A trademark applicant dissatisfied with the decision of the USPTO has two remedies under the Lanham Act: either appeal the decision to the United States Court of Appeals for the Federal Circuit, see 15 U.S.C. § 1071(a), or file a civil action in federal district court, see 15 U.S.C. § 1071(b). Under § 1071(a), an appeal to the Federal Circuit is taken “on the record” before the USPTO, see 15 U.S.C. § 1071(a)(4), and the USPTO's factual findings will be upheld if they are supported by “substantial evidence,” see Recot Inc, v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000); however, in a civil action under § 1071(b), “the district court reviews the record de novo and acts as the finder of fact.” Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 155 (4th Cir. 2014). In a § 1071(b) action, the district court may consider evidence that was not before the USPTO.

In an opposition to the marks REALITY COMPOSER and REALITY CONVERTER for downloadable software used by developers working on other software applications to produce and edit three-dimensional effects in augmented reality (“AR”), the TTAB found the marks to be merely descriptive of the goods. ZeroDensity Yazilim Anonim Sirketi v. Apple Inc., Opposition Nos. 91266285 and 91266754 (TTAB Dec. 22, 2023). 

On appeal to the Eastern District of Viginia, however, Apple submitted new evidence, including four expert reports, that led the district court to a different conclusion from the TTAB, namely that the REALITY COMPOSER and REALITY CONVERTER marks instead "are both suggestive and have acquired secondary meaning." Apple, Inc. v. Zerodensity Yazilim Anonim Sirketi, No. l:24-cv-284, 2025 WL 2198598 (E.D. Va. Aug. 1, 2025). Although both parties engaged in discovery, Apple provided far more new evidence than ZeroDensity. 

One of Apple's experts, a professor of linguistics, explained that “ordinary speakers of American English—including those with backgrounds in science and technology—will not readily understand how these terms relate to Apple's product[s] or view these terms as describing qualities or properties of these products” because that relationship requires “inferences” that are “metaphorical in nature.” Furthermore, after examining dictionaries and the Corpus of Contemporary American English, a linguistic database compiling a wide array of print and online sources, the professor found no semantic link between “reality” and “composer” or “converter” such that consumers would consider the marks descriptive. 

     As to third-party usage, plaintiff correctly argues that if the marks were descriptive, one would expect third parties to use them. See Pizzeria Uno Coro, v. Temple, 747 F.2d 1522, 1533 (4th Cir. 1984) (“Whether the dominant term is suggestive or merely descriptive is most easily resolved by considering whether it is a word in common use, and one often employed in describing a product.”). . . . [But] out of eight third-party entities that market competing products, none use any variation of “reality composer” or “reality converter” as names for, or to describe, their software tools.

"Particularly compelling" was a survey of 561 software developers who were asked open- and closed-ended questions about whether they understood “reality composer” and “reality converter” as descriptive terms.

In response to the open-ended questions, “not a single respondent described the tested products using the phrases REALITY COMPOSER or REALITY CONVERTER.” . . . For the closed-ended questions, those two phrases were the least likely to be selected to describe the goods at issue among all the phrases presented. 

Apple's software development expert also concluded that, based on his 35 years of experience running software development companies and his analysis of the SWEBOK
Guide to Software Engineering (a respected authority in the field of software engineering), “[s]oftware developers do not use the phrase ‘reality composer,”' the term “composer” is “not customarily used or understood to describe software programs or people who write software applications,” and the word “compose” is “not the normal and customary way in which software and/or app developers refer to writing computer code.” This expert opinion further was that “the combined term ‘reality converter' does not describe any product given the vague nature of the word ‘reality'” without a preceding modifier, such as “virtual” or “augmented.”  

     Plaintiffs unanimous expert reports are unrebutted by defendant, which did not produce its own experts but only disputed the relevance and accuracy of a portion of plaintiffs experts' findings. As discussed above, plaintiffs experts describe how Apple's marks are used in ways that are not descriptive (e.g., as a brand name), and no competitor uses these phrases or variations of them to describe their competing products. In sum, the evidence in this record establishes that Apple's marks are suggestive and therefore registrable.

The Court also noted that even if a mark was descriptive, it can be registered as a trademark if it has acquired secondary meaning, which exists when “a substantial number of present or prospective customers understand the designation when used in connection with a business to refer to a particular person or business enterprise,” citing Perini Corp. v. Perini Const., Inc., 915 F.2d 121, 125 (4th Cir. 1990). 

Although Apple did not claim acquired distinctiveness under Section 2(f) in the TTAB opposition proceeding, in the appeal to the district court, Apple submittted unrebutted evidence corroborating its exclusive and continuous use of its marks for the last five years including extensive evidence of its advertising efforts resulting in “millions of impressions”; and “sales data a showing that Reality Composer has been downloaded as a stand-alone application millions of times and Reality Converter has been downloaded tens of thousands of times.”  

Most persuasive]y, plaintiffs expert, Professor Humphreys, gathered vast amounts of media, consumer, and other internet user data showing that consumers associate REALITY COMPOSER and REALITY CONVERTER uniquely with Apple.

Thus, the Court reversed the TTAB decision and directed the Director of the USPTO to register REALITY COMPOSER and REALITY CONVERTER. 

The TTABlog commented: "If you've got the dough, review by way of civil action is the way to go."