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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 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.


“And I don't know why [Apple is] acting like it’s superior. I don't even get it. What are they trying to say?” -- Bill Gates on the Mac ads

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