When I first saw a TV advertisement for the myTouch telephone, I thought instantly of the iTouch, which as I understand it, is an iPhone without the phone app (I have never held either in my hands and have only seen the former in anyone else's.) And having spent a few years working occasionally on the linguistic side of trademark law, I wondered if Apple did not have a case for trademark infringement. One of the tests is that the new mark evoke the notion that the product it identifies might have the same origin as the product identified by the earlier mark. If surveys were to demonstrate that a significant proportion of consumers share my perception, Apple would be a major step forward toward proving its case.
A case for infringement would have to consider the similarity of the marks. They are, of course, very similar. We have in the case of “iTouch,” a lower case “i” followed by the word “Touch,” and in the case of “myTouch,” we have a lower case “my” followed by the same word. The letter “i” when capitalized and only when capitalized refers to the person speaking or writing something. Here, though, it is not capitalized. In the case of “my” we have a word that refers to the speaker/writer of something or, in the case, of “myTouch,” the owner/user. One thing is clear, the “i” of “iMac” or“iPod” or “iTunes” or or “iPhone” is normally not intepreted as referring to the owner/user.
In fact, when the iMac was first introduced, Steve Jobs claimed (see the title link)
The iMac comes from the marriage of the excitement of the internet with the simplicity of Macintosh.He went on to say that it was designed with the fact that the primary use people wanted a personal computer for was to get onto the internet. Jobs cited a set of "i"-words that he wanted to associate with the iMac, namely "internet, individual, instruct, inform, inspire." Therefore, the voice of he creator provides compelling evidence that there is no semantic connection between the “i” of “iTouch” and the “my” of “myTouch.” When he associates the iMac with these other "i"-words, he severs the relationship between "i" and the owner/user more completely even though one of these words is "individual." Note that this word is not equivalent in meaning to "personal." In fact, the iMac was and is used in environments in which many individuals use a particular machine.
The fact that the lower case prefix”i” is attached to a wide range of products distributed by Apple argues for it having only the meaning “a product distributed by Apple.” Originally, this “i” primarily referred to the internet though Jobs added some other associations. But the iPod breaks this connection. Apple crated iTunes in the hope that people would buy music using iTunes and then downloading it onto their iPods. That would involve internet connectivity. However, one could use an iPod without ever connecting it to a a program that connected to the internet by simply ripping one's own or a friend's music and converting it to a format the iPod could read and downloading it directly.
It is clear that there is a significant morphological similarity between “iTouch” and “myTouch” for they share a morpheme. However, the first has a prefix that refers to the internet primarily but also to other things or just signifies that the product is made by Apple, and the other has a prefix that refers to the owner/user. In addition to the morphological similarity between "iTouch" and "myTouch," thre is an enormous overlap in product function. In fact the only substantive difference is that the iTouch cannot be used to make calls. So, Apple would find it difficult to keep HTC and T-Moble from using the mark “myTouch.” Nevertheless, as I said, I suspect a survey of consumers aware of the iTouch, confronted with this new product, would connect “myTouch” to “iTouch” and thereby to Apple. At the very least, HTC would seem to be ripping off some of Apple's market good will. I am not a trademark lawyer but I think that is a 'no no.”