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The introduction and upcoming launch of Apple’s new iPad has been the subject of much discussion within the world of IT. The name of the product is already a source of contention. Numerous other companies including Fujitsu, Magtek and Siemens already use the name iPad as a trademark for various goods. (Fujitsu’s iPad is a mobile device with a touchscreen display; Magtek makes an iPad encrypted credit-card swiper; Seimens uses the iPad brand on its engines and motors). In fact, Fujitsu has a pending U.S. trademark application for iPad for which Apple has filed an extension of time to oppose.
Apple encountered similar problems with third party use when it launched the iPhone three years ago. And it will undoubtedly continue to be confronted with such problems in the future if it continues using the “i” prefix on its products. This is a classic problem for trademark attorneys. Clients always want to use descriptive marks (i.e. trademarks that in some manner describe the product or service to which the trademark is affixed) because it makes the product easier for consumers to identify. However, purely descriptive marks are not registrable and marks which are comprised of descriptive elements have a limited scope of protection.
The use of the “i” prefix is very common among trademark owners as an abbreviation for “information” or “Internet” (among others). For this reason, there will always be third parties who are using the same or similar marks on similar goods and services. As a trademark attorney, it is always best to advise clients to choose a mark which is either fanciful (i.e., entirely invented or coined, such as KODAK which had no meaning in any context before it was adopted as a trademark) or arbitrary (common words used in a meaningless context, e.g., CAMEL for cigarettes).
Apple began as a company with an extremely strong trademark portfolio. After all, the mark APPLE is arbitrary (it had no connection whatsoever to computers prior to its adoption and thus competitors had no need to use the term). But in recent years, its use of the “i” prefix has caused numerous problems. Of course, such problems are outweighed if the value of the brand enables the company to sell more products using a “descriptive” mark than it would if such products were sold under another name. Apple’s counsel has come to the conclusion that the value of the “iBrand” is worth far more than it costs to settle these disputes with third parties. iGuess that iAgree. But only because iAin’tTheOnePayingTheLegalBills.