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Friday, January 29th, 2010 11:33 am
iPad v. iPad, v. iPad

I keep several active search columns on Tweetdeck, one for the keyword "trademark." For the last 24 hours, it's been clogged with retweets of several articles on Apple's use of the name "iPad" despite a prior trademark application filed by Fujitsu in 2003 for the same mark.

Fujitsu's iPad product is a handheld device that helps retail employees verify prices, check inventory data, and close sales. Apple's iPad is, essentially, a great big iPhone.

These articles don't give nearly the whole story - there's another player in the game that actually has the mark registered.

US trademark law is about priority of use and avoidance of consumer confusion as to source. Put simply, you can register your trademark if it's distinctive and you're the first one to use it on the particular stuff you sell under it -- but central to this inquiry is the question (which is resolved by the US Patent and Trademark Office) of whether registration of your mark might cause consumers to be confused between your mark, and someone else's prior mark, as to the source of the goods and services offered. If you're trying to register a mark (like Apple's IPAD mark) which is identical to the mark in a prior filed application or registration (like Fujitsu's IPAD mark), the question often boils down to identifying whether there's any overlap in the goods sold under each mark. If there is, the USPTO will probably conclude "confusion," and refuse to register your mark.

But because this conclusion is often drawn in a huge gray area, you argue there's no confusion - usually by identifying differences in the compared marks themselves, the goods sold under the marks, the methods in which they're sold, the consumers to whom they're offered, etc. If the differences are meaningful enough, the USPTO will concede, and allow the mark to register.

Sometimes if you can't change the USPTO's conclusion, you'll instead contact the owner of that prior mark and set the record straight on who's got rights to what -- this can be anything from an amicable agreement in which both parties recognize the rights of the other and agree not to overlap, to a legal battle.

It is this latter possibility that seems to be the sexier, because many of the recent articles characterize Apple's request to extend the period to oppose Fujitsu's IPAD application as a battle, an inevitable dispute, and that the two parties are "fighting it out hard."

Hardly. And more digging is necessary before these predictions look even halfway credible.

Fujitsu applied to register IPAD (US Ser. No. 76497338) in 2003, for a "hand-held computing device for wireless networking in a retail environment."

The USPTO concluded in August of that year that registration of Fujitsu's mark might cause a likelihood of confusion with respect to an even earlier IPAD application (US Ser. No. 76162761), filed by a California company called MagTek, for "keypads for entry of personal identification numbers in e-commerce." The MagTek Ipad product is a PIN-entry device of the type you see at the grocery checkout stand.

The USPTO also refused registration of Fujitsu's IPAD mark on the conclusion that the mark merely describes the goods sold (i.e., IPAD means "intelligent pad," which simply describes Fujitsu's product, rather than distinguishing the product's source in the marketplace).

When your app is refused over a prior-filed app, there are a few things to do. You can wait to see if the prior app actually ripens into a registration or is abandoned (in the former case, you get some time; in the latter case, a likelihood-of-confusion objection will vanish). You can also choose to enter arguments against the basis (or bases) of refusal; if you succeed, your application heads toward registration.

Fujitsu argued against the "merely descriptive" refusal, but opted to wait on the "likelihood of confusion" refusal to see whether MagTek's prior IPAD app registered.

The USPTO didn't buy Fujitsu's argument, and maintained both bases of refusal, in a 2004 communication. As is standard, the USPTO also suspended proceedings in Fujitsu's app pending the disposition of the MagTek app.

Fujitsu waited. Jump to 2008, when MagTek's IPAD mark registered. The USPTO reopened Fujitsu's application, but here's a curious thing: despite maintaining two bases of refusal in 2004 ("merely descriptive" and "likelihood of confusion") the 2008 communication from the USPTO only mentions one: the likelihood-of-confusion refusal.

In April 2009, Fujitsu argued against this refusal, by distinguishing its goods from those listed in the MagTek registration, characterizing its description of goods as illustrating "store retail employees operating a handheld computing device to conduct inventory logs, price checks, [and] product information searches" and "[Fujitsu] limits the description [of goods] to 'retail environments.'"

The USPTO was persuaded, and allowed Fujitsu's application (despite the apparently unresolved "merely descriptive" refusal). The application was published for opposition, as per USPTO protocol. Now enter Apple, who has petitioned the USPTO to extend this opposition period.

The thing with making arguments like Fujitsu's that you don't want them to come back and bite you.

Fujitsu, by declaring that its mark is limited to use on a product used in retail environments, may have inadvertently paved the path for Apple (whose iPad product is for general or personal use) to make the argument that there would be no confusion between its mark and Fujitsu's, in much the same way that Fujitsu argued there would be no confusion between its mark and MagTek's.

Additionally, because both Fujitsu's and MagTek's IPAD marks are really for similar goods, when you think about it (i.e., portable or handheld devices that exchange information with a network), Apple might be able to make a "crowded field" type argument: that when there is more than one user of a mark on related goods, it's pretty safe to say that because the consumers of those goods are savvy enough not to be confused by yet another user entering the market using the same mark on related goods.

And then there's that "merely descriptive" refusal that strangely vanished in Fujitsu's app. There might be fodder there for Apple to argue, perhaps, that Fujitsu's mark never should have been allowed for registration in the first place.

These arguments can be made in Apple's own application for IPAD (which it may have already filed, under a subsidiary company's name), or in court, if Apple does indeed gear up for a fight.

Whatever happens, in or out of the USPTO, it'll be an interesting thing to watch.


Friday, January 29th, 2010 09:30 pm (UTC)

do you have a personal opinion as to whether "retail environments" (a) should be given enough weight to matter, and (b) what the uspto will do?

just as a person, not a patent attorney ... i had this conversation with my mother back in the day when "wwf" was both world wildlife fund and 'something' wrestling federation.

Friday, January 29th, 2010 10:56 pm (UTC)

Absolutely. Fujitsu has insisted, in order to get their own application allowed, that its goods are specifically for use in "retail environments." If Apple defines its goods somehow as to convincingly characterize that their goods are primarily for another purpose (and only incidentally for retail purposes), Fujitsu's statements pave the way for Apple to attempt to distinguish the goods on that basis.

This is really a counterargument that could be made against either an assertion by Fujitsu (for example in court) that there would be a likelihood of confusion between the marks, or a refusal by the USPTO to register Apple's mark on this basis.

I think it's a decent one. I wouldn't hang my entire case on it, but it's definitely one that can be made.

What the USPTO will do depends on what you mean. It has allowed Fujitsu's application, and only Apple's request to extend the period for opposition is preventing it from federal registration. So it kind of depends, at this point, on whether Apple goes ahead and files an opposition - this is a litigation-like proceeding that would happen in an Appeal Board within the USPTO (and in which the above arguments would probably be made).

ReplyThread Parent
Saturday, January 30th, 2010 03:40 pm (UTC)

Hey, if Jobs can find a way to convince Paul Mc to share, I'm sure he can talk Fujitsu into it, too. ;)

ReplyThread Parent
an idiot walking a tightrope of fortune and fame
Friday, January 29th, 2010 11:10 pm (UTC)

There's an interesting one like this that popped up last year over the use of netbook. There's a company that trademarked the name for a mini-laptop model but it hasn't been in production for some time. They issued cease and desist letters anyway to major pc retailers and companies. Not much came of it but it made for some interesting reading.