986 F.3d 361
4th Cir.2021Background:
- Apple developed the "i-" product line, released the iPad device in 2010, and acquired an earlier "ipad" registration from Fujitsu (filed 2003) that became incontestable in 2015.
- RXD launched ipad.mobi (a simple online notepad) in Sept. 2007 with no commercial success, then rebranded in Oct. 2016 as ipadtoday.com offering cloud-storage-like services and mimicking Apple branding.
- Apple filed intent-to-use applications for the "ipad" mark in 2009 and 2010; RXD filed conflicting applications in 2010 and opposed Apple at the TTAB.
- The TTAB (2018) approved Apple’s applications and denied RXD’s; RXD sought district-court review and added claims, including that Apple lacked bona fide intent to use the mark for certain services.
- The district court granted summary judgment to Apple on all claims and counterclaims, found RXD infringed Apple’s marks, permanently enjoined RXD from commercial uses of "ipad" and "ipod," and upheld Apple’s registrations; RXD appealed.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| 1. Whether RXD was the senior user so Apple lacked a protectable mark | RXD: its 2007 use of "ipad.mobi" predates Apple and precludes Apple from claiming an acquired (secondary) meaning that bars RXD | Apple: it acquired Fujitsu’s earlier rights (first use 2002 / priority 2003); alternatively Apple had secondary meaning by 2016 or an incontestable registration; RXD’s 2016 expansion is not protected | Court: Apple succeeded—Fujitsu assignment gave Apple senior dates; Apple had secondary meaning/incontestability before RXD’s 2016 rebrand; RXD’s 2016 use not protected as expansion beyond original use |
| 2. Likelihood of consumer confusion / infringement | RXD: different services; factual issue for a jury; other third-party uses undermine confusion | Apple: strong survey (27% confusion), anecdotal confusion, similar marks/services, RXD copied Apple branding and acted in bad faith | Court: Summary judgment for Apple—actual confusion and multiple Lanham factors favor Apple; no reasonable jury could find no likelihood of confusion |
| 3. Validity and scope of permanent injunction | RXD: injunction overbroad; should be narrowed | Apple: proven infringement justifies broad relief and a "safe distance" injunction against variants | Court: Injunction appropriate and within discretion; safe-distance rule supports broad relief against proven infringer |
| 4. Whether Apple lacked bona fide intent to use the mark for applied-for services (cloud storage) | RXD: Apple did not intend to use the mark for cloud storage; registrations should be void | Apple: it produced objective documentary evidence (license agreement, contemporaneous registration certificates) showing intent as to applied-for services; it did not apply for cloud storage specifically | Court: RXD failed initial burden; Apple showed sufficient objective evidence of bona fide intent for its applied-for services; court did not err |
Key Cases Cited
- Hana Fin., Inc. v. Hana Bank, 574 U.S. 418 (2015) (priority of trademark rights measured by first use in commerce)
- Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264 (4th Cir. 2003) (first-use priority principles)
- Grayson O Co. v. Agadir Int’l LLC, 856 F.3d 307 (4th Cir. 2017) (distinctiveness and secondary meaning for descriptive marks)
- In re Chamber of Com. of the U.S., 675 F.3d 1297 (Fed. Cir. 2012) (descriptive vs. distinctive marks)
- Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110 (Fed. Cir. 2018) (secondary meaning timing for descriptive marks)
- Variety Stores, Inc. v. Wal-Mart Stores Inc., 888 F.3d 651 (4th Cir. 2018) (nine-factor likelihood-of-confusion test)
- Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012) (treatment of likelihood-of-confusion factors)
- Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (survey confusion thresholds)
- Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003) (senior user expansion can be enjoined when junior user has established rights)
- Fuller Prods. Co. v. Fuller Brush Co., 299 F.2d 772 (7th Cir. 1962) (limits on protection for prior descriptive users who expand product lines)
- Broderick & Bascom Rope Co. v. Manoff, 41 F.2d 353 (6th Cir. 1930) (safe-distance principle for injunctive relief)
- George & Co. v. Imagination Ent., Ltd., 575 F.3d 383 (4th Cir. 2009) (incontestable registration presumption of secondary meaning)