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."
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
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 ...