The Board dismissed this Section 2(d) opposition to registration of the mark IPAD for various business and computer services, including storage and retrieval of data. Opposer 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 mark had acquired distinctiveness prior to applicant’s constructive first use dates. RxD Media, LLC v. IP Application Development LLC, Opposition No. 91207333 and 91207598 (February 22, 2018) [precedential] (Opinion by Judge Marc A. Bergsman).
Preliminary matters: The Board began by chastising the parties for their introduction of thousands of pages of testimony and other evidence “without regard to what they needed to prove, apparently in the hope that in wading through it, we might find something probative.” Furthermore, the parties failed to cite to TTABVUE docket entries and improperly designated testimony and evidence as confidential, which “made reconciling their references to evidence difficult and inordinately time-consuming, placing the persuasiveness of the presentations at risk.”
This is not productive. “Judges are not like pigs, hunting for truffles buried in briefs.” United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). The case was neither prosecuted nor defended based on any clear theory of the case. Neither party made a concise and compelling evidentiary showing, and neither was judicious in the introduction of only relevant testimony and evidence.
The Board found most of the evidence to be irrelevant. The only issue was opposer’s priority, and applicant’s proof of post-filing use of its mark and of acquired distinctiveness was unnecessary. Similarly, the Board disregarded opposer’s evidence regarding its activities after applicant’s constructive filing dates.
Priority: Section 2(d) permits an opposition based on “a mark or trade name previously used in the United States.” Because Opposer RxD Media relied on common law rights in the mark IPAD, it was required to establish proprietary rights in that mark, under the rule of Otto Roth. In other words it must show that its mark was distinctive, either inherently or through acquired distinctiveness, prior to applicant’s actual or constructive use of its mark.
Applicant may rely on the filing date of its foreign applications under Section 44(d) of the Act as its dates of constructive use: July 16, 2009 (Trinidad & Tobago) and January 25, 2010 (Canada). The Board noted that even though the opposed applications were published under the provisions of Section 2(f) – a concession by applicant that its IPAD mark is not inherently distinctive – applicant was still entitled to rely on its foreign filing dates for purposes of priority.
RxD Media claimed use of its mark since September 1, 2007, but the evidence showed that, prior to applicant’s constructive priority dates, applicant was using only the “IPAD.mobi logo” shown above. Moreover, in that logo, the pen design is an integral part of the term IPAD, and RxD Media did not show that the term IPAD creates a separate commercial impression from the composite logo. “Simply stating that .mobi is a generic TLD is not sufficient to show that the term IPAD creates a separate commercial impression . . . .”
Even assuming that the term IPAD created a separate commercial impression, the Board found that RxMedia failed to prove a proprietary interest in that term. First, opposer neither asserted or proved that IPAD in inherently distinctive. As to acquired distinctiveness, the Board must first assess the degree of descriptiveness of the term, since the more descriptive a term, the more evidence is required under Section 2(f).
The Board found that, since prior to July 16, 2009, the letter “I” placed before a word or phrase may mean “Internet-based or enabled.” Third party registrations, publications, and websites demonstrated the use of “I” formative marks for Internet-based goods and services. The word “Pad” is defined as, among other things, “a collection of sheets of paper glued together at one end.” The word “Notepad” is ” a pad of blank pages for writing notes.”
When the “I” prefix is combined with the “Pad” suffix, and when considered in conjunction with Opposer’s services, the combination directly refers to an Internet-enabled or accessible medium for storing and accessing information, as one can do with a notepad. The combined term, IPAD, does not create a non-descriptive or incongruous meaning, and, thus, it is not an inherently distinctive mark. When used in connection with a web-based software application for mobile-access databases management whereby users can store and access their personal information, the term IPAD directly conveys to consumers the purpose and function of Applicant’s services.
Opposer’s own use of the term IPAD corroborated its descriptive meaning: for example, in the tagline “Your Mobile Internet Notepad.”
Turning to the issue of acquired distinctiveness, opposer was unable to say how many subscribers it had prior to the end of 2009. Its website never received more than 100 hits per day. As of 2010, RxD Media’s revenues were small and it was not profitable. As of 2013, it had expended $412 on advertising the IPAD.mobi website. There was no evidence that the relevant public, as of July 16, 2009, understood the primary significance of IPAD to be a source-identifier rather than a descriptor of opposer’s services.
And so the Board found that Opposer RxD Media had failed to establish acquired distinctiveness for the term IPAD. The Board therefore concluded that opposer had failed to prove proprietary rights in that term prior to applicant’s constructive priority dates, and so the opposition was dismissed.