Apple Inc. assigned iPad trademark rights by Fujitsu

Unlike the 2007 trademark dispute with Cisco over the iPhone mark that required a bit of negotiation and time, today it was announced that Apple resolved their trademark dispute with Fujitsu Ltd. over the iPad mark.  Before we can comment on the events of today, a brief history of the iPad mark as applied to the class of handheld computing devices is warranted.

In 2003, Fujitsu filed for the iPad mark on a handheld Windows CE machine that was a $2000 wireless point-of-sale device for retailers. [1]  Despite the 2003 U.S. trademark application by Fujitsu for the iPad mark, the company Mag-Tech Inc. was already using the iPad brand in commerce for a handheld encryption device. [2]  Thus, even at the time the application was made by Fujitsu, ownership of the mark for the class of handheld devices was questionable.  In response to a notice of abandonment sent by the U.S. Patent and Trademark Office (U.S.P.T.O.) in early 2009, Fujitsu applied to renew the iPad mark.

Before Apple announced the iPad to the public in January of 2010, Apple submitted several briefs to the Trademark Trial and Appeal Board (TTAB) opposing the 2009 Fujitsu filing at the USPTO. [3]  Sleuthing internet detectives first reported the opposition on several technology enthusiast websites.  On January 16, 2010, Apple through the shell company IP Application Development LLC filed for the iPad mark at the U.S.P.T.O. on the basis of an “intention to use” under 15 U.S.C. 1051(b)1(b) and a “claim of priority based on an earlier-filed foreign application” under 15 U.S.C. 1126(d). [4]  The U.S.P.T.O. gave Apple until February 28, 2010 to decide whether it wanted to proceed with opposition to the renewal application by Fujitsu.

Fast forward to March, and Business Week announced today that Fujitsu and Apple came to an agreement that would let Apple use the iPad mark for its handheld device. [5]  Although the terms of the agreement are confidential, it is safe to surmise that Apple probably gave Fujitsu a lot of money to use the mark.  Public records recently unsurfaced indicate that Fujitsu assigned the rights to Apple for the iPad mark which will avoid a drawn out expensive court battle over the iPad name with Fujitsu.  [6]  Whether Mag-Tech intends to oppose the mark is still unclear, but after Fujitsu’s relinquished its claim to the mark, Apple no longer has to worry about the party with the most resources coming after it when it starts selling iPads next month.

[1] Fujitsu U.S.A., IPAD Marketing Brochure, 2010, available at http://solutions.us.fujitsu.com/downloads/retail/DS_IPAD.pdf (last visited Mar. 26, 2010).

[2] Hiroko Tabuchi, IPad?  That’s So 2002, Fujitsu Says, New York Times, Jan. 28, 2010, available at http://www.nytimes.com/2010/01/29/technology/companies/29name.html (last visited Mar. 26, 2010).

[3] U.S.P.T.O., Submitted Requests by Apple Inc. for an Extension of time to Oppose the Fujitsu Ltd. Trademark Renewal for the iPad Mark, 2009, available at http://ttabvue.uspto.gov/ttabvue/v?pno=76497338&pty=EXT (last visited Mar. 26, 2010).

[4] U.S. Trademark Application Serial No. 77913563 (IP Application Development L.L.C., Applicant).

[5] Susan Decker & Connie Guiglielmo, Apple Gets IPad Trademark from Fujitsu, Records Show, Business Week, Mar. 26, 2010, available at http://www.businessweek.com/news/2010-03-26/apple-gets-ipad-trademark-from-fujitsu-records-show-update1-.html (last visited Mar. 26, 2010).

[6] Trademark Assignment Abstract of Title from Fujitsu to Apple Inc., Mar. 17, 2010, available at http://assignments.uspto.gov/assignments/q?db=tm&sno=76497338 (last visited Mar. 26, 2010).

Speak Your Mind

*