Unless you’ve been living under a rock lately, you probably know that in a matter of days, Apple will be releasing its much anticipated iPad tablet. What you may not know, however, is up until now, there has been a feud simmering in the background over who owns the rights to the IPAD trademark in the U.S.
At the time Apple filed its U.S. trademark application for IPAD, Fujitsu owned a pending application for the IPAD trademark for a wireless handheld retail inventory management device, filed in March 2003. The application went abandoned in April 2009 after Fujitsu failed to respond to a request for additional information. Fujitsu successfully revised the application in June 2009, and shortly thereafter, the application was published for opposition.
In what looked to be a looming trademark battle, Apple filed multiple extensions of time over several months to oppose Fujitsu’s pending application. Fujitsu, seemingly prepared for a fight, explaining through its director of public relations in January of this year that the company was consulting its lawyers because “[i]t’s our understanding that the name is ours.”
In a rather anti-climatic end, however, the battle is seemingly over before it really got started. On March 17, Fujitsu assigned the IPAD application and trademark to Apple, leaving plenty of speculation such as how many zeros were at the end of Apple’s check or did Fujitsu’s legal team conclude that its right in the mark paled in comparison to Apple’s (not likely since Fujitsu claimed rights in the mark dating back to January 2002).
Apple is no stranger to the name game as it had a similar dispute with Cisco over the IPHONE mark after it introduced the phone in 2007, resulting in a lawsuit which eventually settled with the companies agreeing to share the name on their respective products.
This case reminds us of the benefits of fully exploring the risks and costs likely to be associated with a particular trademark prior to its selection and use. Here there is no doubt that Apple was fully aware of, contemplated (and even opposed) Fujitsu’s trademark application prior to filing its IPAD application. Indeed, Apple probably calculated the cost of acquiring the trademark from Fujitsu as part of its business expense.
Few of us, however, have the deep pockets of a Steve Jobs, and as such, would be wise to carefully consider the results of a search, and particularly any potentially problematic marks, when creating a trademark filing strategy.