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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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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.


"I modded down, down, down, and the flames went higher." -- Sven Olsen

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