Wanna take a “Slofie”?

At its iPhone 11 Pro unveiling, Apple showed off the new slow-motion selfies feature to the iPhone 11 models – or as Apple jokingly referred to them as “Slofies”. Although the made-up word “Slofies” did not sound like a serious word, Apple has filed a trade mark application for “Slofie” in the United States in relation to, amongst others, “downloadable computer software for use in capturing and recording video”.

Outside its marketing campaign for its new iPhones, Apple does not refer to the clips as Slofies – interestingly, the feature is simply referred to as “slo-mo” in Apple’s camera app on the iPhone 11. This move to trade mark the term appears to be more calculated in preventing other app developers and phone manufacturers from riding off its made-up word.

It is, however, probable that Apple intends to use “Slofie” as a trade mark in the future, as it will need to show use of the trade mark “in commerce” in the United States before the trade mark application will be allowed to proceed to registration and in order to maintain and enforce its registration in the United States.

There may also be some risk that the term “Slofie” may become generic in the future if it is used so much in the everyday that it loses the special qualities that made if worthy of being a trade mark in the first place. In other words, there is a danger that the word will become the common term used to refer to a slow-motion selfie. If this happens, it will become difficult to maintain and enforce the trade mark.

Examples of trade marks that have over the years become generic include: CELLOPHANE, ASPIRIN, ESCALATOR, LAUNDROMAT, to name a few.

So how will Apple prevent the “Slofie” trade mark from becoming generic? Firstly, the trade mark in its word-mark form must at all times be used as an adjective, and not as a noun or a verb, and not in a possessive/genitive form. For example, Slofie app – and not simply Slofie. Secondly, Apple should not forget to use the letters TM or ®/REG (when registered). Thirdly, Apple will need to ensure that its “Slofie” trade mark is not being used (or abused) without authority by third parties – so as to avoid general or generic usage of the mark.

However, given the newness of the “Slofie” trade mark – I don’t think that Apple need to worry about its mark becoming generic any time soon.