The United States District Court for the Eastern District of Virginia has affirmed, on summary judgment, the TTAB’s precedential decision in RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801 (TTAB 2018) [TTABlogged here]. Because RxD Media submitted no new evidence, Judge Liam O’Grady ruled that a de novo review of the Board’s findings was unnecessary. Instead, the court applied the substantial evidence standard mandated by the Administrative Procedure Act, which requires that findings of fact be upheld if they are not “arbitrary, capricious, or otherwise not in accordance with the law.” RxD Media, LLC v. IP Application Development LLC, Civil Action No. 1:18-cv-486 (E.D. Va. March 27, 2019).

The Board had dismissed RxMedia’s Section 2(d) opposition to registration of the mark IPAD for various business and computer services, including storage and retrieval of data. RxD Media claimed prior use of the identical mark for ““providing temporary use of a web-based software application for mobile-access database management whereby users can store and access their personal information,” but it failed to prove that its alleged mark had acquired distinctiveness prior to applicant’s constructive first use dates.

RxMedia brought a civil action under Section 1071(b) seeking review of the Board’s decision, and it added four more counts, including trademark infringement and unfair competition. Apple joined with its subsidiary as defendants and counterclaimed for trademark infringement and unfair competition. The court ruled in favor of Apple across the board.

The key issue in the case was priority. Apple was able to rely on its foreign filing dates for the IPAD mark as its constructive first use dates (even though its applications were published under Section 2(f), a concession that the IPAD mark was not inherently distinctive). RxMedia failed to prove that it had acquired rights in the mark IPAD prior to Apple’s constructive use dates: it failed to show that its mark should be considered to be the term IPAD rather than the composite “ipad.mobi,” failed to prove that IPAD was not descriptive, and failed to establish acquired distinctiveness prior to Apple’s dates.

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TTABlog comment: Goliath crushes David. How do you like them apples?

Text Copyright John L. Welch 2019.