By Brian Craig, J.D.
Apple was the first to use the IPAD mark by way of assignment from Fujitsu dating back to 2003 and had priority.
The U.S. Court of Appeals for the Fourth Circuit has affirmed decisions by the federal district court in Alexandria, Virginia, and the Trademark Trial and Appeal Board that Apple, Inc., has priority for use of the IPAD mark. In affirming the entry of summary judgment and permanent injunction in favor of Apple, the Fourth Circuit concluded that Apple was the first to use the IPAD mark by way of assignment from Fujitsu dating back to 2003. In addition, Apple acquired secondary meaning and was an intervening junior user. The appeals court also found that Apple demonstrated a bona fide intent to use the IPAD mark (RXD Media, LLC v. IP Application Development LLC, January 21, 2021, Keenan, B.).
RXD launched its website, ipad.mobi, in 2007. In 2016, RXD relaunched its website as ipadtoday.com. Ipadtoday.com offers more services than ipad.mobi. Instead of simply being a notetaking platform, it is a mobile notes and cloud storage site. IP App is a subsidiary of Apple used to apply for trademarks. Both RXD and Apple claimed to have priority in the rights to use the IPAD mark in commerce. There were two trademark applications and several registered trademarks at issue. The applications were filed by Apple seeking to register the IPAD mark in relation to cloud storage and other services. Moreover, Apple already owned eight IPAD registrations for computer and digital goods as well as business and marketing services. After Apple filed its applications, RXD filed an opposition before the TTAB. The TTAB decided in Apple’s favor. RXD filed a lawsuit in federal district court. Apple counterclaimed for infringement. The district court granted summary judgment in favor of Apple’s motion and issued a permanent injunction against RXD. RXD appealed.
Priority. The Fourth Circuit first concluded that Apple had priority in the IPAD mark over RXD and was the first to use the mark in commerce. A party can become a senior user of a mark by acquiring from a previous owner an assignment of rights. When Fujitsu assigned to Apple its rights to the IPAD mark in March 2010, that assignment included Fujitsu’s "first use" date of January 2002 and its "priority use" date of March 2003. Apple acquired Fujitsu’s then-pending trademark application, which had been filed on March 7, 2003. Thus, Apple stepped into the shoes of Fujitsu, thereby obtaining a "first use" date of January 2002 and a "priority use" date of March 2003. In addition, Apple acquired secondary meaning. Apple released its "iPad" device in 2010 with large commercial success, sufficient to demonstrate secondary meaning. Furthermore, Apple was an intervening junior user of the IPAD mark before RXD rebranded and expanded its services in 2016 with its "ipadtoday.com" website. Therefore, Apple had an established, protected mark capable of being infringed by RXD’s use of the mark in 2016.
Likelihood of confusion. The Fourth Circuit agreed with the district court’s analysis that the evidence regarding likelihood of confusion weighed heavily in favor of Apple. Apple presented very strong evidence of actual confusion. Moreover, Apple’s IPAD marks are strong and distinctive. Both Apple and RXD use the IPAD mark in connection with computer goods and services. RXD was aware that its use of this mark could constitute trademark infringement, a fact suggestive of bad faith. RXD also redesigned its website, mimicking elements of Apple’s branding. Thus, a jury could not have reasonably concluded that RXD’s use of the IPAD mark was unlikely to cause consumer confusion. Accordingly, the district court did not err in awarding summary judgment to Apple on its claim of trademark infringement under the likelihood of confusion factors.
Permanent injunction. Likewise, the Fourth Circuit agreed with the district court’s issuance of a permanent injunction and the scope of the injunction. Apple showed that RXD was a proven infringer. The district court expressly relied on the "safe distance" rule as justification for the scope of the injunction. Given the clear evidence of RXD’s infringement, the Fourth Circuit held that the district court did not abuse its discretion in issuing the injunctive relief in favor of Apple.
Bona fide intent to use. Finally, the Fourth Circuit found that the district court correctly ruled that Apple demonstrated a bona fide intent to use the IPAD mark. Under the Lanham Act, an applicant for a registered trademark must demonstrate its bona fide intent to use a mark only with respect to the applied-for services. Bona fide intent to use a mark must be demonstrated by objective evidence, but the evidentiary bar is not high. Apple produced ample evidence, including a licensing agreement covering the applied-for services and contemporaneous registration certificates, both of which supported the district court’s holding that Apple demonstrated a bona fide intent to use the mark for the services listed in its applications. The district court did not err in concluding that Apple had a bona fide intent to use the mark for the services listed in its application. Accordingly, the Fourth Circuit affirmed the district court’s decision.
This case is No. 19-1461.
Attorneys: Bernard Joseph Dimuro (DiMuroGinsberg P.C) for RXD Media, LLC. Dale Margaret Cendali (Kirkland & Ellis LLP) for IP Application Development LLC and Apple Inc.
Companies: RXD Media, LLC; IP Application Development LLC; Apple Inc.
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