Case 1:21-cv-01003-TSE-JFA Document 29 Filed 01/14/22 Page 1 of 19 PageID# 1830
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`APPLE, INC.,
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`V.
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`GANG CAO,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:21cv1003 (TSE/JFA)
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`PROPOSED FINDINGS OF FACT AND RECOMMENDATIONS
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`This matter is before the court on plaintiffs motion for default judgment pursuant to
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`Federal Rule of Civil Procedure ("FRCP") 55(b )(2). (Docket no. 20). In this action, plaintiff
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`Apple, Inc. ("plaintiff' or "Apple") seeks entry of default judgment against defendant Gang Cao
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`("defendant" or "Cao"). Pursuant to 28 U.S.C. § 636(b)(l)(C), the undersigned magistrate judge
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`is filing with the court his proposed findings of fact and recommendations, a copy of which will
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`be provided to all interested parties.
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`Procedural Background
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`On August 30, 2021, plaintiff brought this action seeking (1) de novo review of a
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`decision by the Trademark Trial and Appeal Board ("TTAB") pursuant to 15 U.S.C.
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`§ 1071(b)(l), (2) reversal and vacatur of the TTAB's decision sustaining defendant's opposition
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`to plaintiffs application for federal trademark registration, and (3) a declaratory judgment that
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`plaintiffs trademark is valid and enforceable. (Docket no. 1). On September 3, 2021, plaintiff
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`filed a motion for an order directing service upon defendant-a resident of Canada-by
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`registered international mail pursuant to 15 U.S.C. § 107l(b)(4) or, alternatively, service by
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`registered mail on defendant's U.S. counsel in the TTAB opposition proceeding. (Docket no.
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`1
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`12). The court granted plaintiffs motion on September 8, 2021 and directed plaintiff to serve
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`defendant by mailing a copy of the summons and complaint by registered international mail with
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`return receipt to defendant's last known address. (Docket no. 15). On October 12, 2021,
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`plaintiff filed an affidavit certifying compliance with the court's September 8, 2021 order and
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`confirming that defendant indicated by email to plaintiffs counsel that he received a copy of the
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`complaint, summons, notice, and order directing service by registered mail. (Docket no. 16).
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`On December 6, 2021, the District Judge entered an order directing plaintiff to seek an
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`entry of default from the Clerk of the Court pursuant to Federal Rule of Civil Procedure 55(a)
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`and to file thereafter a motion for default judgment and a notice of hearing for January 14, 2022
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`at 10:00 a.m. (Docket no. 17). On December 7, 2021, plaintiff filed a request for entry of
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`default as to defendant, (Docket no. 18), and default was entered on December 8, 2021, (Docket
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`no. 19). On December 18, 2021, plaintiff filed a motion for default judgment, a memorandum in
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`support, and a notice of hearing for January 14, 2022. 1 (Docket nos. 20, 21, 22). At the hearing
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`on January 14, 2022, counsel for plaintiff appeared, but nobody appeared on behalf of defendant.
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`Factual Background
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`The following facts are established in the complaint. (Docket no. 1) ("Campi.").
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`Plaintiff is a California corporation with its principal place of business in California. (Compl.
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`1 11 ). Plaintiff designs, manufactures, and markets smartphones, personal computers, tablets,
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`1 Plaintiff did not serve defendant with a notice pursuant to Roseboro v. Garrison, 528
`F.2d 309 (4th Cir. 1975) and Local Civ. R. 7(K). Plaintiffs position is that a Roseboro notice
`was not warranted because the rule applies to a defendant who has appeared personally pro se,
`and defendant never appeared or pleaded in response to the complaint, personally or by a
`representative. The undersigned notes that defendant had twenty-seven (27) days to respond to
`plaintiff's motion for default judgment before the hearing and that he will have fourteen (14)
`days to file a response to this report and recommendation. For these reasons, any failure to
`comply with Local Civ. R. 7(K) was harmless.
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`2
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`Case 1:21-cv-01003-TSE-JFA Document 29 Filed 01/14/22 Page 3 of 19 PageID# 1832
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`and related accessories, software, and services. (Compl. 117). On September 9, 2015, plaintiff
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`announced a new feature for its iPhone product line, which it named "Live Photos." (Compl.
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`1 18). The Live Photos feature allows users to record a still image alongside a snippet of video
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`for one and a half seconds before and after the photo is taken and combines them into a hybrid
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`medium. (Compl. 118). Users can press down on the image, which is then transformed from a
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`still photo into a short moving image with sound. (Compl. 1 18). After plaintiff announced the
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`Live Photos feature at an Apple Special Event in San Francisco, several national media sources
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`ran stories that highlighted it, and searches for "live photos" on Google increased significantly.
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`(Compl. 1, 19, 20, 21). The Live Photos feature has been included in iPhone and iPad devices
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`and Mac computers, and plaintiff has promoted it in television commercials, print ads, and on
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`plaintiffs website. (Compl. 1122-27). National media sources have continued to report on
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`plaintiff's Live Photos feature since its launch in 2015. (Compl. 128).
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`Defendant is an individual residing in West Vancouver, British Columbia, Canada.
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`(Compl. 1 12). Defendant has never offered any products or services using the phrase "live
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`photos" or filed an application for trademark registration of "live photos," and defendant does
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`not offer a product similar to plaintiffs Live Photos software. (Compl. 130). As of September
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`2015, defendant was the registrant of two domain names containing the phrase "live photos"(cid:173)
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`livephoto.com and livephoto.ca. (Compl. 1 31 ). Defendant registered these domain names in
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`2011, but they were listed for sale until plaintiffs announcement of the Live Photos feature in
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`2015. (Compl. 1131, 32). Following plaintiff's Live Photos announcement, defendant
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`registered sixteen (16) other domains that included the phrase "live photos," but he did not use
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`any of the domains to promote or sell any products. (Comp I. 1 32). Defendant used the
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`livephoto.com and livephoto.ca domains to host static images until December 2017, at which
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`3
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`point he deactivated both websites, and both websites remained inactive as of the proceedings
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`before the TTAB.2 (Compl. 132).
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`In January 2016, plaintiff filed a trademark application with the United States Patent and
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`Trademark Office ("USPTO" or "PTO") to register the mark "LIVE PHOTOS" for "[c]omputer
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`software for recording and displaying images, video and sound." (Compl. 1 1 ). The assigned
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`USPTO examiner determined that the LIVE PHOTOS mark was suggestive and approved
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`plaintiffs application for publication without requiring proof of secondary meaning. (Compl.
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`149). On January 17, 2018, defendant filed an opposition with the TTAB against plaintiffs
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`LIVE PHOTOS trademark application, alleging that the proposed mark was generic and/or
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`descriptive and that defendant would be damaged by its registration. (Compl. 134). The parties
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`filed briefing and participated in an oral hearing before the TTAB on June 17, 2021. (Compl. 1
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`35). On June 28, 2021, the TTAB sustained defendant's opposition to plaintiffs trademark
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`application. (Compl. 136). The TTAB found that defendant had standing to oppose plaintiffs
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`application and that the term "LIVE PHOTOS" is generic, descriptive, and had not acquired
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`distinctiveness. (Compl. 1136, 37). On August 30, 2021, plaintiff filed a complaint seeking
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`judicial review of the TT AB decision and a declaratory judgment that the LIVE PHOTOS mark
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`is valid and enforceable. (Compl. 1143-57).
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`Proposed Findings and Recommendations
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`FRCP 55 provides for the entry of a default judgment when "a party against whom a
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`judgment for affirmative relief is sought has failed to plead or otherwise defend." A defendant in
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`default admits the factual allegations in the complaint. See FRCP 8(b)(6) ("An allegation-other
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`2 Following the TT AB decision on June 28, 2021, defendant modified the domains with
`an "Under Construction" placeholder. (Compl. 133).
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`4
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`than one relating to the amount of damages-is admitted if a responsive pleading is required and
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`the allegation is not denied."); see also Globa/SantaFe Corp. v. Globalsantafe.com, 250 F. Supp.
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`2d 610,612 n.3 (E.D. Va. 2003) ("Upon default, facts alleged in the complaint are deemed
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`admitted and the appropriate inquiry is whether the facts as alleged state a claim."). FRCP
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`55(b )(2) provides that a court may conduct a hearing to determine the amount of damages,
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`establish the truth of any allegation by evidence, or investigate any other matter when necessary
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`to enter or effectuate judgment.
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`Jurisdiction and Venue
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`A court must have both subject matter jurisdiction and personal jurisdiction over a
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`defaulting party before it can render a default judgment. This court has subject matter
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`jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this matter involves a federal
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`question arising under the Lanham Act. This court also has subject matter jurisdiction over this
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`claim as an appeal from a TTAB decision under 15 U.S.C. § 1071(b).
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`This court has personal jurisdiction over defendant under 15 U.S.C. § 107l(b)(4). A civil
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`suit challenging a decision of the TT AB may be instituted against an adverse party as shown by
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`the US PTO records at the time of the decision complained of. Id This court has jurisdiction
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`over adverse parties residing in foreign countries in a§ 1071(b)(l) action. 15 § 1071(b)(4).
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`Personal jurisdiction is therefore proper because the complaint alleges that defendant-an
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`adverse party in the underlying TTAB action-resides in Canada. (Compl. ,r,r 12, 34). Venue is
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`proper pursuant to 28 U.S.C. § 1391(b)(3), (c)(3) because defendant is a resident of a foreign
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`country and is subject to this court's personal jurisdiction.
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`For these reasons, the undersigned magistrate judge recommends a finding that this court
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`has subject matter jurisdiction over this action, that this court has personal jurisdiction over
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`defendant, and that venue is proper in this court.
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`Service
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`Pursuant to 15 U.S.C. § 1071(b)(4), an adverse party residing in a foreign country may be
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`served by publication or "otherwise as the court directs." On September 8, 2021, the court
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`ordered plaintiff to serve defendant by mailing a copy of the summons and complaint by
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`registered international mail with return receipt to defendant's last known address. (Docket no.
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`15). On October 12, 2021, plaintiff filed an affidavit certifying compliance with the court's
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`order and representing that defendant confirmed by email that he received the complaint,
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`summons, notice, and order for service by registered international mail. (Docket no. 16).
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`Based on the foregoing, the undersigned recommends a finding that defendant was
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`properly served and had notice of this action.
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`Grounds for Entry of Default
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`In accordance with FRCP 12(a), defendant was required to file a responsive pleading by
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`October 27, 2021, twenty-one (21) days after defendant was served by registered international
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`mail pursuant to the court's September 8, 2021 order. (Docket nos. 15, 16). No responsive
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`pleading has been filed by defendant, and the time for doing so has expired. On December 7,
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`2021, plaintiff filed a request for entry of default, (Docket no. 18), and the Clerk of the Court
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`entered a default against defendant on December 8, 2021, (Docket no. 19). Accordingly, the
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`undersigned magistrate judge recommends a finding that defendant was properly served, that he
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`failed to file a responsive pleading in a timely manner, and that the Clerk of Court properly
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`entered a default as to defendant.
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`6
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`Liability and Relief
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`According to FRCP 54( c ), a default judgment "must not differ in kind from, or exceed in
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`amount, what is demanded in the pleadings." Because defendant is in default, the factual
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`allegations in the complaint are deemed admitted. See FRCP 8(b)(6); Globa!SantaFe Corp., 250
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`F. Supp. 2d at 613 n.3.
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`Request for Judicial Review of the TTAB Decision (Count I)
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`i.
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`Standard of Review
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`Plaintiff seeks de novo review of the TT AB' s findings in Gang Cao v. Apple, Inc.,
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`Opposition No. 91239006 (T.T.A.B. June 28, 2021) and an order reversing and vacating the
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`decision. (Compl. 144-47). Under 15 U.S.C. § 1071(b)(l), a party seeking review of a TTAB
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`decision on registration of a proposed mark may file a new action in the district court as an
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`alternative to an appeal before the United States Court of Appeals for the Federal Circuit.3 B &
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`B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 144 (2015). In a§ 1071(b)(l) action,
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`the district court resolves the issue of registration de novo and may consider evidence not
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`previously submitted to the TTAB. Id; Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150,
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`155 (4th Cir. 2014). The district court acts as the finder of fact and has independent authority to
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`grant or cancel registration of a proposed mark. Swatch AG, 739 F.3d at 155.
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`Plaintiff is entitled to de novo review of the facts supporting registration of the LIVE
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`PHOTOS mark. As a practical matter, this court's review is somewhat limited because no party
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`3 As a procedural matter, plaintiffs complaint was timely filed. A plaintiff may file a
`§ 1071(b)(l) complaint within sixty-three (63) days of a final decision of the TTAB. 15 U.S.C.
`§ 1071(b)(l); 37 C.F.R. § 2.145(d)(3). Plaintiff filed this action on August 30, 2021, sixty-three
`(63) days after the TTAB's final decision in Gang Cao v. Apple, Inc., Opposition No. 91239006
`(T.T.A.B. June 28, 2021).
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`has moved to admit the PTO record, and the record is not currently before this court. 4
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`Nevertheless, de novo review of the facts supporting registration is further appropriate here
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`because plaintiff asserts it has presented new evidence to the district court that was not raised
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`previously before the TTAB. See Swatch AG, 739 FJd at 156 ("[W]here new evidence is
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`submitted, de novo review of the entire record is required because the district court 'cannot
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`meaningfully defer to the PTO's factual findings if the PTO considered a different set of facts."')
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`(quoting Kappos v. Hyatt, 566 U.S. 431,445 (2012)). Plaintiffs memorandum in support of its
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`motion for default judgment highlights several new facts that were raised for the first time in its
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`complaint and that are now deemed admitted given defendant's default. (Docket no. 22 at 12).
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`For example, plaintiff released a commercial highlighting Live Photos in February 2019, and
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`national press coverage of the Live Photos feature continued through 2021. (Comp I. ,r,r 26, 28).
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`In contrast, defendant still has not used the phrase "live photos" to offer or promote any products
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`following the TT AB decision, and two products apparently referenced before the TT AB as
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`evidence of third-party use of the phrase are no longer commercially available. (Compl. ,r,r 33,
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`40, 41 ). These facts are directly relevant to plaintiffs claims and are appropriate for the court to
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`consider de novo.
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`ii.
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`Defendant's Standing to Oppose Plaintiff's Trademark Application
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`As a preliminary matter, plaintiff argues that defendant lacked an entitlement to oppose
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`its application for registration of the LIVE PHOTOS mark. (Docket no. 22 at 23-24). Plaintiff
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`claims that defendant's failure to answer and his admissions that he does not offer a competing
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`product and has never used the mark in connection with any product are evidence that he lacks a
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`4 In a § 1071 (b) action, the PTO record need be admitted only on motion of a party. See
`Swatch AG, 739 F.3d at 155; 15 U.S.C. § 107l(b)(3).
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`"real interest" in the proceeding. Id. By sustaining his opposition, the TT AB evidently
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`determined that defendant had standing to oppose registration of the mark under 15 U.S.C.
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`§ 1063, which allows for "[a]ny person who believes that he would be damaged by the
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`registration of a mark" to file an opposition. Whether this determination was proper is not
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`relevant to the claims currently before this court. As noted above, the district court's role here is
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`to review the evidence de novo, and defendant inarguably has a legitimate interest in the outcome
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`of a challenge to a proceeding to which he was a prevailing party. See Pro-Football, Inc. v.
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`Blackhorse, 62 F. Supp. 3d 498, 504 (E.D. Va. 2014) ("[S]tanding before the TTAB necessarily
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`establishes sufficient interest in an appeal or review of the TT AB' s determination of the
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`petition."). For this reason, reversal and vacatur of the TT AB decision cannot be justified based
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`on § 1063 standing alone.
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`iii. Distinctiveness of the LIVE PHOTOS Mark
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`Turning to the merits of plaintiffs claims, plaintiff argues that (1) the LIVE PHOTOS
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`mark is not generic, (2) the LIVE PHOTOS mark is not descriptive, (3) the LIVE PHOTOS mark
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`is suggestive, or (4) if found descriptive, it has acquired distinctiveness or secondary meaning in
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`connection with plaintiffs goods and services. (Docket no. 22 at 12-23). For these reasons,
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`plaintiff seeks an order reversing the TT AB' s denial of its application to register the LIVE
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`PHOTOS mark and requiring the Director of the USPTO to issue a certification ofregistration
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`for the mark. (Compl. ,r 47).
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`Plaintiff argues that defendant has failed to meet his burden of establishing that the LIVE
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`PHOTOS mark is generic. (Docket no. 22 at 15-20). The Lanham Act allows for registration of
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`a mark that has become "distinctive" as used in connection with an applicant's goods in
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`commerce. See 15 U.S.C. § 1052(f). Courts interpreting the "distinctiveness" requirement have
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`established three primary categories of marks entitled to different levels of protection. See Sara
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`Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,464 (4th Cir. 1996). Marks that are "fanciful,"
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`"arbitrary," or "suggestive" are considered inherently distinctive and are entitled to the highest
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`trademark protections. Id "Descriptive" marks may be registered only if they have acquired
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`"secondary meaning," which is established by showing that the "primary significance" of the
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`proposed mark is to identify the source of a product rather than the product itself. Id Finally,
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`"generic" marks are entitled to no protection. Id.
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`A mark is generic if its primary significance indicates the nature or class of the product,
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`as opposed to its source. Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996). Examples of
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`generic marks include "Convenient Store," "Dry Ice," and "Light Beer." Sara Lee Corp., 81
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`F .3d at 464. When assessing whether a proposed mark is generic, the court looks to the relevant
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`class of products-i. e. those identified in the mark's certificate of registration-and the
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`perceptions of members of the public that would be interested in purchasing those products.
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`Glover, 74 F.3d at 59. The party alleging that the mark is generic bears the burden of
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`establishing that "the primary significance of the mark to the relevant public is to identify the
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`class of product or service to which the mark relates." Id This burden can be met by offering
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`evidence such as "purchaser testimony, consumer surveys, listings and dictionaries, trade
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`journals, newspapers, and other publications." Id
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`Defendant, as a party in default, has failed to meet his burden to prove that the LIVE
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`PHOTOS mark is generic. As established in plaintiffs application for registration, the relevant
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`class of products is "[c]omputer software for recording and displaying images, video and sound."
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`(Campi. ,r 1). Defendant has offered no evidence to this court to support a finding that the
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`primary significance of the LIVE PHOTOS mark to the relevant class of consumers is to identify
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`computer software for recording and displaying images, video, and sound. Phrased another way,
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`defendant has not established that consumers primarily associate the phrase "live photos" with
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`computer photo and video software generally as opposed to plaintiffs Live Photos feature. See
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`Glover, 74 F.3d at 59 ("[I]f [defendant] had carried his burden, we would find evidence in the
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`record which establishes that when purchasers walk into retail stores and ask for white tails, they
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`regularly mean any brand of pocket or hunting knife, and not specifically [plaintiffs]
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`products.").
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`In contrast, plaintiff has offered substantial evidence to support a finding that the LIVE
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`PHOTOS mark is not generic. As established in the complaint, more than twenty (20)
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`dictionaries and thesauruses lack definitions of the phrases "live photo" or "live photos," and the
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`few that define the terms do so in reference to plaintiffs Live Photos feature. (Compl. ,r,r 2, 52).
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`Although not controlling, dictionary definitions are a useful resource for courts to consider in a
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`genericness analysis when evaluating evidence of common usage. Retail Servs., Inc. v. Freebies
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`Publ'g, 364 F.3d 535, 54~5 (4th Cir. 2004), abrogated on other grounds by Verisign, Inc. v.
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`XYZ.COM LLC, 891 F.3d 481,488 (4th Cir. 2018). And although several of plaintiffs
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`competitors offer a similar software feature, none use the phrase "live photos" to refer to their
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`products. (Compl. ,r 2, 53). This suggests that protecting the LIVE PHOTOS mark would not
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`impose any real burden on competitors or consumers attempting to differentiate similar products.
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`See JFJ Toys, Inc. v. Sears Holding Corp., 237 F. Supp. 3d 311, 333 (D. Md. 2017) (upholding
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`the validity of marks that do not "erect expensive or syntactically convoluted barriers" to a
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`competitor calling its product "by another easily definable and non-infringing name"). The
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`complaint further establishes that media coverage of these features typically uses the phrase "live
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`photos" only when referring to plaintiffs software, opting to use more general phrases like
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`"moving pictures" or "moving images" when referring to the type of feature. (Comp!. ,I12, 3,
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`28, 54 ). Based on these factors alone, the undersigned recommends a finding that the LIVE
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`PHOTOS mark is not generic.
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`In support of its motion for default judgment, plaintiff offered new evidence that the
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`LIVE PHOTOS mark is not generic. (Docket nos. 22 at 27-30, 22-1, 22-2, 22-3). This evidence
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`is not necessary to the court's findings because, as noted above, defendant has failed to establish
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`that the LIVE PHOTOS mark is generic. See Glover, 74 F.3d at 59. However, the court finds
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`this supplemental evidence relevant pursuant to its factfinding authority under FRCP 55(b).
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`First, plaintiff submitted the results of a consumer survey developed and conducted by Dr. David
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`Neal, a consultant and Executive in Residence at Duke University. (Docket no. 22-1 ). Dr. Neal
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`surveyed three hundred and eight-eight (388) consumers about how they would refer to software
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`for recording and displaying images, video, and sound. (Docket no. 22-1 11 3 .1, 4.4-4.5). Only
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`one of the survey respondents used the phrase "live photos" in response to any question,
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`suggesting that consumers do not view "live photos" as a generic term for photo and video
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`software. (Docket no. 22-1 ,r,r 2.2, 4. 7). Plaintiff also submitted expert testimony from Dr.
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`Edward Finegan, Professor Emeritus of Linguistics and Law at the University of Southern
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`California Gould School of Law. (Docket no. 22-2). Dr. Finegan conducted a linguistic analysis
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`of the phrase "live photos" and concluded that the phrase is not generic based on his review of
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`several sources including dictionaries, naming conventions for competing products, press
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`articles, plaintiffs own use of the phrase, and other evidence. (Docket no.22-21111.6). Finally,
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`plaintiff provided expert testimony from Dr. Gregory Carpenter, Harold T. Martin Professor of
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`Marketing at Northwestern University's Kellogg School of Management. (Docket no. 22-3).
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`Dr. Carpenter reviewed marketing materials including press releases, online articles, videos, and
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`print ads, and he concluded that consumers associate "Live Photos" with plaintiffs brand due to
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`plaintiffs unique and consistent marketing approach. (Docket no. 22-3 ,r 15, App. B). This
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`evidence is further support for the undersigned's recommended finding that plaintiffs LIVE
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`PHOTOS mark is not generic.
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`A finding that plaintiffs LIVE PHOTOS mark is not generic does not automatically
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`entitle it to trademark protection. As noted above, a mark may be registered if it is distinctive,
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`meaning that it is fanciful, arbitrary, or suggestive, or that it is descriptive, but it has acquired
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`secondary meaning. See Sara Lee Corp., 81 F .3d 455 at 464. Plaintiff argues that its mark is
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`entitled to registration because it is suggestive. (Docket no. 22 at 12-15). A suggestive mark is
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`one that connotes some "quality, ingredient, or characteristic of a product," but that does not
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`explicitly describe the product. Teaching Co. v. Unapix Entm 't, Inc., 87 F. Supp. 2d 567,576
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`(E.D. Va. 2000). Suggestive marks require that a consumer "use his or her imagination to reach
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`a conclusion as to the nature of the goods or to connect the mark with the goods." Id Examples
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`of suggestive marks include "Coppertone" sunscreen, "Orange Crush" soda, and "Playboy"
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`magazine. Sara Lee Corp., 81 F.3d at 464. In contrast, a descriptive mark describes "the
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`intended purpose, function, size, desirable characteristic, use, or the nature of the product, or the
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`class of users or end effect upon the user." Teaching Co., 87 F. Supp. 2d at 576. Examples of
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`descriptive marks include "Chap Stick" lip balm, "Food Fair" grocery stores, and "No Spot" car
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`wash. Id. at 576 n.4. Unsurprisingly, the distinction between a suggestive and descriptive mark
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`is a narrow one, and courts have long struggled with drawing a principled line in the sand.
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`Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1528 (4th Cir. 1984).
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`Although undoubtedly a close call, the unchallenged evidence supports plaintiffs claim
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`that the LIVE PHOTOS mark is suggestive. Rather than explicitly identifying the function of the
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`Case 1:21-cv-01003-TSE-JFA Document 29 Filed 01/14/22 Page 14 of 19 PageID# 1843
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`Live Photos feature, the LIVE PHOTOS mark merely alludes to it, requiring additional
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`information before a consumer can properly understand Live Photos as a software program that
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`blends aspects of photographs and videos into a hybrid medium. (Compl. 1 2). Such a tenuous
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`connection between the mark and the product requires the exercise of consumer imagination that
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`courts have found to be characteristic of a suggestive mark. See Pizzeria Uno Corp., 7 4 7 F .2d at
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`1528. Plaintiff highlights several factors that weigh in favor of a finding that the LIVE PHOTOS
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`mark is suggestive. 5 As plaintiff notes, "Live Photos" could refer to software that creates very
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`vivid pictures or pictures with a fixed lifespan or to a program that transmits pictures to an
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`audience immediately upon their generation. (Docket no. 22 at 13). That the LIVE PHOTOS
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`mark is open to interpretation is strong evidence that it is suggestive. See Teaching Co., 87 F.
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`Supp. 2d at 577. Furthermore, press coverage of the Live Photos feature at its launch included
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`detailed explanations of how the software operates. (Compl. 1128, 55). This would hardly have
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`been necessary if the mark was sufficiently descriptive of the product.
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`Even if considered descriptive, the undersigned recommends a finding that the LIVE
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`PHOTOS mark has nevertheless acquired secondary meaning. A descriptive mark is sufficiently
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`distinctive as to warrant trademark protections if it has acquired secondary meaning. See Sara
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`Lee Corp., 81 F.3d at 464. Secondary meaning exists when consumers understand that the mark,
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`used in context, refers to the specific product that it is intended to identify and not what it
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`5 Plaintiff notes repeatedly that the US PTO examiner who reviewed its application found
`that the LIVE PHOTOS mark is suggestive, (Docket no. 22 at 1, 7, 14), but this is not
`particularly persuasive. USPTO determinations that a mark is suggestive or descriptive are
`entitled to "due regard" and are primafacie evidence of the mark's status, see Lone Star
`Steakhouse & Saloon, Inc., v. Alpha of Va., Inc., 43 F.3d 922, 934 (4th Cir. 1995), but any
`probative value in the examiner's findings here is offset by the TTAB's conflicting finding that
`the mark is generic, see Gang Cao v. Apple, Inc., Opposition No. 91239006 (T.T.A.B. June 28,
`2021).
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`ordinarily describes. Perini Corp. v. Perini Const., Inc., 915 F.2d 121, 125 (4th Cir. 1990).
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`Factors relevant to this analysis include "(1) advertising expenditures; (2) consumer studies
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`linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product; (5)
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`attempts to plagiarize the mark; and (6) the length and exclusivity of the mark's use." Id.
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`Substantially exclusive and continuous use of a mark in commerce for five years before a claim
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`of distinctiveness arises is primafacie evidence that the mark has become distinctive. 15 U.S.C.
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`§ 1052(f).
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`As an initial matter, plaintiff has established substantially exclusive and continuous use
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`of the LIVE PHOTOS mark in commerce for the requisite period, pursuant to § 1052(f).
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`Plaintiff launched the Live Photos feature in 2015 and has included it in versions of its iPhone
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`device since then and in versions of its iPad device since March 2016. (Compl. ,r,r 19, 22). The
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`few limited examples of use of the LIVE PHOTOS mark by a party other than plaintiff appear to
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`have been minor and were largely inactive by the time plaintiff filed its suit. (Compl. ,r,r 40, 41 ).
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`Notably, although several of plaintiffs competitors offer a feature similar to plaintiffs Live
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`Photos software, none use the phrase "live photos" to describe their products. (Compl. ,r,r 2, 53).
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`This evidence is sufficient to establish a prima facie case that the LIVE PHOTOS mark is
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`distinctive. See 15 U.S.C. § 1052(f).
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`Several additional factors support a finding that the LIVE PHOTOS mark has acquired
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`secondary meaning. See Perini Corp., 915 F.2d at 125. First, plaintiffs advertising
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`expenditures for the LIVE PHOTOS mark and its resulting revenue have been extensive.
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`(Compl. ,r,r 3, 19, 22, 45). Plaintiff has produced several commercials, print ads, press releases,
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`and website articles promoting the Live Photos feature, resulting in millions of impressions
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`Case 1:21-cv-01003-TSE-JFA Document 29 Filed 01/14/22 Page 16 of 19 PageID# 1845
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`among consumers.6 (Compl. 113, 19, 23-27). The feature is pre-installed on plaintiffs iPhone
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`and iPad devices, which have generated billions of dollars in global sales for plaintiff. (Compl.
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`11 22, 45). Although the evidence does not establish what exact portion of plaintiffs advertising
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`expenditures or sales success is directly attributable to the Live Photos feature, it is clearly a
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`significant amount given the extent of plaintiffs national sales. (Compl. 1, 22, 45); see Int'!
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`Bancorp, LLC v. Societe Des Baines De Mer Et Du Cercle Des Etrangers A Monaco, 192
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`F. Supp. 2d 467,481 (E.D. Va. 2002).
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`Second, although the record does not include any direct consumer studies, Dr.
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`Carpenter's undisputed expert testimony is relevant to determining consumer perceptions of the
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`LIVE PHOTOS mar