This case was last updated from U.S. District Courts on 10/10/2022 at 05:19:53 (UTC).

Apple, Inc. v. Gang

Case Summary

On August 30, 2021, Apple Inc. (“Plaintiff” or “Apple”), represented by Michael Kwang-Min Kim of Blankingship & Keith PC, and Robert Emmett Scully, Jr. of Stites & Harbison PLLC, filed an intellectual property lawsuit against Gang Cao (“Defendant” or “Cao”), seeking enforceability, declaratory relief, and judicial review of the TTAB order. This case was filed in the United States District Court in the Eastern District of Virginia with Judges T. S. Ellis, III and John F. Anderson presiding.

In the complaint, the plaintiff alleged that, “This action arises out of Canadian citizen Gang Cao’s baseless attempt to prevent Apple from obtaining a federal trademark registration for the mark LIVE PHOTOS—which Apple applied to register for “Computer software for recording and displaying images, video and sound” in January 2016 (Serial No. 86/868,731)—on the basis that the mark is purportedly generic or descriptive without secondary meaning. But LIVE PHOTOS is neither generic nor descriptive. Rather, it is a suggestive term that Apple began using nearly six years ago as a unique name for its celebrated product feature.”

The plaintiff further alleged that, “On June 28, 2021, the TTAB sustained Cao’s Opposition finding that Cao had standing to oppose the Application for the mark LIVE PHOTOS (despite not using the term or offering a competing product) and that the term was generic, descriptive, and had not acquired distinctiveness. In doing so, the TTAB seemed to ignore that Cao bore the burden of proof. Indeed, the TTAB noted the thoroughness of Apple’s objections to Cao’s flawed evidence.”

The plaintiff also alleged that, “The TTAB also seemed to ignore well-established precedent that a smattering of instances of either generic or descriptive use of a term does not make that term generic. Rather, what matters is whether consumers primarily understand the term as generic. Nonetheless, the TTAB allowed Cao’s smattering of documents to carry the day, despite the strong doubts as to admissibility, the lack of any generic or descriptive use of “live photos” by well-established news sources, the absence of any generic or descriptive use of “live photos” by Apple’s primary competitors, or any dictionaries defining “live photos” as a generic term.”

There are two claims for relief laid down by the plaintiff. The first claim deals with a request for judicial review of the TTAB decision (15 U.S.C. § 1071(b)(1) AND 37 CFR § 2.145(c)). The second claim is for declaratory judgement of validity and enforceability.

In the prayer for relief, the plaintiff has requested the court for an order for judicial review of the TTAB decision and that the court declare that Apple’s application for the live photos mark is not generic or descriptive and that it has distinctiveness and a valid and enforceable trademark. Plaintiff further requests the court grant attorneys’ fees and cost or any other item that the court deems appropriate.

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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    1:21-CV-01003

  • Filing Date:

    08/30/2021

  • Case Status:

    Disposed - Other Disposed

  • Case Type:

    Intellectual Property - Trademark

Judge Details

Presiding Judge

T. S. Ellis, III

Referral Judge

John F. Anderson

 

Party Details

Plaintiff

Apple, Inc.

Defendant

Gang Cao

Attorney/Law Firm Details

Plaintiff Attorneys

Michael Kwang-Min Kim

Attorney at Blankingship & Keith PC (Fairfax)

4020 University Drive, Suite 300

Fairfax, VA 22030

Robert Emmett Scully, Jr.

Attorney at Stites & Harbison PLLC

1800 Diagonal Road, Suite 325

Alexandria, VA 22314

Dale Margaret Cendali

Attorney at Kirkland & Ellis LLP (NY-NA)

601 Lexington Ave

New York, NY 10022

Eric Loverro

Attorney at Kirkland & Ellis LLP (NY-NA)

601 Lexington Ave

New York, NY 10022

Mary Mazzello

Attorney at Kirkland & Ellis LLP (NY-NA)

601 Lexington Ave

New York, NY 10022

Megan Leigh McKeown

Attorney at Kirkland & Ellis LLP (TX-NA)

609 Main Street

Houston, TX 77002

 

Court Documents

#33

(#33) FINAL Report on the filing or determination of an action. (lber) (Entered: 02/09/2022)

#32

(#32) ORDERED that plaintiff's motion for default judgment (Dkt. 20) is GRANTED (See Order for Details). Signed by District Judge T. S. Ellis, III on 2/8/2022. (lber c/s) (Entered: 02/09/2022)

31 #2

Exhibit Exhibit B- Email to Gang Cao

31 #1

Exhibit Exhibit A-Int'l Registered Mail Envelope

#31

(#31) AFFIDAVIT of Service for Proposed Findings Of Fact and Recommendations served on Gang Cao on January 19, 2022, filed by Apple, Inc.. (Attachments: #1 Exhibit Exhibit A-Int'l Registered Mail Envelope, #2 Exhibit Exhibit B- Email to Gang Cao)(Scully, Robert) (Entered: 01/20/2022)

30 #1

Exhibit PRoposed Findings of Fact and Recommendations

#30

(#30) Warning to Gang Cao of The Adverse Consequences of Failing to Object to the Proposed Findings of Fact and Recommendations by Apple, Inc. (Attachments: #1 Exhibit Proposed Findings of Fact and Recommendations)(Scully, Robert) Modified text on 1/19/2022 (lber). (Entered: 01/18/2022)

#29

(#29) PROPOSED FINDINGS OF FACT AND RECOMMENDATIONS re #20 MOTION for Default Judgment as to Gang Cao filed by Apple, Inc. Objections to R&R due by 1/28/2022. Signed by Magistrate Judge John F. Anderson on 01/14/2022. (lber) (Entered: 01/14/2022)

#20

(#27) Minute Entry for proceedings held before Magistrate Judge John F. Anderson:Motion Hearing held on 1/14/2022 re #20 MOTION for Default Judgment as to Gang Cao filed by Apple, Inc. Appearance of counsel for plaintiff. Matter is uncontested. Report and Recommendation to Follow. (Tape #FTR.)(wgar, ) (Entered: 01/14/2022)

#9

#8

#7

#6

#5

#4

#3

#2

#1

51 More Documents Available
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Docket Entries

  • 02/09/2022
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  • Docket(#33) FINAL Report on the filing or determination of an action. (lber) (Entered: 02/09/2022)

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  • 02/08/2022
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  • Docket(#32) ORDERED that plaintiff's motion for default judgment (Dkt. 20) is GRANTED (See Order for Details). Signed by District Judge T. S. Ellis, III on 2/8/2022. (lber c/s) (Entered: 02/09/2022)

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  • 01/20/2022
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  • Docket(#31) AFFIDAVIT of Service for Proposed Findings Of Fact and Recommendations served on Gang Cao on January 19, 2022, filed by Apple, Inc.. (Attachments: #1 Exhibit Exhibit A-Int'l Registered Mail Envelope, #2 Exhibit Exhibit B- Email to Gang Cao)(Scully, Robert) (Entered: 01/20/2022)

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  • 01/18/2022
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  • Docket(#30) Warning to Gang Cao of The Adverse Consequences of Failing to Object to the Proposed Findings of Fact and Recommendations by Apple, Inc. (Attachments: #1 Exhibit Proposed Findings of Fact and Recommendations)(Scully, Robert) Modified text on 1/19/2022 (lber). (Entered: 01/18/2022)

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  • 01/14/2022
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  • Docket(#29) PROPOSED FINDINGS OF FACT AND RECOMMENDATIONS re #20 MOTION for Default Judgment as to Gang Cao filed by Apple, Inc. Objections to R&R due by 1/28/2022. Signed by Magistrate Judge John F. Anderson on 01/14/2022. (lber) (Entered: 01/14/2022)

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  • 01/14/2022
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  • Docket(#28) Notice of Substitution of Counsel of Megan Leigh McKeown by Robert Emmett Scully, Jr on behalf of Apple, Inc. (Scully, Robert) (Entered: 01/14/2022)

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  • 01/14/2022
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  • Docket(#27) Minute Entry for proceedings held before Magistrate Judge John F. Anderson:Motion Hearing held on 1/14/2022 re #20 MOTION for Default Judgment as to Gang Cao filed by Apple, Inc. Appearance of counsel for plaintiff. Matter is uncontested. Report and Recommendation to Follow. (Tape #FTR.)(wgar, ) (Entered: 01/14/2022)

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  • 01/13/2022
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  • Docket(#26) ORDER granting #8 Motion for Pro hac vice Appointed Mary Mazzello for Apple, Inc.. Signed by Magistrate Judge John F. Anderson on 1/13/2022. (clar, ) (Entered: 01/13/2022)

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  • 01/13/2022
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  • Docket(#25) ORDER granting #9 Motion for Pro hac vice Appointed Megan Leigh McKeown for Apple, Inc.. Signed by Magistrate Judge John F. Anderson on 1/13/2022. (clar, ) (Entered: 01/13/2022)

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  • 01/13/2022
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  • Docket(#24) ORDER granting #10 Motion for Pro hac vice Appointed Eric Loverro for Apple, Inc.. Signed by Magistrate Judge John F. Anderson on 1/13/2022. (clar, ) (Entered: 01/13/2022)

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19 More Docket Entries
  • 08/30/2021
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  • Docket(#10) Motion to appear Pro Hac Vice by Eric Loverro and Certification of Local Counsel Robert E. Scully, Jr. Filing fee $ 75, receipt number AVAEDC-7970645. by Apple, Inc.. (Scully, Robert) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#9) Motion to appear Pro Hac Vice by Megan Leigh McKeown and Certification of Local Counsel Robert E. Scully, Jr. Filing fee $ 75, receipt number AVAEDC-7970631. by Apple, Inc.. (Scully, Robert) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#8) Motion to appear Pro Hac Vice by Mary Mazzello and Certification of Local Counsel Robert E. Scully, Jr. Filing fee $ 75, receipt number AVAEDC-7970626. by Apple, Inc.. (Scully, Robert) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#7) Motion to appear Pro Hac Vice by Dale Margaret Cendali and Certification of Local Counsel Robert E. Scully, Jr. Filing fee $ 75, receipt number AVAEDC-7970597. by Apple, Inc.. (Scully, Robert) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#6) NOTICE of Appearance by Michael Kwang-Min Kim on behalf of Apple, Inc. (Kim, Michael) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#5) NOTICE by Apple, Inc. re #1 Complaint Report on the Filing or Determination of an Action Regarding a Patent or Trademark (Scully, Robert) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#4) Financial Interest Disclosure Statement (Local Rule 7.1) by Apple, Inc.. (Scully, Robert) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#3) Proposed Summons re #1 Complaint by Apple, Inc.. (Scully, Robert) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#2) Civil Cover Sheet re #1 Complaint by Apple, Inc.. (Scully, Robert) (Entered: 08/30/2021)

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  • 08/30/2021
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  • Docket(#1) Complaint ( Filing fee $ 402, receipt number AVAEDC-7970425.), filed by Apple, Inc..(Scully, Robert) (Entered: 08/30/2021)

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