisdiction
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`of this Court under 15 U.S.C. § 1071(b)(4).
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`FACTUAL BACKGROUND
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`A.
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`Apple’s LIVE PHOTOS Camera Feature and its Considerable Media
`Attention Since 2015
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`17.
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`Apple designs, manufactures and markets smartphones, personal computers,
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`tablets, wearables and accessories, and offers a variety of related software and services. Apple’s
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`products include the iconic iPhone, iPad and Mac devices.
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`18. More than five years ago, on September 9, 2015, Apple announced a new camera
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`feature for its iPhone device, which it named “LIVE PHOTOS.” This innovative camera feature
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`allows users to simultaneously record a still image along with a snippet of a video (with sound)
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`of one and a half seconds before and after the photograph is taken, and stitches all the elements
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`together into a unique single hybrid medium. When a user presses and holds down on the image,
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`the video plays, transforming the image from a still photo into a short moving image. Apple also
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`branded the resulting photo/video file created by the LIVE PHOTOS software feature a “LIVE
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`PHOTO” file, similar to the way QuickTime software creates a QuickTime file.
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`19.
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`The LIVE PHOTOS camera feature debuted with the release of the iPhone 6s and
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`iPhone 6s Plus models in 2015. It was a very important feature for Apple. Apple featured it
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`heavily in its promotion and marketing of iPhone 6s. Apple announced the LIVE PHOTOS
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`6
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`feature during the Apple Special Event at the 7,000-seat Bill Graham Civic Auditorium in San
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`Francisco; devoted a portion of the event to the new feature, including prominently displaying
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`the LIVE PHOTOS mark on the stage’s main screen during the presentation; and highlighted the
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`LIVE PHOTOS feature in a widely distributed press release on the day of the announcement.
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`An image from the Apple Special Event where the LIVE PHOTOS software feature was
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`introduced is shown below:
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`
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`20.
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`Shortly thereafter, media sources with widespread circulation (e.g., The New York
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`Times, The Houston Chronicle, The New York Post, and The Washington Post) ran stories
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`highlighting Apple’s new LIVE PHOTOS feature. The Wall Street Journal raved to its more
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`than one million readers that the LIVE PHOTOS feature was “the phone’s best new feature” and
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`a “groovy new tool for self-expression.”
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`21.
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`The association of LIVE PHOTOS with Apple could not be clearer. A Google
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`Trends report showed that there were virtually no searches for “live photos” before Apple’s
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`announcement, but that after Apple’s announcement, searches on Google jumped from nearly
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`nothing to high levels, relatively speaking, as shown below:
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`22.
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`Apple’s LIVE PHOTOS feature has been included in every version of iPhone
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`since the iPhone 6s and 6s Plus devices. The feature also has come preinstalled on iPad devices
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`since March 2016, and can be used on Mac computers as well to both view and take
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`photo/videos. Sales of iPhone and iPad devices since the LIVE PHOTOS feature first came pre-
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`installed on these devices have been substantial in the United States and globally.
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`23.
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`Apple heavily promoted the LIVE PHOTOS feature. The feature, for example,
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`was the subject of a national television commercial with millions of impressions. The
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`commercial included the following image promoting the LIVE PHOTOS feature in a prominent
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`manner:
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`8
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`24.
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`Apple also promoted the LIVE PHOTOS feature in print ads, and further
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`promoted, and continues to promote, the LIVE PHOTOS feature on its website, which is one of
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`the most highly ranked in terms of traffic and engagement. For example, a WayBack
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`preservation from the Internet Archive of Apple’s website from September 9, 2015 shows the
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`promotion of the LIVE PHOTOS software feature immediately after the iPhone 6s and iPhone 6s
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`Plus announcement:
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`
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`25.
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`Apple also continued investing in the LIVE PHOTOS feature following the 2015
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`launch, including adding new effects, creating compatibility with other apps, and expanding
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`consumer access to the feature by offering it on iPad devices and Mac computers. For example,
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`an excerpt from Apple’s promotion of the iOS 11 operating system shown below highlights new
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`aspects of the LIVE PHOTOS feature:
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`26.
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`Apple also highlighted the LIVE PHOTOS feature in its press release
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`commemorating the tenth anniversary of its iPhone device in 2017 and in promotional materials
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`for the iOS 11 mobile operating system.
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`27.
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`Apple also highlighted the LIVE PHOTOS feature in a TV advertisement for its
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`iPhone devices, which ran on February 14, 2019. The portion of the video advertisement
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`featuring the LIVE PHOTOS mark can be seen below in the closing shot for the ad:
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`10
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`28.
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`Since its announcement, Apple has received ongoing substantial press coverage
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`for the LIVE PHOTOS feature. Press coverage for the LIVE PHOTOS feature continued well
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`into 2021, with hundreds of third-party articles in the United States from reputable national
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`sources, including The New York Times, The Washington Post, CNET, The Wall Street Journal,
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`and USA Today. This coverage referred to LIVE PHOTOS as the brand name of Apple’s
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`software feature, not as a generic or descriptive term for Apple’s product. For instance:
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`• On September 10, 2015, The New York Post released an article titled How do you like them
`Apples! New iPhones, iPads and Even Lifesaving Watch Apps on the Way, which stated “The
`phones give new life to pictures with ‘Live Photos’ – a new camera option that records a
`second and a half of video before and after a photo is snapped, to enable ‘moving pictures.’”
`• On September 25, 2015, The Washington Post released an article titled A new line of
`iPhones, designed with millennials and functionality in mind, which stated “Live Photos, the
`feature that captures a few seconds before and after your shutter clicks . . .”.
`• On September 15, 2016, The New York Times released an article titled About Those Wireless
`Headphones, and Other Apple Accessories, which stated, “The iPhone 6s series bumped up
`the camera resolution to 12 megapixels and added the animated Live Photos feature and 4K
`video support . . . .”
`• On September 14, 2017, CNET released an article titled iOS 11 livens up Live Photos with
`some new tricks, which stated, “Starting with iOS 11, Apple is adding some much-needed
`capabilities to the Live Photos feature.”
`• On January 9, 2018, The New York Times released a column titled Finding the Perfect Part
`of a Live Photo, which answered the question, “How can I retrieve a still photo from the 1.5
`seconds of an iPhone Live Photo before or after the official picture?” In response, the
`column stated, “Live Photos -- Apple’s format that captures a bit of the subject's movement
`right before and after the ‘official’ picture -- can be edited.”
`• On March 29, 2019, USA Today released an article titled Apple News+: Are 300 magazines
`worth $9.99 a month?, which stated, “those magazine covers come alive, moving just like the
`Live Photos images on an iPhone.”
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`29.
`
`As a result of Apple’s sales, promotional efforts, and extensive press coverage of
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`the LIVE PHOTOS feature, consumers have come to associate the LIVE PHOTOS mark with
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`Apple.
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`11
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`B.
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`30.
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`Cao’s Failure to Use “Live Photo(s)”
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`Upon information and belief, unlike Apple, Cao has never used the phrase “live
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`photos” for any products or services, has no promotional materials containing this phrase, and no
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`trademark applications for the term LIVE PHOTOS. Cao’s failure to use the term, or even offer
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`a product with similar functionality as Apple’s LIVE PHOTOS feature, indicates that he is not
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`someone who should be deemed under the law to have the requisite standing to challenge
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`Apple’s Application for LIVE PHOTOS.
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`31.
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`Upon information and belief, at the time of Apple’s announcement in September
`
`2015, Cao’s only connection to the phrase “live photo(s)” was that he owned two domain names
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`containing this phrase—livephoto.com and livephoto.ca (“Live Photo Domains”)—both of
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`which were listed as “for sale.” In fact, upon information and belief, although Cao acquired the
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`Live Photo Domains in 2011, for the four years leading up to Apple’s announcement, he never
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`used them. Instead, they both redirected to the website create.ca where the following message
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`was displayed, as shown from a WayBack preservation authenticated by Archive.org below:
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`
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`32.
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`Then, upon information and belief, a few weeks after Apple’s announcement, for
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`the first time ever, Cao redirected his Live Photo Domains away from the “for sale” page. Cao
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`also proceeded to stockpile 16 other domains, which include the term “live photos,” including
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`livephotos.men, livephotos.wedding and livephotos.sexy. He, however, still failed to actually
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`use any domains containing “live photos” to promote or offer a product. Instead, after Apple
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`announced the LIVE PHOTOS feature, he briefly used the Live Photo Domains to display static
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`photos, until December 2017 when he inactivated both websites. From December 2017 through,
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`upon information and belief, June 28, 2021, when the TTAB issued its decision, the Live Photos
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`Domains displayed the following message:
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`
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`Upon information and belief, Cao also abandoned most of the domains he acquired after Apple’s
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`announcement.
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`33.
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`Upon information and belief, after the TTAB sustained Cao’s Opposition against
`
`Apple’s Application for LIVE PHOTOS on June 28, 2021, Cao modified the Live Photo
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`Domains to say “Under Construction,” as shown below:
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`13
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`(Because livephoto.ca redirects to livephoto.com, visitors to livephoto.ca now see the same
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`“Under Construction” message.) Cao, however, still has not begun offering or promoting any
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`products using these domains.
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`C.
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`34.
`
`The TTAB Opposition Proceeding
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`On January 17, 2018, Cao filed an Opposition with the TTAB against Apple’s
`
`Application for the mark LIVE PHOTOS, alleging that the mark is generic and/or descriptive
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`and that Cao would be “damaged” by its registration. As noted above, Cao was the only person
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`throughout the world who opposed Apple’s Application for the LIVE PHOTOS mark (i.e., none
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`of Apple’s competitors with similar products opposed claiming that they needed to use the term).
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`35.
`
`On February 12, 2021, Cao filed his opening trial brief in support of his
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`Opposition against Apple’s Application for the LIVE PHOTOS mark. On March 16, 2021,
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`Apple filed its responsive trial brief, and on March 31, 2021, Cao filed his reply. An oral hearing
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`for the Opposition Proceeding was held before the TTAB on June 17, 2021.
`
`36.
`
`Although Cao has never used the phrase “live photo(s)” in connection with any
`
`products, has no promotional materials containing this phrase, and has no trademark applications
`
`for LIVE PHOTOS, on June 28, 2021, the TTAB sustained Cao’s Opposition finding that Cao
`
`had standing to oppose Apple’s application.
`
`37.
`
`The TTAB found that the term LIVE PHOTOS is generic, descriptive, and had
`
`not acquired distinctiveness based only on a thin smattering of Internet evidence that it appeared
`
`to weigh without any regard for the fact that Cao bore the burden of proof. Indeed, the record
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`was striking both for what it lacked and what it contained. Among other things:
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`• Cao provided no information about circulation or viewership for most of the third party
`Internet documents Cao submitted and no information as to whether the usage of “live
`photos” indicated a passing comment or a material reflection of consumer perception;
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`• Several of the documents the TTAB cited originated from non-U.S. sources and were
`submitted by Cao without any evidence as to U.S. engagement with these sources or
`whether they reflect a U.S. audience’s understanding of the phrase “live photos”;
`• To the extent Cao provided evidence of third party use, he provided little or no
`information about the types of products third parties have described using the phrase
`“live photos,” and, thus, no information as to whether they fall into the correct genus of
`goods;
`• There were no dictionaries defining “live photos” as anything other than an Apple
`product;
`• There were no generic or descriptive uses of the phrase “live photos” by any of Apple’s
`primary competitors, such as Samsung or Google;
`• There was not a single generic or descriptive use of the phrase “live photos” by any of the
`top U.S. news publications;
`• Apple submitted evidence that there were hardly any searches for “live photos” prior to
`Apple’s announcement relative to after its announcement, which is a strong indicator that
`“live photos” was not generic prior to Apple’s announcement; and
`• Apple submitted evidence that the press and Apple’s competitors use terms other than
`“live photos” (e.g., “moving picture” or “motion photo”) as the generic term for the type
`of product Apple offers.
`
`38.
`
`Apple also had submitted a chart detailing the objections to the evidence that Cao
`
`submitted, including that Cao’s evidence (i) was duplicative of other evidence Cao already
`
`submitted, (ii) did not contain the phrase “live photo(s),” (iii) came from non-U.S. sources, had
`
`an unknown geographic origin, and/or was unclear as to whether the source was distributed in
`
`the United States, (iv) was unclear as to whether references to “live photo(s)” referred to
`
`products that create moving images, (v) referred to third party apps that have been taken down or
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`that changed the name to no longer include “Live Photo(s),” (vi) constituted improper rebuttal
`
`evidence, (vii) provided no information about circulation or viewership, and (viii) and
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`constituted hearsay. The TTAB indicated that it did “not address in detail these objections,” and
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`despite the numerous flaws with Cao’s evidence, the TTAB vaguely accorded “whatever
`
`probative value” it deemed “appropriate” to Cao’s evidence (without making clear to which
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`evidence it was giving weight, or how much, or why it deemed the evidence appropriate in light
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`of Apple’s objections). At the same time, it ignored or gave short shrift to Apple’s evidence,
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`which included, among other things, (i) real ads for Apple’s LIVE PHOTOS mark; (ii) real sales
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`of devices that include the feature; (iii) numerous articles from major U.S. publications referring
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`to “Live Photo(s)” as an Apple product; (iv) evidence that much of the purported third party use
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`Cao cited had ceased and that Apple had worked to enforce its trademark rights; and (v) Google
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`Trends data showing the strong association between Apple and the LIVE PHOTOS mark.
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`39. Moreover, it also appears that several of the purported third party uses of “live
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`photo(s)” that Cao presented to the TTAB were provided without testimony establishing the date
`
`of use, or seemed to be minor uses (e.g., buried within product user manuals) that were presented
`
`in ways that were not obvious to consumers. In addition, because the timing was unclear, some
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`of these minor third party uses may have in fact begun after Apple’s launch of its LIVE
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`PHOTOS feature, such that they were actually infringing uses.
`
`40.
`
`It also appears that many of the purported third party uses are no longer available
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`and/or were used for only a short period of time. For example, Cao presented evidence of a user
`
`manual for Lenovo’s TAB 2 A10-70 Tablet, which purportedly included a camera feature called
`
`“Live Photo mode,” but the Lenovo device that Cao claimed contained this feature is no longer
`
`available for purchase, as shown below:
`
`16
`
`

`

`Case 1:21-cv-01003-TSE-JFA Document 1 Filed 08/30/21 Page 17 of 23 PageID# 17
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`41.
`
`Similarly, Cao presented evidence of a user guide for the Best Buy Insignia Flex
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`Elite 7.85 Android Tablet, which purportedly included “Live Photo mode” as one of the camera
`
`modes, but Best Buy no longer sells the device that contained this feature, as shown below:
`
`
`
`42.
`
`For all of these reasons, and more which will be presented in this litigation, in
`
`conducting its de novo review, this Court should reverse and vacate the TTAB’s June 28, 2021
`
`decision sustaining Cao’s Opposition. Apple’s LIVE PHOTOS mark should be allowed to
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`register and to receive the protections of federal trademark law.
`
`
`
`17
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`

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`Case 1:21-cv-01003-TSE-JFA Document 1 Filed 08/30/21 Page 18 of 23 PageID# 18
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`COUNT I
`
`REQUEST FOR JUDICIAL REVIEW OF THE TTAB DECISION
`(15 U.S.C. § 1071(b)(1) AND 37 CFR § 2.145(c))
`
`43.
`
`Apple repeats and realleges the allegations of Paragraphs 1–42 as if fully set forth
`
`herein.
`
`44.
`
`The TTAB issued a final decision in Gang Cao v. Apple, Inc., Opposition No.
`
`91239006, on June 28, 2021. The TTAB sustained Cao’s Opposition to Apple’s Application for
`
`the LIVE PHOTOS mark, erroneously determining that Cao had standing to oppose the
`
`Application and that “the term ‘Live Photo(s)’ used in connection with ‘computer software for
`
`recording and displaying images, video and sound,’ including the resulting images, video and
`
`sound produced by the software is generic.” (emphasis added). The TTAB further erred in
`
`finding that “consumers commonly use ‘Live Photos’ to describe ‘computer software for
`
`recording and displaying images, video and sound’ and the simulated moving photographs the
`
`software produces and, therefore, ‘Live Photos’ is not only merely descriptive but it is highly
`
`descriptive of such goods.” (emphasis added). Finally, the TTAB erroneously found that Apple
`
`had not shown that LIVE PHOTOS had “acquired distinctiveness.”
`
`45.
`
`The TTAB’s determination rested on numerous errors of law and fact, including
`
`but not limited to: (1) failing to properly recognize that Cao has no real interest in the phrase
`
`“live photo(s)” and thus no standing to oppose Apple’s Application for LIVE PHOTOS, (2)
`
`improperly crediting Cao’s evidence of genericness and/or descriptiveness (which had various
`
`flaws), (3) improperly finding that Cao had met his burden of proving genericness and/or
`
`descriptiveness, and (4) failing to recognize that consumers have come to associate the term
`
`LIVE PHOTOS with Apple’s computer software for recording and displaying images, video and
`
`sound in light of Apple’s billions in global sales of iPhone and iPad devices since the LIVE
`
`18
`
`

`

`Case 1:21-cv-01003-TSE-JFA Document 1 Filed 08/30/21 Page 19 of 23 PageID# 19
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`PHOTOS feature was first introduced, Apple’s promotional efforts, extensive unsolicited press
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`coverage of Apple’s LIVE PHOTOS feature that has continued since Apple’s announcement of
`
`the feature, and Google Trends data showing the strong association between Apple and the LIVE
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`PHOTOS mark.
`
`46.
`
`Apple respectfully requests a de novo judicial review of the TTAB’s
`
`determination on all issues.
`
`47.
`
`In this case, the facts described above demonstrate that the June 28, 2021 TTAB
`
`decision should be reversed and vacated and that the Court should enter an Order:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`Finding that Cao lacked standing to oppose Apple’s Application for LIVE
`
`PHOTOS;
`
`Finding that Apple’s LIVE PHOTOS mark is not generic;
`
`Finding that Apple’s LIVE PHOTOS mark is not descriptive;
`
`Finding that the mark LIVE PHOTOS has acquired distinctiveness in
`
`connection with Apple’s goods/services;
`
`Reversing the TTAB’s refusal to register the LIVE PHOTOS mark; and
`
`Requiring the Director of the USPTO to take actions consistent with the
`
`Court’s decision, including to issue a certificate of registration for Apple’s
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`LIVE PHOTOS mark (Serial No. 86/868,731).
`
`COUNT II
`
`DECLARATORY JUDGMENT OF VALIDITY AND ENFORCEABILITY
`
`48.
`
`Apple repeats and realleges the allegations of Paragraphs 1–47 as if fully set forth
`
`herein.
`
`19
`
`

`

`Case 1:21-cv-01003-TSE-JFA Document 1 Filed 08/30/21 Page 20 of 23 PageID# 20
`
`49.
`
`The USPTO evaluated Apple’s Application for LIVE PHOTOS, determined the
`
`mark was suggestive and approved the Application for publication without requiring proof of
`
`secondary meaning.
`
`50.
`
`The LIVE PHOTOS mark does not immediately convey a quality or characteristic
`
`of computer software for recording and displaying images, video, and sound. Rather, the name
`
`conjures many different ideas about the underlying product. For example, it could suggest that
`
`photographs taken using the LIVE PHOTOS feature are very vivid. It also could suggest that the
`
`photos are broadcast to an audience when they are taken (i.e., a live broadcast). Or the phrase
`
`could suggest that photographs taken using the LIVE PHOTOS feature have a specified lifespan,
`
`such that they might disappear over time.
`
`51.
`
`The words “live” and “photos” also are an incongruous pairing, which further
`
`underscores the suggestive nature of the name. Photographs by nature are inanimate, and thus it
`
`is incongruous to pair “photo” with a word such as “live.” The name LIVE PHOTOS requires
`
`one to pause and think about what it might mean for a still photograph to be “alive.” Only after
`
`pausing to think about the phrase in relation to Apple’s product does the name make sense, as the
`
`name plays on the imaginative notion that photographs can come to life when they, of course,
`
`cannot.
`
`52. More than 20 dictionaries and thesauruses contain no definition of “live photo” or
`
`“live photos.” Indeed, the absence of the phrase “live photos” in dictionaries shows