–Dan Kelly, Attorney

Can you spot the genuine iPad?

Back in July, I blogged about my then-discovery that Apple did not own the federal trademark registration for iPhone.  Needless to say, when I heard about Apple’s new iPad product, I just had to see if they were out in front in securing trademark rights to this name.  They’re not, at least not in the U.S.  As you may have read in the Wall Street Journal here and here, Fujitsu owns a pending U.S. trademark application for IPAD for use in connection with “hand-held computing device for wireless networking in a retail environment.”  Fujitsu claims first use of the mark in January 2002.

Apple?  Well, it appears that Apple is using a proxy (itself a subject for a whole separate discussion) by the name of IP Application Development to secure registered rights to the IPAD trademark.  That application claims priority to a July 2009 application filed in Trinidad and Tobago.  (Trinidad and Tobago?  Another discussion topic.)

Let’s see:  Marks are identical, goods are highly similar, if not identical, and priority of January 2002 versus July 2009.  Slam dunk, right?  “No contest,” you say?  Apple, pick again?

NOT SO FAST!  No, this may get interesting.  You see, Fujitsu’s application to register IPAD lapsed and was declared abandoned, only to be revived in June 2009 — a mere month before Apple’s first apparent claim to rights.  This makes for a much closer race.  Further, Apple (not IP Application Development) has filed extensions of time to oppose Fujitsu’s IPAD trademark application–extensions that will expire on February 28.  We should know Apple’s next move within a month’s time.

My assessment?  Unlike horseshoes and hand grenades, closer does not count for much here.  Priority is priority, and Apple is likely to face a difficult time surmounting some eight years of common law rights that appear to belong to Fujitsu, even if it could somehow bring down Fujitsu’s application, which doesn’t look promising.  (Trademark geeks see here for reason.)

Combined with the iPhone kerfuffle, I am now really wondering what Apple’s trademark clearance process and discussions are like.  Selling iPods and iPhones is like printing money, so maybe Apple believes that it can just buy its way through all of these thickets.  Even so, wouldn’t you want the purchase complete before the product unveiling?

  • Great points Dan. Apple has a brand vernacular it wants to follow and seems willing to take on anyone to achieve it. This will be an interesting case and may end up in law school classes. It should certainly be part of branding and product marketing curriculum.
    This could turn into an interesting slugfest.
    Also, it looks like kerfuffle is the word of the week. You can even have an email address with @kerfuffle.com. Take a look at http://www.kerfuffle.com.

  • Anonymous

    But doesn’t Apple have a pretty good argument that Fujitsu’s iPad mark is confusingly similar to iP_o_d? And if they lose, they’ll lose on the basis of the difference in the goods, which puts them partway towards a pretty good argument that the goods of the two iPads are different enough that there’s no confusion.

  • Dan Kelly

    Anon.,
    You raise a good point. Apple’s claimed first use date for IPOD is October 2001, which does get them behind Fujitsu’s IPAD claimed first use date by a few months, but I think it is not a foregone conclusion that if Apple asserts its rights in IPOD and wins that it will necessarily turn on distinguishing the goods. Even if it does, it will be much closer in the case if IPAD vs. IPAD — when the marks are identical, the goods need not be as similar to prove likely confusion.