United States District Court, E.D. Virginia, Alexandria Division
O. Grady United States District Judge.
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.
The Parties, Mark, Applications, and Registrations 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.
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.
The TTAB Proceedings
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.
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
The Current Proceedings
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.
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
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 ...