In a long-running battle over the mark IPAD. The United States Court of Appeals for the Fourth Circuit affirmed the entry of summary judgment by the U.S. District Court for the Eastern District of Virginia [TTABlogged here], in favor of Apple on all claims asserted by RxD Media and on all counterclaims asserted by Apple, The appellate court also ruled that the district court did not abuse its discretion in permanently enjoining RxD Media from all uses and variations of the terms "ipad" and "ipod." RxD Media, LLC v. IP Application Development LLC and Apple, Inc., 2021 USPQ2d 81 (4th Cir. 2021).
The TTAB had dismissed RxD Media's Section 2(d) opposition to Apple's registration of the mark IPAD for various business and computer services, including storage and retrieval of data. RxD Media claimed prior use of the identical mark for "providing temporary use of a web-based software application for mobile-access database management whereby users can store and access their personal information." [TTABlogged here].
RxD Media then brought a civil action under Section 1071(b) seeking review of the Board's decision, and it added four more counts, including trademark infringement and unfair competition. Apple joined with its subsidiary as defendants and counterclaimed for trademark infringement and unfair competition. The court ruled in favor of Apple across the board.
RxD Media claimed that it began using the descriptive term "ipad" in 2007, prior to Apple's attainment of acquired distinctiveness in the term, and so as the senior user of the term, RX Media could not have infringed "a junior descriptive mark." The appellate court, however, ruled that Apple had acquired the right to claim the filing date of January 2002 as its priority date upon acquiring a pending application of Fujitsu. Thus RxD Media's claim of priority was meritless.
As to RxD Media's use of "ipadtoday.com," which began in October 2016, Apple had acquired distinctiveness in the term "ipad" by then, and therefore Apple was entitled to claim infringement by RxD Media by the latter's use of "ipad" on its ipadtoday.com website. The court observed that, even if RxD Media had been the first user of "ipad" and was entitled to continue using it, RxD Media was not entitled to expand beyond its original product line into an area occupied by an intervening junior user who has established its own rights in the mark. RxD Media's original product line in 2007 was limited to a mobile internet notepad used for creating simple lists. In 2010, Apple released its "iPad" device, a much different product than RxD Media's notepad. Apple was allowed to assert those rights against RxD Media's re-branding and expansion into website services in 2016.
As to the scope of the injunction, the Fourth Circuit concluded that the lower court properly required RxD Media to keep a "safe distance" from its previously unlawful conduct.
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TTABlogger comment: Even if the Apple iPad of 2010 was a "much different product" than RxD Media's 2007 notebook, aren't they at least related for Section 2(d) priority purposes?
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