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Company that owns iPad trademark in EU wants Apple's business

While Apple appears to be the rightful owner the iPad trademark for the U.S., there's a bit of a problem in the E.U. A French-Italian company, STMicroelectronics, currently owns the rights to "iPad" in two different classifications -- "electronics and components" and "using the name in print." ST has held the trademark since September 14, 2001, but it is set to expire on September 1, 2010.

So what does ST intend to do? Possibly try to get Apple as a customer in return for trademark rights. The president and CEO of STMicroelectronics, Carlo Bozotti, is currently meeting with customers in Taipei, and when asked if the company would make some sort of deal with Apple, he replied "Our ambition is to have a great customer named Apple."

It's a possibility. The existing ST iPad (Integrated Passive and Active Devices) trademark covers chipsets for cell phone manufacturers, so Apple could theoretically use the company's products in future devices. Apple's other choices could include paying ST a license fee for rights to use the trademark, or legal action to gain rights to the name.

This isn't Apple's first run-in with trademark difficulties. The day after the iPhone was announced in 2007, Cisco sued Apple for infringing on the iPhone trademark name. The two companies eventually came to an agreement and both use the term iPhone for their products.

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While Apple appears to be the rightful owner the iPad trademark for the U.S., there's a bit of a problem in the E.U. A French-Italian...
 

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Zac Bedell

Trademark law is not grant absolute ownership of a particular name. A name is only protected from uses which could lead a reasonable person to be confused as to whether to similarly (or identically) named products were in fact from the same company. In general, trademarks are limited to a particular industry.

ST's iPad appears to be a chip/circuit board interconnect technology. Unless you can find a "reasonable person" (good luck on that alone) who would be confused that a tablet computer like thing and little bits of solder on chips were the same thing, there's no cause of action under trademark law.

See Apple Corps versus Apple Computer for an identical case. Computers were deemed to be not the same thing as records. Both Apple's continued to do business under their chosen names.

February 06 2010 at 10:34 AM Report abuse rate up rate down Reply
Gwydion

"Change the name, not a big deal", Steve Jobs, 2.009

February 06 2010 at 2:21 AM Report abuse rate up rate down Reply
1 reply to Gwydion's comment
Dr_Evil

Hahaha!!
I fell of the chair laughing!

Don't you hate it when quotes come back to hunt you like that? We'll see if this becomes an issue, but if Apple have dealt with this company in the past, they obviousely know who holds the TM rights for IPAD.

And EU is not Europe. There are many different, sometimes contradictory, laws in each of the member states. You could get an EU approval for using a TM but it could be overruled by any country's patent and rights- office.

February 07 2010 at 2:26 PM Report abuse rate up rate down Reply
John

It looks like STMicroelectronics is using IPAD, so would you say IPAD, I PAD, IP AD, or IPA D? The writer is somehow convinced it is pronounced iPad. Where does STM use that spelling?

February 05 2010 at 6:40 PM Report abuse rate up rate down Reply
2 replies to John's comment
JD

I'm a little confused... Did you mean to say that IPAD and iPAD are spelled differently? They are not, it's the same spelling but does have different capitalization.

February 05 2010 at 7:55 PM Report abuse rate up rate down Reply
John

The confusion is understood Jose. My point was the author is being presumptuous in writing it as iPad and undoubtedly pronouncing it as "i Pad." To STMicroelectronics it is IPAD, an acronym for Integrated Passive and Active Devices. Who knows how they pronounce it. Spelled the same... different capitalization, totally different meaning.

February 05 2010 at 10:23 PM Report abuse rate up rate down Reply
Mystic

I had to idea someone could trademark an acronym.

February 05 2010 at 5:14 PM Report abuse rate up rate down Reply
jess

Apple is already a customer of ST Micro: the accelerometers in the iPhone are provided by the latter (at least they were for the original iPhone, I don't know for the 3GS).

Note that the ST-Ericsson joint-venture designs and builds ARM-based processors very similar to Apple's A4. Their latest chip is the U8500, which contains a Cortex A9 core. But I can't imagine how ST could sell this to Apple which now has its own processors and in-house expertise.

February 05 2010 at 5:01 PM Report abuse rate up rate down Reply
Carl

Are you blind or did you not know Apple itself is a patent troll?

February 05 2010 at 4:58 PM Report abuse rate up rate down Reply
Matthew W.

For a company that protects its' copyrights and trademarks as fiercely as Apple does, they don't seem to have had much respect for the copyrights and trademarks of others in this case.

February 05 2010 at 3:12 PM Report abuse rate up rate down Reply
Steve

STMicro is a fabrication company (they make chips for people). I assume that they want Apple to start fabricating all of their silicon like the A4 through STMicro.

February 05 2010 at 3:00 PM Report abuse rate up rate down Reply
JAQ

By "customer" they may have simply meant "trademark licensee". That's a common resolution when a big company wants to use a trademark controlled by a little one: the former gives the latter a bunch of cash, and both walk away as "winners".

February 05 2010 at 2:57 PM Report abuse rate up rate down Reply
Adam

patent troll? this company actually makes products, patent trolls typically don't.

plus, this is a trademark issue, not a patent issue.

February 05 2010 at 2:51 PM Report abuse rate up rate down Reply
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