Plaintiff’s predecessor in interest adopted the mark iBooks for both physical books and ebooks in 1999. It had some success, and had annual sales of up to $2 million by 2005. Its trademark application however had been rejected on descriptiveness and mis-descriptiveness grounds. In 2006 the CEO of predecessor died in a car accident, plunging it into bankruptcy. Plaintiff purchases all assets, including the iBook mark, for $125k. This becomes an important fact, as it suggests an extremely low value for the mark at that point. Sales never exceed ‘modest’ (perhaps $100k annually) from that point on. Apple adopts the mark iBook for its eBook reader, in 2010. I am currently reading the novel ‘Spin‘ using that reader. Apple purchased a prior reg for iBook covering some hardware and software. Plaintiff approaches Apple attempting to license, Apple doesn’t pursue, plaintiff sues, based on common law rights.
Held (at summary judgment): iBook is a descriptive mark, and secondary meaning has not been established, so there is no trademark.