Last Thursday, an attorney-friend of mine forwarded to me an article published on The Wall Street Journal website concerning a potential trademark dispute stemming from Apple’s intended use of the name IPAD in connection with its new tablet computer device. After reading the article, I decided to conduct my own investigation into the issue and found that the name IPAD has quite the history in the Trademark Office besides what is discussed in the article. In fact, since 1997, there have been at least a dozen applications filed for IPAD, I PAD, or I-PAD for products and services in the computer and electronics industries. So, even apart from the obvious feminine hygiene connotations (does it come with wings?), Apple may have been better off adopting something more unique and distinctive.
The story begins nearly 13 years ago on April 25, 1997, when a Delaware company by the name of A.T.X. International, Inc. filed an intent-to-use application to reserve the name IPAD for computer hardware and software products that are eerily similar to Apple’s new device. This application never matured into a registration because A.T.X. voluntarily withdrew it in mid-1999.
Next, on November 25, 1998, a company called The Audiogroup, Inc. (now the Niles Audio Corporation) applied to register the name I PAD for what basically amounts to a high-tech control unit for audio and video equipment. The Trademark Office refused registration on the basis that I PAD was merely descriptive of The Audiogroup’s products. In response, The Audiogroup amended its application to seek registration on the Supplemental Register (which is basically where wannabe trademarks get registered) and filed documentation showing use of the trademark. The Trademark Office registered the mark on September 26, 2000 and the registration is still active today, although it needs to be renewed this year.
Then, on April 22, 1999, a Washington D.C. corporation by the name of Emergent Technologies, Inc. applied to register the term IPAD for “a service where users can access via the Internet, applications and information hosted on remote servers.” On May 22, 2000, this intent-to-use application went abandoned due to Emergent’s failure to respond to a communication issued by the Trademark Office. Unfortunately, the content of this communication is not accessible via the Trademark Office’s website so I am not exactly sure why the Trademark Office preliminarily refused registration of Emergent’s trademark.
On November 23, 1999, a California company named Proview Technology, Inc. filed an intent-to-use application for I PAD for computer monitors. The Trademark Office initially suspended action on Proview’s application pending the disposition of Emergent’s prior-filed application noted above. Once Emergent’s application went abandoned, the Trademark Office approved Proview’s application, but then withdrew such approval and refused registration on the basis that I PAD was merely descriptive of Proview’s products. Although the attorney for Proview filed a well-written argument to the contrary, the Trademark Office maintained its refusal and Proview’s application went abandoned on March 27, 2003.
Next, on February 7, 2000, Niles Audio Corporation (owner of the I PAD registration discussed earlier), filed another intent-to-use application for I PAD for products related to those for which it already owned a registration. Not surprisingly, the Trademark Office once again refused registration on the basis that I PAD merely describes a feature or characteristic of the products. After unsuccessfully attempting to persuade the Trademark Office to withdraw the rejection, Niles simply let the application go abandoned on December 31, 2003, most likely because it had no use of the trademark and, therefore, could not amend its application to seek registration on the Supplemental Register as it did with its previous application.
Over the next few years, a number of different companies filed applications for IPAD or I-PAD (Serial Nos. 76006482, 76014064, 76213930, 76216311, 78028207, 78291387, and 78530901), all of which were for computer hardware, computer software, computer peripherals, or other computer-related products. Every one of them went abandoned prior to registration. Well, that is except for one tiny little application for IPAD owned by Fujitsu since March 2003. This application is for a “hand-held computing device for wireless networking in a retail environment.” According to the application, Fujitsu’s use of IPAD commenced back in 2002. The application was published on September 1, 2009 and Apple has been granted by the Trademark Office a deadline of February 28, 2010 to challenge it. Honestly, on what basis Apple plans to oppose the application is unclear, but I think it will likely hang its hat on its prior use and registration of IPOD, to which IPAD is pretty darn close (dare I say confusingly similar?) in both appearance and sound. I should also note that there is an existing registration owned by Mag-Tek, Inc. for IPAD for “keypads for entry of personal identification numbers in e-commerce,” but those devices are quite different from Apple’s new iPad computer such that confusion is probably unlikely.
As for Apple’s own very recent application for IPAD (which was actually filed in the name of a company I assume is related to Apple called IP Application Development, LLC), we’ll just have to wait and see whether the Trademark Office refuses registration on the basis of Fujitsu’s pending application, Mag-Tek’s registration, Niles Audio Corporation’s registration, and/or that Apple’s mark is merely descriptive of its products. But one thing is for sure: prosecuting and defending Apple’s IPAD trademark application will likely “pad” the pockets of some very lucky lawyers.