Second Circuit Affirms Dismissal of Trademark, Holding “ibooks” Does Not Infringe “iBooks”

In an expansive opinion, the Second Circuit held that that The Apple “iBook” is not likely to be confused with the “ibooks” mark used since 2006 by several publishers.  J.T. Colby & Companym Inc., v. Apple Inc., 2d Cir., No. 13-2227-cv, 9/29/2014.  Rather, the court found that both physical and electronic books bearing the mark could induce no more than a “mere possibility” of confusion.

The court was persuaded that the plaintiff’s imprint was “frequently surrounded by contextual information that associates it with a publishing company,” in stark contrast to defendant’s “virtual marketplace for buying e-books.”  Upholding  the District Court’s decision, the Second Circuit maintained that no genuine issue of material fact was raised as to whether there was any likelihood that an appreciable number of ordinarily prudent purchasers were likely to be misled.

Further, plaintiffs failed to raise a genuine issue of dispute about defendant’s bad faith, noting that Apple “conducted an extensive trademark clearance process that did not reveal plaintiff’s use of the ‘ibooks’ imprint.”