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RXD Media, LLC v. IP Application Development LLC

United States District Court, E.D. Virginia, Alexandria Division

March 27, 2019

RXD MEDIA, LLC, Plaintiff,
v.
IP APPLICATION DEVELOPMENT ET AL., Defendants.

          MEMORANDUM OPINION

          Liam O. Grady United States District Judge.

         This matter comes before the Court on Plaintiff and Defendants' cross-motions for summary judgment. For the following reasons, Defendants' motion for summary judgment is granted. Plaintiffs motion for partial summary judgment is denied.

         I. Background

         A. The Parties, Mark, Applications, and Registrations at Issue

         At issue in this trademark case is the use of the IPAD mark in commerce. Plaintiff is RXD Media. RXD launched its website, ipad.mobi, in 2007. According to RXD, ipad.mobi was meant to be an online platform primarily for notetaking. In 2016 RXD relaunched its website as ipadtoday.com. Ipadtoday.com offers a wider array of services than ipad.mobi. Instead of simply being a notetaking platform it is a mobile notes and cloud storage site. Defendants are IP App and Apple. Apple is the technological titan founded by Steve Jobs. IP App is a subsidiary Apple used to apply for trademarks. Both Plaintiff and Defendants claim to have priority in the rights to use the IPAD mark in commerce.

         There are two trademark applications and several registered trademarks at issue. The two applications are the '446 Application and the '563 Application. These were both filed by IP App and seek to register the IPAD mark in relation to various services. In addition, Apple owns eight IPAD registrations, including one incontestable registration (the '575 Registration), which claim computer and digital goods as well as business and marketing services.

         B. The TTAB Proceedings

         After IP App filed its '446 Application and '563 Application, claiming use of the IPAD mark in connection with cloud storage and computing, RXD filed oppositions to each, arguing RXD had priority as a senior user for the use of the IPAD mark in cloud storage and computing.

         The TTAB rejected RXD's opposition, holding that RXD's mark was ipad.mobi. not IPAD, and even if RXD's mark was IPAD, RXD's use of the mark was descriptive, and therefore in order to be entitled to priority RXD would have needed to demonstrate it had achieved secondary meaning in its IPAD mark before IP App's constructive priority dates of July 16, 2009 (the '563 Application) and January 25, 2010 (the '446 Application). The TTAB found RXD made no such showing.

         C. The Current Proceedings

         After losing in the TTAB proceedings, RXD filed suit in this Court, (1) seeking this Court's review of the TTAB decision, (2) claiming Apple lacked bona fide intent to use the IPAD service mark in commerce for anything other than tablet computers, (3) seeking a declaration that RXD has priority over Apple's rights in the mark IPAD, (4) alleging likelihood of confusion, and (5) alleging unfair competition and false designation of origin. Apple counterclaimed, arguing RXD's use of IPAD should be enjoined because it infringes upon Apple's trademark registrations for IPAD. Apple counterclaimed for (1) trademark infringement under § 32(1) of the Lanham Act, (2) false designation of origin under §43 (A)(1)(A) of the Lanham Act, and (3) common law trademark infringement and palming off.

         After a period of discovery both parties moved for summary judgment. RXD moved for partial summary judgment on Apple's counterclaims. Apple moved for summary judgment on all claims and counterclaims.

         II. Legal Standard

         Summary judgment is appropriate if the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Celotex Corp. v. Catrett,477 U.S. 317, 322 (1986). A party moving for summary judgment has the initial burden of establishing the basis for its motion and identifying the evidence which demonstrates the absence of a genuine issue of material fact. Id. Once the moving party satisfies its initial burden, the opposing party may show, by means of affidavits or other verified evidence, that there exists a genuine dispute of material fact. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,475 U.S. 574, 586-87 (1986). In ...


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