Inside Trademarks Trademark Analytics, Research & Strategy

iPad Trademark Battle Brewing – Fujitsu v. Apple

Most companies seeking to launch a new product try to secure all trademark rights in the new product's name before public announcement or launch.  Apple Inc. however has a history of announcing a new product, regardless of whether it has secured all trademark rights in the new product name, and then working to secure the rights in the new product name after it's public announcement. 

Trademark practitioners usually advise against this because of the high risk of trademark infringement claims that this tactic brings.  Interestingly, as unconventional as it may seem, this tactic has actually worked in Apple's favor in the past. 

Apple famously unveiled the iPhone before securing the trademark rights to the name from Cisco, and Cisco immediately sued Apple.  Cisco settled the case with Apple before the launch of the iPhone, and we estimate that Apple provided between $25-50 million to Cisco (along with entering into some interoperability and cooperation agreements) in exchange for the trademark rights to iPhone.  Since then, the iPhone has generated billions of dollars in revenue for Apple -- which is a great return on investment (ROI) when one considers Apple's acquisition costs for the iPhone trademark.   

Now, Apple's much-hyped and long-awaited public announcement of it's new iPad device on Wednesday is the latest example of Apple's affinity for post-announcement trademark disputes.

 

 

 

Will Post-Announcement Tactics Work Again? 

After the iPod and the iPhone, the iPad may work well as a name for Apple's latest hand-held consumer device, but it's also the name of a Fujitsu mobile device that's been sold for use in retail stores since 2002.  The Fujitsu iPad provides many functions, including Bluetooth, Wi-Fi, and a color touchscreen interface.  The device helps store clerks to check prices and real-time inventory data, and to take payments for sales. See image below of the iPad from Fujitsu.

 

 

 

 

 

Fujitsu May Take a Strong Position Against Apple.  

Fujitsu already has a pending iPad trademark application that it first filed for in 2003.  Masahiro Yamane, director of Fujitsu’s public relations division told the NY Times on Thursday that “[it]’s our understanding that the name is ours”.  The NY Times also reports that he stated that Fujitsu was aware of Apple’s plans to sell the iPad tablet and that the company was consulting lawyers over next steps.

Apple recently used proxy companies to indirectly file for the iPad trademark in Canada, Europe and Hong Kong, and a proxy called the IP Application Development Company, LLC, to file for the iPad trademark in the U.S.  But Apple filed three direct requests, in its own name, to the U.S. Patent & Trademark Offce for extensions of time to oppose Fujitsu's currently pending "iPad" trademark. 

Apple cannot indefinitely request these extensions and must declare whether or not it intends to oppose Fujitsu's pending "iPad" trademark, and provide its basis for doing so, by Feb. 28, 2010.

Apple's Third Request for Extension

Based on the steps that Apple has taken thus far, and our estimates of the potential iPad trademark value if owned by Apple, we believe that Apple is willing to offer significant value to Fujitsu in exchange for the rights to the iPad trademark in the U.S. 

Stay tuned for more insights and analysis.