A DISCUSSION OF LAW AND JOURNALISM

Saber Rattling and the iPad: Truth v. Media Myth About the “iPad” Trademark

By Ted Wills

Used under Creative Commons license from Flickr user,

Within hours of the unveiling of the iPad, Apple’s newest electronic device, word of a possible Apple misstep hit news sites. In addition to the new device’s moniker being the butt of jokes, major media outlets gleefully reported what appeared to be a serious trademark problem for Apple’s nascent iPad brand. The Japanese company Fujtisu already has a device called an iPad. Fujitsu has been seeking a trademark registration for its iPad since 2003. Fujitsu announced that “it is aware of . . . . the possible infringement on our trademark.” Fujitsu’s trademark lawyer, Edward Pennington of Hanify & King, described Apple’s position as “awkward.”

But a closer look at trademark law and Fujitsu and Apple’s legal filings cast doubt on Mr. Pennington’s assessment of Apple’s position and may disappoint the journalists who smell blood in the water. Dan Hunter, an intellectual property professor at New York Law School, believes that Apple will have little difficulty in defending its trademark position for iPad. “Fujitsu will probably do some saber rattling and Apple will do some saber rattling back. But in the end, Apple is in a good position to defend against any infringement claims from Fujitsu.”

The  “use-based” U.S. trademark system decidedly weighs in Apple’s favor. A brand owner’s use of a mark defines the scope of the trademark protection. Take, for example, the brand name “Apple.” Apple Computer is not the only company that owns a trademark in “Apple.” Apple Corps, owner of Apple Records (of Beatles fame) uses “Apple” for the production of music. Apple Archery Products, LLC uses  it for the production of power tools used for making and maintaining archery equipment. Yet all of these companies have registered trademarks in the brand “Apple,” and Apple Computer can’t prevent these other companies from using the Apple brand for their products. Apple Computer’s trademark protection over its Apple brand extends only to its use: consumer electronics.

To succeed in an infringement claim against Apple, Fujitsu would need to prove “consumer confusion,” a bedrock principle in trademark law. Trademarks are intended to help consumers identify and distinguish one company’s goods and services from another. A company can be barred from using a trademark if consumers are likely to be confused  over which company produced a particular product. Thus, Apple Computer, Apple Corps., and Apple Archery can all own trademarks in the brand “Apple” because when consumers see “Apple” on a CD or on archery tools, they do not mistake the source of the respective products. But Dell cannot produce an “Apple” computer because consumers would be confused whether Apple Computer or Dell produced the computer.

When courts evaluate whether there is a likelihood of confusion, they evaluate the strength of the marks and the similarity of the products that the marks represent. Professor Hunter  says that it would be difficult for Fujitsu to prove consumer confusion if it chose to bring a trademark infringement claim against Apple. First, the strength of the marks weighs in Apple’s favor. “Apple’s family of ‘i’ brands are very strong. Consumers recognize that products with ‘i’ affixed to their name indicate that Apple is the source of those products. Fujitsu’s mark on the other hand is weak. Its iPad was not very successful and is not very recognizable by consumers.” Comparing  product use also weighs in Apple’s favor. As Professor Hunter explained, “Fujitsu’s iPad was marketed and used only for shop clerks to track inventory. Apple’s iPad will be marketed to general consumers for a broad array of uses.”

Fujitsu’s iPad filings with the United States Patent and Trademark Office (“USPTO”) bolster Professor Hunter’s assessment. Fujitsu’s 2003 application for an iPad trademark was initially rejected because the claim for iPad was weak. An examination of Apple’s iPad filings with the USPTO seems to show that Apple knows what its doing. In 2009 Apple, acting through a proxy called IP Application Development, took advantage of an international treaty to apply for a trademark in Trinidad and Tabago. This legal sleight of hand allowed Apple to obscure its intent to use the name iPad while gaining the legal advantages of applying for a trademark a year before the iPad’s release.


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