If you called your product “ipad”, would you expect to win a trademark dispute with Apple?

No, you wouldn’t.  But a company called RXD Media apparently did, and after years of litigation is now permanently enjoined from any commercial use of the terms “ipad.” RXD Media, LLC v. Apple, Inc., https://www.ca4.uscourts.gov/Opinions/191461.P.pdf (4th Cir. 1/21/2021).  Trademark law is a specialized field in which I have no expertise, but surely this is a no-brainer.  What were the principals of RXD (just four people, as far as I can tell) thinking?  More importantly, what were their attorneys thinking?

The procedural history of the case is complex, and I will not attempt to summarize it.  Here’s the short version: 

In 2007 – i.e., 6 years after Apple’s launch of the iPod – “RXD decided to create and market a ‘mobile Internet notepad’ that people could use to make ‘simple’ lists online, including grocery lists and ‘to do’ lists.  RXD named its new, internet-based notepad ‘ipad.mobi’ and launched the website in September 2007….The website did not result in any commercial success for RXD.”  Apple released the first iPad tablet in 2010.  In conjunction with that release, it filed applications in July 2009 and January 2010 for protected use of the “ipad” mark.  RXD then filed its own application for protected use of the “ipad” mark, opposed Apple’s applications, and pursued an adversary proceeding against Apple before the Trademark Trial and Appeal Board (TTAB).  As the Fourth Circuit’s opinion explains:

In 2016, while the TTAB proceedings with Apple were still ongoing, RXD launched a “rebranded” website advertising “cloud storage” services.  Among other things, this “rebranded” website offered users the ability to upload photographs, videos, music, and documents.  RXD chose the name “ipadtoday.com” for the new website, and released a new logo depicting an image of a cloud accompanied by “ipad™.”  On the new website, the “ipad™” logo was prominently displayed along with pictures of Apple devices, all of which had the “ipad™” logo superimposed on them….

…RXD does not assert in this appeal its prior claim that its use of “ipad” is entitled to trademark protection.  Instead, RXD defends against Apple’s claim of infringement.  RXD argues that Apple’s use of the mark was not protected because RXD was the first, or “senior” user of the descriptive mark, using “ipad.mobi” on its website in September 2007….

…Apple submits that even assuming RXD was the senior user of the mark [which Apple disputes], Apple’s infringement claim does not rest on RXD’s limited use of the mark in 2007.  Apple asserts that, instead, its claim is based on RXD’s altered use of the mark in October 2016 on its “ipadtoday.com” website when RXD blatantly mimicked Apple products in connection with RXD’s cloud storage services….Apple contends that RXD’s altered use of the mark in 2016 infringed on Apple’s rights, even if Apple were deemed not the senior user, because Apple would qualify as an “intervening junior user” of the mark.  We agree with Apple’s position.  (Emphasis added.)

I frankly do not understand how RXD or its lawyers thought they could win this case, when Apple had been marketing the iPad with huge success for 6 years before RXD launched its “ipadtoday.com” website. 

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