Cisco is suing Apple for the iPhone trademark!

[McSkywalker]

That's right, but Apple should have taken it way before. They should have taken it when they started the iStuff policy. How could they ignore or forget such a product like iPhone? Especially such a profitable product.. So unprofessional.

[Ronin1]

Hey all, new to this forum. I don't know the rules on external posting, so I will simply copy and paste the post I made elsewhere... Those who love the Apple "iPhone," have heart, they could win! :censored2:

 

POST:

 

I think there are a couple things people should understand about Trademarks in the US. While my training is in Canadian TM Law, most of the principles should carry over.

 

1) A Trademark really serves 2 purposes. Primarily a Trademark is used as a single source identifier. That is, the Trademark in the eyes of the public is seen to be from a single "company" (source). The second is an indicator of quality. That is not to say what level of quality, but that all goods (or services), associated with the Trademark are of the same quality. For a company, a Trademark registration gives them certain measures of protection as well, such as the right to exclusive use of the granted Trademark - but we can skip that for now.

 

2) A Trademark only gives the Trademark holder protection for the goods and services under which the Registrar approves the application. Why is this important? A strong case can be made (and this appears to be one of Apple's angles), that the category under which Cisco's Trademark was approved does not grant them the right to exclusive use to the name "iPhone" with regards to cellular phones (and some others - again, skipping).

 

So now to the bread and butter. Apple can, and appears to be willing to fight Cisco on this. They will try to distinguish their mark from Cisco's. Other factors that come into play are know as "channels of trade." Meaning, who, what, and where the products are sold, and often taking into account the level of sophistication of the consumers. Apple will undoubtedly try to show that there is no confusion between Cisco's iPhone and Apple's iPhone in the eyes of the consumer (which is what counts). In short, I forsee Apple saying "our iPhone is different (legally) than your iPhone." Another attack likely to be seen if this makes it to the courts, is that there are several applications for the mark iPhone in similar categories of goods. While only the InfoGear applications appear to be approved, this doesn't prevent common law rights (someone has been using the Trademark without registering it, then maybe later decides to try to register it). As Trademarks need to function as source identifiers, having multiple Trademarks or applications on file for the same or essentially the same Trademark could actually weaken Cisco's rights to the use of iPhone - as the mark is inherently not distinct if it is commonly used. This is especially true if it can be shown that these products have co-existed in the marketplace without confusion to the consumer.

 

All of this could be a moot point. The other reason I believe Apple could have gone on with the iPhone name is simple legal manuvering. Intellectual Property lawsuits are often lengthy and expensive (first you can fight with the USPTO over the validty of a Trademark, then you can appeal etc etc... finally landing in an actual court room... someday). This could be Apple's way of convincing Cisco to give them a better deal, or simply to sell the iPhone Trademark alltogether to Apple.

 

Sorry for making this post so long, it's actually a field I'm interested in. I may have over simplified, I did leave some information out for the sake of not boring anyone to death. I hope this gives you a glimpse into the "Exciting" world of Trademarks.

 

http://www.uspto.gov -- US Patents and Trademarks Office (Pretty much everything you would ever want to know about Trademarks)

 

http://tess2.uspto.gov/bin/gate.exe?f=sear...tate=b3pat8.1.1

 

This is the easier of the forms to use for searching. Try things like "i phone" , i-phone, *iphone*. Enjoy!

 

Interesting observations.

 

I recall a case in the U.S. where Beretta Firearms of Italy sued General Motors and the Chevrolet Motor Division over their automobile named "Beretta", claiming that Chevy's miserable car would diminish the reputation of their fine firearms. In the court's ruling the judge opined that no one would mistake a car for a shotgun. Apart from the fact that each of the devices in Cisco's litigation is a fundamentally different telecommunications device and technology, it has been observed elsewhere that the correct (and full name) of the device shown at MacWorld is "Apple iPhone" or (Apple Logo) iPhone as shown on Apple, Inc's web site. It remains to be seen whether "Apple iPhone" is sufficiently different from Cisco's "iPhone" to differentiate the products, but it is an interesting approach as well.

 

I should imagine that Apple, Inc will also argue that i + other word was a formula created by Apple, Inc, then Apple Computers, Inc. and constitutes prior art as such. Everything describing Apple used this formula, including the expression "iCEO" as applied to Steve Jobs, a play on words of the Apple naming formula and i(nterim)CEO.

 

As with many such things, the "risks of litigation" will probably result in a settlement between the parties at some point short of judgment and appeal.

 

Cheers

[roscoe13]

"Cisco lost rights to iPhone trademark last year, experts say"

 

See" http://blogs.zdnet.com/Burnette/?p=236

 

If this is right, it could be over before it starts...

 

Peace

[cls]

Hey all,

 

First, for McSkaywalker.

 

I probably should have also mentioned that for the sake of Trademarks, both literal and common phonetic pronunciations of words are checked. Meaning, in the eyes of a Trademarks Examiner, "iFone" is essentially equivalent to "iPhone." In Canada, this counts for both the English and French languages, so in the US I would assume English and Spanish?

 

Ronin1,

 

Thanks for your reply! I liked your Berreta example. I also appreciate that someone else understands the fundamental difference between Apple's iPhone and Cisco's iPhone, from a Trademark perspective (both in their categories of wares, and the overall brand). The i(WORD) debate is always an interesting one. It can really go either way for Apple. Now that Apple is branching out into new fields of endeavor it should definetly prove interesting as they try to protect i(WORD). While it seems a little absurd that one could protect a single letter followed by ANYTHING, there are historically some cases that suggest it can be done. One of the funny examples I can remember from my schooling included McDonald's suing some poor guy over his "McDots," claiming possible confusion. What did this guy (whos name was McDonald) sell? Bingo blotters. And of course McDonalds won. Another case I found extremely interesting was UPS applying for, and ultimately receiving, a Trademark on the colour brown (the mark is limited to shipping services etc... but personally, I already associated the colour brown to the boxes, so it did not pass the secondary meaning standard in my mind)! Ultimately because the Apple brand is so strong and widely known (especially the iPod, iMac, iBook, and iLife Trademarks), Apple could very well achieve a high level of control for i(WORD) in any product line they carry, or even adjacent products!

 

roscoe13,

 

I was just comming here to comment on that ZDnet story While the bulk of that confirms what I have been speculating, there are in my opinion some errors in that news report. One of the first, and worst, errors is about the Trademark expiring. A Trademark doesn't expire until the Registrar has made its final ruling, which is then reflected on the registry (accessible through TESS at www.uspto.gov). Unless I am misstaken, even if you have periods of inactivity on a Trademark, all the Trademark act requires to keep it alive is to prove current use. As long as the Trademark doesn't actually get expunged, and you can show use, the time period in which the Trademark is inactive is not relevant. While there is a statutory limit on how long a Trademark can remain inactive, that only becomes an issue if the Registrar becomes aware of that fact. I must admit that I'm not actually certain if the USPTO has some kind of automated system for checking active Trademarks, but I am relatively certain that the anniversary/renewal date checking mentioned in the article is. However, this magic "6 year" renewal period I can not explain.

 

http://www.uspto.gov/web/offices/tac/tmlaw...ml#_Toc52344083

 

TERM AND RENEWAL

 

§2.181 Term of original registrations and renewals.

 

(2) Subject to the provisions of section 8 of the Act requiring an affidavit or declaration of continued use or excusable nonuse, registrations issued or renewed on or after November 16, 1989, whether on the Principal Register or on the Supplemental Register, remain in force for ten years from their date of issue or the date of renewal, and may be further renewed for periods of ten years, unless previously cancelled or surrendered.

 

As you can see, this section ripped straigh fron the Trademark Act states that the initial period of validity for a Trademark is 10 years, subsequent renewals being at 10 year intervals.

 

I must say that this case is going to be very interesting to follow. I full well expected Cisco to claim they had rights in the cellular market, regardless of their registered Trademark. I also expected Apple to challenge that claim by showing no use in the cellular market. I also thought it fool hardy for Cisco to sue Apple with such unstable footing on their Trademark. The shocker for me was that it appears that instead Apple is just going to attempt to have the entire Trademark invalidated (according to that article) based on a prolonged inactive period. I still think it would be easier to attack the Trademark based on the co-existence of other iPhone and similarly variant Trademarks, but eh whatever

 

As to all this hate for Cisco. I think they do deserve some defending. They have made some great products over the years, and have helped the internet become what it is (I miss the .com Trademark!). It's not like Cisco is some evil IP hording company whos sole source of revune is based on the frivolous attempts to exort money from people *COUGH*SCO*COUGH* through IP lawsuits. This is not necessarily something Cisco WANTS to do, but more of a matter of statutory law HAS to do. If they do not protect their Trademark, or what they believe is their Trademark, from confusion or unauthorized use, they run the risk of losing it.

 

Cheers!

 

EDIT: Oops. Copied and pasted the wrong subsection of the act, fixed now I had posted the subsection dealing with Trademarks issued PRIOR to November 16, 1989, when it should have been ON OR AFTER.

Edited January 14, 2007 by cls