Although a website operator began using “ipad” three years before Apple released its iPad in 2010, because Apple acquired use of the mark from another company that predated the website operator’s use, the mark obtained secondary meaning and Apple qualified as an “intervening junior user,” the website operator was permanently enjoined from any commercial use of the term.
This appeal arises from prolonged trademark litigation initiated by appellant RXD Media LLC against Apple Inc. over rights to use the “ipad” mark. The district court awarded summary judgment in favor of Apple on all claims advanced by RXD and on all counterclaims asserted by Apple. Also, based on the court’s conclusion that RXD infringed on Apple’s marks, the court permanently enjoined RXD from any commercial use of the terms “ipad” or “ipod.”
RXD initially contends that its use of “ipad,” a “descriptive mark,” preceded Apple’s use and Apple’s development of a distinctive, secondary meaning in the mark, thereby barring Apple’s infringement claim as a matter of law. In response, Apple first maintains that RXD is not the senior user of the mark. According to Apple, it acquired the 575 registration of “ipad” from Fujitsu, which included a “first use” date in 2002.
Separately, Apple submits that even assuming RXD was the senior user of the mark, 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 it had established secondary meaning in the mark by October 2016, or alternatively had obtained an “incontestable” registered trademark, which provides a presumption of a secondary meaning in favor of the registrant.
Finally, 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. The court agrees with Apple’s position on all three arguments.
Next, RXD maintains that the district court erred in concluding that RXD’s use of “ipad” on “ipadtoday.com” caused consumer confusion with Apple’s registered trademarks, resulting in infringement of Apple’s use of the mark. According to RXD, the issue of likelihood of confusion in its use of the “ipad” mark on its “ipadtoday.com” website presented a question of fact to be decided by a jury. RXD asserts that a jury reasonably could have found that RXD’s use of the “ipad” mark was not likely to confuse consumers based on the different services offered by RXD and Apple in conjunction with the mark. The court disagrees with RXD, and concludes that the record contains extensive evidence supporting the district court’s decision.
RXD also challenges the district court’s issuance of a permanent injunction, as well as the scope of that injunction. RXD primarily seeks vacatur of the injunction for generally the same reasons that it sought to overturn the district court’s conclusion that RXD had infringed on Apple’s trademarks. Having addressed those arguments earlier in this opinion, they are rejected again here. They do not provide a basis for challenging the award of injunctive relief in this case.
Alternatively, however, RXD argues that the injunction is overbroad in scope. In view of the district court’s holding that RXD committed trademark infringement as a matter of law, which is affirmed here, the court finds the district court acted within its discretion in enjoining RXD from employing all uses and variations of the “ipad” and “ipod” marks. The injunction properly required that RXD keep a “safe distance” from its previously unlawful conduct.
RXD next argues that the district court erred in holding “that Apple met its burden of establishing a bona fide intent to use the [‘ipad’] mark for cloud storage services.” This argument fails at the outset, however, because RXD mischaracterizes this aspect of the district court’s judgment.
RXD Media LLC v. IP Application Development LLC (Lawyers Weekly No. 001-016-21, 25 pp.) (Barbara Milano Keenan, J.) Appeal No. 19-1461. Jan. 21, 2021. From E.D. Va. (Liam O’Grady, S.J.) Cecil E. Key Jr. for Appellant. Dale Margaret Cendali for Appellees.