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Judge may rule that the term "iPhone" is too generic for one company to own

A day after Apple announced the iPhone, Cisco Systems quickly filed a lawsuit against Apple, claiming that the computer company infringed on its trademark. True enough, Cisco's consumer arm Linksys had released a product called the iPhone earlier than Apple, and the trademark name "iPhone" had been owned by Cisco for several years already. Despite all this, Apple decided to launch its mobile communications device under the iPhone name anyway -- a move declared as extremely bold by many analysts.

In a report, Cisco mentioned that Apple had repeatedly approached it for permission to use the iPhone name, but no solid agreement had ever come to realization. Now, however, it could be possible that both companies will be allowed to use the iPhone name -- and so would everyone else, says a trademark expert.

According to Brian Banner, a seasoned attorney dealing with intellectual property and trademarks at Rothwell Figg, the "iPhone" name may actually be generic enough that a judge will rule it usable by both Apple and Cisco. The ruling will be under condition however, that a company name be attached to the term "iPhone," like "Apple iPhone" or "Cisco iPhone." Banner mentioned that the term may also be deemed generic enough to use by any company.

"They must have figured the reward would be greater than the risk. They probably did a lot of homework before calling it the iPhone and figured that the registration Cisco has is not a serious impediment," says Banner. But this is definitely not what Cisco thinks. Cisco representatives indicated that it will vigorously defend what it owns. Apple on the other hand disagrees with Cisco. "We believe that Cisco's U.S. trademark is tenuous at best," said Apple representative Katie Cotton. "We are the first company to use the iPhone name for a cell phone and we're confident we will prevail."




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If that's the case...
By drebo on 1/12/2007 10:32:15 AM , Rating: 5
If "iPhone" is too generic for just a single company to use, then any other "i" trademark that Apple has should suffer the same consequence, and all suits Apple filed against companies who make arcade game coin counters and laptop sleaves should be overturned.

Personally, I think it's about time the patent, copyright, and trademark laws were rewritten. It's abundantly clear the original laws did not take into account the level of technology we have today, and they need to. Patent trolls are also out of control and need to be put in check. Sometimes, I'm ashamed to admit I live in the US.




RE: If that's the case...
By dgouldin on 1/12/07, Rating: -1
RE: If that's the case...
By zombiexl on 1/12/2007 10:51:27 AM , Rating: 5
quote:
If "iPhone" is too generic for just a single company to use, then any other "i" trademark that Apple has should suffer the same consequence, and all suits Apple filed against companies who make arcade game coin counters and laptop sleaves should be overturned.


I was thinking the same thing..
If this turns out like this then MS should rebrand Zune the MS iPod to confuse all the people who buy these things based on the iPod name.


RE: If that's the case...
By phatboye on 1/12/2007 11:04:09 AM , Rating: 4
Cisco should retaliate by making a mp3 player called the "IPod" and market a service for downloading music called "ITunes".


RE: If that's the case...
By Spivonious on 1/12/2007 12:17:51 PM , Rating: 2
Scotties should call their tissues Kleenex.


RE: If that's the case...
By patentman on 1/15/2007 8:35:43 AM , Rating: 2
iPod is not a generic term. If anything, it is a "fanciful" term (actual terminology used in Trademark law).


RE: If that's the case...
By TomZ on 1/12/2007 11:01:37 AM , Rating: 5
I agree - and as a reminder, Apple was going after companies that had the word "pod" in their name. It is pretty hypocritical of Apple to pursue these types of suits on the one hand, and then blatantly ignore a clear, registered trademark matching exactly their name on the other hand. Apple should be ashamed of themselves - it is clear they have no moral compass in this case.


RE: If that's the case...
By masher2 (blog) on 1/12/07, Rating: 0
RE: If that's the case...
By TomZ on 1/12/2007 1:37:25 PM , Rating: 1
I don't see the difference. After all, neither device is an "iPhone" (in terms of a dictionary definition) either - they are both "phones." This is the same as saying Apple's PMP is neither a "pod" nor an "iPod" (dictionary definition).


RE: If that's the case...
By masher2 (blog) on 1/12/2007 2:13:41 PM , Rating: 2
Let's take it one step at a time. You're not allowed to trademark a dictionary word in conjunction with original usage. That should be fairly clear...otherwise someone could trademark the entire dictionary, and prevent us all from describing our own products, or even speaking at all.

For that reason, you cannot trademark "phone" to describe a phone. Any derivative form must be widely distinguished from it. For instance, you clearly cannot trademark "best phone", "red phone", or even "smart phone"....not in conjunction with selling telephones, at least. You could, though, use the trademark "RedPhone" to sell something else entirely.

Trademarks are designed to protect brand identification created by a seller. The trademark holder is not allowed to "steal" name identification which already exists in the English language. Clearly, the term "iPhone" is some sort of phone...and its not clearly differentiated from any other sort of phone. What about "ziPhone"? That's verging into territory more grey. How about "Apple iPhone"? That's quite alright...as long as the Apple is tacked on. No chance of consumer confusion in that case.


RE: If that's the case...
By Sharky974 on 1/12/2007 5:46:22 PM , Rating: 4
How can you trademark a fuckin fruit? Apple's entire name is based on an illegally broad trademark, really.

How about I go trademark "orange", too.


RE: If that's the case...
By MobileZone on 1/12/2007 5:52:35 PM , Rating: 2
Let's not forget their fight with the Beatles label.


RE: If that's the case...
By masher2 (blog) on 1/12/2007 6:04:22 PM , Rating: 2
> "How about I go trademark "orange", too"

You can do so, of course. As long as you don't use it to sell oranges.



RE: If that's the case...
By decapitator666 on 1/13/2007 7:12:39 PM , Rating: 3
Orange is allready taken by a mobile phone company that operates in europe ;-)


RE: If that's the case...
By dmark07 on 1/14/2007 8:29:43 PM , Rating: 2
First off, please post a link to these trademark laws. Second, if Apple thought the "iPhone" product name was too generic then why did they approach Cisco repeatedly to try and acquire the name?

Apple could have avoided this entire mess if they would have just chose a different name. BUT WAIT!! Apple has presence over the law. If you want to flame me go ahead but think about this, what if Apple had the name "iPhone" but Cisco wanted to use it. Apple would be suing Cisco before the cloth covering the Cisco "iPhone" hit the floor. Come on Steve, you used to be cool.


RE: If that's the case...
By masher2 (blog) on 1/15/2007 7:36:24 AM , Rating: 2
> "First off, please post a link to these trademark laws..."

Do I really need to perform basic Google searches for you? Well, it seems so. From http://cyber.law.harvard.edu/metaschool/fisher/dom...

quote:
An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. For example, the words "Exxon," "Kodak," and "Apple" bear no inherent relationship to their underlying products ...Arbitrary or fanciful marks are inherently distinctive -- i.e. capable of identifying an underlying product -- and are given a high degree of protection...

A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product...For example, "Holiday Inn," "All Bran," and "Vision Center" all describe some aspect of the underlying product or service....Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired "secondary meaning." Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage
Follow that so far? If so, you should see why calling a phone an "iPhone" is far harder to trademark than calling an MP3 player an "iPod". Now, lets move to the second part of Apple's claim:

quote:
The rights to a trademark can be lost through abandonment...non-use for three consecutive years is prima facie evidence of abandonment. The basic idea is that trademark law only protects marks that are being used, and parties are not entitled to warehouse potentially useful marks ...
Nothing could be more clear. This trademark was registered in 1996, yet no products were released within three years. This is certainly evidence of trademark warehousing.

> "if Apple had the name "iPhone" but Cisco wanted to use it. Apple would be suing Cisco before the cloth covering the Cisco "iPhone" hit the floor..."

I imagine they would. However, that doesn't change the fact that, in this particular case, Apple is in the right. Each case must be judged on its own merits alone, and not your personal opinion of the plaintiff or defendent.


RE: If that's the case...
By cochy on 1/13/2007 1:27:21 AM , Rating: 2
A moral corporation...what a novel idea.


RE: If that's the case...
By skipintro on 1/12/07, Rating: -1
RE: If that's the case...
By TomZ on 1/12/2007 11:41:20 AM , Rating: 2
It would be nice if Congree would pass a law saying that paid agents be required to disclose their commercial affiliation when making posts on forums like this one.

I hope in the end, this practice becomes widely perceived for what it is - deceptive advertising.


RE: If that's the case...
By skipintro on 1/12/07, Rating: -1
RE: If that's the case...
By Flunk on 1/12/07, Rating: -1
RE: If that's the case...
By AdmQuixote on 1/12/2007 2:13:31 PM , Rating: 2
We don't persecute people for their personal beliefs here.

While I don't want to get too far from Apple's hypocrisy, let's not be naive. Of course Canadian authorities persecute people for their personal beliefs. It has been in the news outside of Canada for years. For example, Canadians who think homosexuality is immoral better not discuss this personal belief or they will definitely risk persecution.

Here is just one link that summarizes a prestigious law journal on the problem, you can easily find many other links on the uncensored internet.

http://www.narth.com/docs/trumps.html


RE: If that's the case...
By masher2 (blog) on 1/12/2007 2:17:50 PM , Rating: 2
> "For example, Canadians who think homosexuality is immoral better not discuss this personal belief or they will definitely risk persecution...."

Canada's infamous hate speech legislation is clearly over the line, and numerous examples of "persecuting people for their personal beliefs" abound. If anyone doubts it, try denying the Holocaust in Canada, or distributing pamphlets claiming one race is inferior to another.


RE: If that's the case...
By cochy on 1/13/2007 1:33:35 AM , Rating: 2
As a Canadian I am not aware that Holocaust denial is against the law, as it is in Germany. However I have no problem if it were illegal to spread hateful racist propaganda through speech or any other medium. There's no room for such things. Freedom of speech however vital towards our inalienable rights is not God.


RE: If that's the case...
By typo101 on 1/14/2007 9:48:26 AM , Rating: 2
Some of what you say seems tongue-in-cheek to me, but it scares me that it probably isn't. As a Canadian, I sleep perfectly well knowing that we persecute those who spread hate.

Is there no harm in denying the Holocaust? I wonder what would happen if say a FOX type network in some other country made "documentary" like they did about the mission to the moon, only about 9/11? Ask anybody affected by that attack how that would make them feel?


RE: If that's the case...
By masher2 (blog) on 1/14/2007 7:44:11 PM , Rating: 2
> "As a Canadian, I sleep perfectly well knowing that we persecute those who spread hate. "

I rest my case. Unpopular speech is the only type of speech that needs protecting. One day you may want to say something the majority disagrees with. Then you may change your mind about such anti-civil rights legislation.


RE: If that's the case...
By typo101 on 1/14/2007 10:10:25 PM , Rating: 2
I said nothing about the majority or popularity.

Its like sexual harassment. Its wrong even though it can be only words and only harms one person. Keyword there harm. It is not wrong because one person (or even everybody) disagrees.


RE: If that's the case...
By masher2 (blog) on 1/15/2007 7:45:29 AM , Rating: 2
> "I said nothing about the majority or popularity..."

You didn't have to. If the majority of people believe something to be true, then that majority certainly won't pass a law against stating it, now will they? Popular speech is always protected by the mob itself...it doesn't need special legal protection. Only unpopular speech does.

If you don't defend speech that you personally do not agree with, then you don't believe in free speech. Period.

> "Keyword there harm..."

Exactly. And the touchstone for judging speech is in how a "reasonable person" would react to it. If you shout fire in a crowded theatre, a reasonable person would attempt to flee to an exit. This causes the potential for harm.

However, if you say to a reasonable person that Québécoise are less intelligent than other Canadians, a reasonable person merely laughs. The fact that some unreasonable person might agree, then be further motivated to go on a killing spree in Montreal, is irrelevent. An opinion by itself causes no harm...and unpopular opinions must be protected, else free speech itself is meaningless.


RE: If that's the case...
By devbreak on 1/19/2007 6:45:42 AM , Rating: 2
quote:
An opinion by itself causes no harm...and unpopular opinions must be protected, else free speech itself is meaningless.


But free speech itself IS meaningless. Freedom is by definition neither good nor evil - it is the ability do either. Thus it is a form of power just the same as other rather abstract forms of power, such as money or respect. It is a tool, and whether it is good or bad (or indeed even meaningful) is in the hands of the wielder. This must sound rather provocative to a citizen of a country that was founded with liberty as its highest ideal, but bear with me. (I'm guessing that you're American considering how well-versed you are in American trademark law)

My point is that freedom of speech is not a silver bullet. It is not a goal in itself, but rather a means to an end - and that end is a "reasonable" society (I do realize how arbitrary this term is). The primary function of free speech is to allow the people (or journalists) to criticize the government. This works as a safeguard against our society becoming a totalitarian, censoring system like North Korea or China. That safeguard makes sense and should be protected - but that is all it is, a safeguard.

The same holds for democracy - for example Hitler was democratically elected (feel free to invoke Godwin's Law here, but Holocaust was already brought up as an example). The primary strength of democracy is it's usual inefficiency - it helps maintain a relative status quo until the next election, so we don't "screw up" too much at a time.

Clearly our "ideals" such as free speech or democracy are not failsafe - they do not guarantee a reasonable society by themselves. If we hold these "ideals" above reproach (e.g. "then you don't believe in free speech") then we close our eyes to their shortcomings, and eventually they WILL fail. Holding any ideology above reproach, whether it is liberty, communism, religion or anything else, is the hallmark of a true fanatic, and fanatics are the kinds of people that make concentration camps or fly planes into buildings.

With freedom comes responsibility, and it up to us as a society to decide whether to intervene when people do not live up to that responsibility. The issue is not black and white - it is an oversimplification to believe it is.


RE: If that's the case...
By AdmQuixote on 1/15/2007 10:04:45 AM , Rating: 2
As a Canadian, I sleep perfectly well knowing that we persecute those who spread hate.

I can understand this philosophy, even if I completely disagree with it. For your sake, I just hope that you are always on the side of your leaders who get to define what hate speech is. Wait until they forbid making "hateful" speech about the government...

Having had several homosexual friends, I think those organizations who help homosexuals become straight are truly kind while those who attack them are the ones doing harm. For more details see (http://exodus.to/ and http://www.narth.com/)

Anyway, thank you for yet another nail in the coffin of the original naive Candian post (Flunk's post) than prompted me to comment. (And Masher2, thanks for your words that saved me from making a few other comments...)


RE: If that's the case...
By masher2 (blog) on 1/12/2007 11:46:49 AM , Rating: 2
> "If "iPhone" is too generic for just a single company to use, then any other "i" trademark that Apple has should suffer the same consequence..."

No, you don't understand the issue here. The problem is in distinguishing a "phone" from a "iPhone"...are the two separate enough to warrant a trademark? Quite possibly they are not.

For instance, you can easily trademark "Apple" to identify a company that sells computers. But if your business was selling apples (the fruit), then you're out of luck. "Apple Company" is also far too close. "John Doe's Fabulous Apples, Inc.", however, is.

I assume your post refers to the iPod. Since it's not a "pod", the trademark is good.


RE: If that's the case...
By drebo on 1/12/2007 4:08:15 PM , Rating: 2
Respectfully, I disagree, and find what you say somewhat inconsistent and backwards.

My understanding of a trademark is a label that differentiates one product from a similar product. Otherwise, what would the point of a trademark be? No one has trouble differentiating Microsoft Windows from Storm Windows. Likewise, why would any one have trouble differentiating Apple's iPod from a coin counting device called the PayPod?

On the other hand, the two iPhones are similar enough that product recognition could be a problem. Yes, one is an IP Phone and the other is a cell phone, but they are both phones. To me, this is where a trademark should make it's mark.

What you are trying to say is that BECAUSE they are so similar, a trademark cannot be applied. That is backwards to any rational way of thinking. The trademark should be there because the products are similar, not the other way around.

Otherwise, how could anyone stop anyone else from creating fundementally similar object and calling it the exact same thing?


RE: If that's the case...
By masher2 (blog) on 1/12/2007 4:23:07 PM , Rating: 2
> "Respectfully, I disagree, and find what you say somewhat inconsistent and backwards..."

Disagree all you wish; this is still basic trademark law and not open to dispute.

> "Likewise, why would any one have trouble differentiating Apple's iPod from a coin counting device called the PayPod? "

I never said they would. I merely pointed out that "iPod" is a valid trademark for an MP3 player, whereas "iPhone" is not a valid trademark for a phone.


RE: If that's the case...
By masher2 (blog) on 1/12/2007 4:51:25 PM , Rating: 2
> "What you are trying to say is that BECAUSE they are so similar, a trademark cannot be applied. That is backwards to any rational way of thinking. "

No, you misread my post. The issue isn't the similarity between the Apple iPhone and the Cisco iPhone. The issue is the similarity between the trademark and the product it describes. To use your "Storm Windows" example-- one can trademark "Windows" to describe software. But one cannot trademark it to sell windows themselves.


RE: If that's the case...
By hubajube on 1/12/07, Rating: -1
RE: If that's the case...
By masher2 (blog) on 1/12/2007 5:45:15 PM , Rating: 2
> "Not to mention that Cisco was ALREADY given the patent on the name "iPhone". It was already determined to not be generic"

It's a trademark. Not a copyright, and not a patent. Also, there is NO determination made as the validity of a trademark when filing is done. It's a simple recording of filing date, nothing more. I can easily file a trademark for "Coca Cola", and it will be accepted...it just won't hold up in court.


RE: If that's the case...
By hubajube on 1/12/2007 5:56:06 PM , Rating: 1
Actually it's more than just a "filing date" as you put it. If you filed for "Coca Cola" it may NOT be accepted. There is a reviewing attorney for trademark filings. Part of his/her job is to find conflicting trademarks. Try again.


RE: If that's the case...
By masher2 (blog) on 1/12/2007 6:19:23 PM , Rating: 2
> "There is a reviewing attorney for trademark filings. Part of his/her job is to find conflicting trademarks...."

The conflict check is only within a given market, and the USPTO specifically informs each applicant that granting the registration does not imply the trademark is safe from challenge. In fact, the USPTO allows for a company or private citizen to directly challenge their granting of a trademark...without having to resort to court action.

Furthermore, the fact two marks may be deemed nonconflicting at a given point in time does not imply they are always nonconflicting. Markets may expand, products may change and start to overlap, or one trademark may become "famous"...a special designation with special rights and responsibilities.

IP law is complex. Don't debate it unless you know someone about it.



RE: If that's the case...
By hubajube on 1/12/2007 6:37:08 PM , Rating: 1
quote:
IP law is complex. Don't debate it unless you know someone about it.
Yes "massa", I's won't debate with you's anymore captain. Aye aye sir. Give me a break. I'll debate whatever I want to debate. Person to person communication can be complex. Don't speak to another person unless you know something about communication.


RE: If that's the case...
By sker on 1/12/2007 8:42:23 PM , Rating: 2
I signed up only to applaud your comment. Well said.


RE: If that's the case...
By masher2 (blog) on 1/13/2007 12:01:46 AM , Rating: 2
> "Yes "massa", I's won't debate with you's anymore captain. Aye aye sir. Give me a break. I'll debate whatever I want to debate...."

Then keep debating by all means. However, several prominent trademark attorneys have already stated their agreement with Apple's position. I'm merely trying to explain to you their reasoning. Feel free to continue disagreeing if you wish, but the facts are rather clear.


RE: If that's the case...
By jtyson on 1/12/07, Rating: -1
RE: If that's the case...
By tungtung on 1/12/2007 3:53:08 PM , Rating: 2
What I don't understand, why haven't Cisco sue Comwave. Cause they also use the term "iPhone" for their telephony service.
http://www.comwave.net/CDN/iPhone/

Or maybe just because the service is for Canadians (I think it's available in Canada only), and the "iPhone" trademark held by Cisco doesn't cover Canada.

I honestly don't understand, and to be absolutely honest, Apple's iPhone blew Cisco's product out of the water. So maybe jealousy may actually be the main reason here.


RE: If that's the case...
By HammerZ on 1/12/2007 6:39:43 PM , Rating: 2
Good question. Probably because comwave does not have the cash or potential revenue to make it worth it. It may be a different situation if Comwave becomes bigger.

As for the last comment in your post, I would have to disagree w/ the logic. Cisco is a networking/communication company that is trying to get into the consumer space (based on some of its recent acquisition). It is not out of the question for Cisco to add cellular capabilities to its iPhone. If that were to happen, we would have two iPhones w/ similar features...I think Cisco has a case to defend the "iPhone" name here.


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