Earlier this week Apple unveiled its long awaited tablet, now known as the Apple iPad. While much of the conversation has been around justifying the purchase, others have been more concerned with the name. First, there was a sketch on MADtv a few years back about an iPad feminine product, and now it’s coming to light that as of this writing, three companies (Fujitsu, MagTek, and STMicroelectronics) have been using the name iPad as either the name of their device, or as an acronym.
Now the big question is whether or not Apple is violating any trademarks and if so, if the company will either have to change the name of its new tablet or reach a settlement.
Since I’m not an attorney, I reached out to Doug Wolf, Co-Chair Trademarks, from Wolf Greenfield & Sacks for his opinion, and have quoted him below: [disclaimer: Doug has advised me in the past]
“Just because Fujitsu has the senior rights does not mean that they can stop Apple. They need to demonstrate that they are in a sufficiently close marketplace or other such factors so that the consuming public may be confused as to source. Would someone buying the Apple iPad believe it comes from Fujistu (or vice-versa)? Not sure that this is necessarily the case since the purposes of the goods seem to have some difference and the price points are probably significant. Plus, the Apple product will have the housemark APPLE all over the place (and Fujitsu will have its mark) that many of the determinative factors in trademark infringement analysis may possibly favor APPLE.
One interesting note, but not of real trademark significance, is that Apple filed this application in Trinidad to establish an early date (July 2009) and then filed in the US. They also filed the mark in the name of a company called IP Application Development which is probably intended to preclude detection. They need to be very careful if they are going to transfer that mark to Apple, Inc. since they need to have set up IP as a legitimate business rather than merely for filing and transferring the mark to Apple, Inc. later. If they created the holding company merely for the purpose of filing the application with the decision to transfer later, they could be jeopardizing their filing.
Finally, one of the problems with marks like IPAD is that the fewer the letters, the more likely you will have a crowded field. The Trademark Office basically gives no weight to the letter “I” since it has been determined to stand for electronic or internet. I understand the goal of Apple to continue its family of “I” marks, but it carries many difficulties in creating a distinguished brand when the number of other short “I” marks already exist.”
I then asked Doug if Apple runs the risk of losing this battle if more companies surface that have been using the name iPad. His response is below:
“No. Picking a 4 letter mark with the first letter being “generic” is very difficult, almost impossible to clear. I am sure that they have litigation in the budget and/or money to try to buy these other marks.”
With Apple now being a $50+ billion company, according to Steve Jobs, I’d say that there’s plenty of money in there for some litigation.
It will be interesting to see what happens next. Apple was previously in a trademark dispute with Cisco over the iPhone name, but then both sides reached an agreement, allowing each to be free to use the “iPhone” trademark on their products throughout the world. Will the same thing happen again for Apple? We’ll see soon enough.
