Apple vs. Proview and the Problem With Trademark Families

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You’ve probably heard that Apple is still having trouble securing the “iPad” mark in China. Turns out a Taiwanese company didn’t actually transfer the PRC trademarks. Here are the details, and then I have a quick comment on a branding strategy issue:

A Taiwanese flat-screen company called Proview, says that it still owns the “IPAD” trademark for Mainland China, after selling off trademarks for other regions of the globe to a company associated with Apple in 2006 for $55,000.

Proview – which is struggling financially and whose CEO is openly admitting it needs money (its Shenzhen, China operation has had its assets seized apparently) – is claiming that when it sold the IPAD trademarks to a company called IP Application Development, which was apparently buying the trademarks for Apple, that the sale of the “global trademark” did not include two trademarks in Mainland China. (The Next Web)

The good news for Apple is that Proview is in receivership and control over their assets has devolved to a group of eight banks. I assume Apple won’t have too much difficulty negotiating with financial institutions.

A brief thought on branding. Apple is of course different from a lot of companies in that several of its most significant products have similar names (iPad, iPhone, iPod), making up what some call a family of marks, product names with a common element.

The plus side to having a trademark family is that with each product rollout, you not only establish the new product name, but reinforce all the past product names. New products not only enjoy the goodwill of the company name (Apple) but also the positive association with other products in that family. Lots of folks eagerly picked up an iTouch because they were satisfied with their iPods, and the association was easier to make for customers because of the name similarity.

This Proview situation, however, reveals a downside. If the industry knows that you are going to come out with future “i” products, it may be relatively easy for competitors or trademark squatters to proactively register marks in anticipation of future product rollouts. And hey, who better to anticipate a future product name that a company named “Proview”? (OK, that was an exceptionally weak joke, but gimme a break. It’s late on a Friday)

Apple’s “i” family of products enjoys significant advantages when it comes to branding, but at the same time, the company is telegraphing its future trademark preferences. All the bad guys need to do is anticipate the type of product that will come out in the next couple of years, and it has a good chance of hitting paydirt.

And let’s face it, the “iPad” name was not so difficult to anticipate. You know, ’cause of Star Trek. If you have to ask, you’re not a geek like me.

Have a nice weekend.

2 responses on “Apple vs. Proview and the Problem With Trademark Families

    1. Stan Post author

      Speculation? Me?

      Well, in this case, Apple wouldn’t have to. If it ever came down to a cancellation action, it would be on the grounds of bad faith. The mark is identical and in the same Class as Apple’s “iPad” mark in other jurisdictions.

      Would the “i” marks be able to get well-known status in China? I would think so, particularly for the older products. I think they have challenged some similar marks in the past (folks throwing “i” in front of a mark to glom off of Apple’s goodwill) with mixed success. Comes down to the fundamentals on similarity, I guess. Seems no doubt that marks like “iPod” “iPhone” and so on are indeed famous within China, so that part of the application would be fairly straightforward.