The Fujitsu iPAD™ - (Didn’t You Mean The Apple iPad™?)
By: DEAN R. KARAU
February 2010
Rumors about Apple Inc. introducing a new high tech, touchscreen tablet computer have been swirling since at least 2007, and speculation about possible names for the tablet kept pace with the rumors. At various times, Apple Slate, iTablet, iSlate, and iPad were bandied about. (One of the characters in Gary Trudeau’s Doonesbury comic strip said “the geeks are calling it the ‘Jesus Tablet’ – they expect it to save them, to perform miracles! You can feel it in the air – these people want their lives changed!”)
Finally, on January 27, 2010, Apple introduced its iPad™ tablet computer:
The iPad™ tablet can be used with Wi-Fi, as well as run on AT&T’s 3G (third-generation) wireless network. It weighs about 1.5 pounds, is 0.5 inch thin, has a 9.7-inch display and should have a battery life of 10 hours. It uses what Apple calls its own 1GHz A4 chip, and flash memory, ranging from 16 to 64 gigabytes, and it has YouTube in high-definition built-in.
However, there may be a worm in Apple’s brand selection strategy.
In January 2002, Fujitsu Transaction Solutions Inc. unveiled its iPAD™ wireless device in the U.S.
The iPAD™ device looks like a cell phone, but is actually an all-in-one system that lets retail store employees assist customers by verifying prices, setting up instant checkouts, paging managers, providing store managers real-time data at their fingertips – all from anywhere in the store.
The iPAD™ device includes a 3.5-inch color touchscreen, an Intel processor, Wi-Fi and Bluetooth wireless connectivity, and VoIP telephony.
In March 2003, Fujitsu filed a U.S. application for its iPAD mark. Because of a variety of issues during the prosecution of Fujitsu’s application, the iPAD mark was not published for opposition until September 2009.
Now that Apple has officially committed itself to the iPad brand, what will happen to Fujitsu’s iPAD mark?
At the moment, Apple is considering opposing Fujitsu’s application in order to keep Fujitsu from obtaining a registration for its mark. It has obtained an extension of time to February 28 to oppose.
There have been reports that Apple has begun filing trademark applications worldwide for its iPad mark. However, those applications likely cannot form the basis for stopping the use and registration of Fujitsu’s iPAD mark. Fujitsu not only began using iPAD in the U.S. before Apple, but also has an earlier application filing date, meaning that Fujitsu is positioned to win a fight focused on who used IPAD first.
For Apple to successfully keep Fujitsu’s mark from registering, it likely will have to rely on its iPod mark and registrations.
Apple can try to argue that the marks are confusingly similar. It can also try to assert that its iPod mark is a “famous” mark, and Fujitsu’s use of its mark will dilute the fame of the iPod mark. Both arguments, however, pose problems for Apple.
Fujitsu’s use of its iPAD mark since 2002 weakens Apple’s argument that there is the likelihood of consumer confusion with Apple’s iPod marks, since there apparently has been no actual confusion in the six plus years of simultaneous use of the marks. Also, Apple appears to have taken no steps earlier to object to Fujitsu’s use of its mark – a trademark owner which sleeps on its rights often loses those rights.
Apple’s “famous” mark argument faces the same problem of Apple having possibly waited too long. In addition, Apple would need to prove that its iPod mark was famous at the time that Fujitsu first began using its mark in 2002. That could be a difficult task given that Apple only began using its iPod mark two months before Fujitsu began using its iPAD mark.
Additional facts may change the legal landscape, but at the moment, Apple looks like it could have an uphill battle.
However, Apple may have other ways to get what it wants.
When Apple chose its iPhone trademark, Cisco Technology, Inc. owned a trademark registration for iPhone, and that registration originally blocked Apple’s application. However, the two companies eventually negotiated a settlement.
Reports are that Fujitsu is a current component supplier to Apple, providing Apple with laptop hard drives for its MacBook® notebooks. Given that relationship, a resolution “as sweet as apple pie” may not be out of reach.