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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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By patentman on 1/15/2007 8:19:43 AM , Rating: 2

1. "First of all, the mark is far too general to ever be registered, unless the manufacturer has promoted it to the point of it acquiring "secondary characteristics"

- Generic terms can NEVER be federally registered. This is why trademark lawyers refer to marks that have gone generic as "genericide."

2. "Ah, but there is far more to trademark law than a simple "first come, first served" mentality."

- Yes and no. Trademark law arises from the common law: the first to use a mark that designates the source of goods or services in commerce IS ENTITLED to the mark. Indeed, it is a "first come, first served" system, at least with respect to common law trademark rights.

3. "First of all, the mark is far too general to ever be registered, unless the manufacturer has promoted it to the point of it acquiring "secondary characteristics"

- Merely descriptive terms CAN be registered upon a showing of proof that they have acquired "SECONDARY MEANING" not secondary "characteristics." A showing of secondary meaning entails establishing that a significant quantity of the consuming public for the goods and/or services in question understand it to refer exclusively to a particular party.


4. "Secondly, the mark was registered in 1996, yet wasn't used until last year. This is evidence of abandonment."

- Evidence of abandonment? Yes. Conclusive proof of abandonment? No.

5. "Thirdly, the same mark is allowed to be used in different markets by different owners."

- Kind of. Generally a mark may be concurrently used by different companies where such use will not cause a likelihood of confusion. That is, the concurrent use of the mark by A and B in association with their goods and services is not such that the public is likely to be confused about the source of A's goods and B's goods. Separation of markets is but one factor that is considered in this analysis. I.e. the mark "Sunkist" was allowed to be concurrently used by two different companies when, on the one hand, the mark was associated with the Florida Growers association and citrus fruit while, on the other hand, the mark was associated with a New York bakery and specialty breads. In this case, the courts held that there was no likelihood of confusion, primarily because the products themselves were sufficiently distinct.

However, in instances where the goods or services are relatively close, i.e., Cisco's internet phone v.s. Apple's cellular phone, the likelihood that people may be confused as to the source of the goods is increased.



Apple should just put its company name before the iPhone mark (i.e., market the phone as "the Apple iPhone" instead of just "iPhone") to minimize any likelihood of confusion.


By patentman on 1/15/2007 8:43:52 AM , Rating: 2
For the record Masher2, for once I think you have given a generally good overview of the applicable IP laws, whatever differences you and I may have with respect to the patent laws. My post above is just me being picky.


By masher2 (blog) on 1/15/2007 10:00:06 AM , Rating: 2
> "My post above is just me being picky..."

No problem at all...and in the same spirit, I have a few nits to pick myself :)

> "Generic terms can NEVER be federally registered..."

Of course. However, terms that are somewhat general can be registered in certain circumstances. If Cisco had promoted the term iPhone to the point that, to the average consumer, it evoked their product, the generality of the term would no longer be relevant. That was my original point....and based on your other remarks, I think you agree with it.

> "Evidence of abandonment? Yes. Conclusive proof of abandonment? No. "

There is no such thing as "conclusive proof" in our legal system. However, three consecutive years without use is prima facie proof of abandonment. Which means that, unless Cisco can show just cause for failing to use the mark in a timely manner, they have indeed abandoned it.

> "However, in instances where the goods or services are relatively close, i.e., Cisco's internet phone v.s. Apple's cellular phone, the likelihood that people may be confused as to the source of the goods is increased. "

Just so. Which is why I said this third claim of Apple's was suspect. When you make a legal case, you throw everything on the wall and see what sticks. However, the other two points (generality and abandonment) are, if proven, each sufficient by themselves.

> "Yes and no."

Yes and yes. My statement was that there is much more to trademark law than "first come, first served". Simply because you are the first to register a mark does not give you exclusive, permanent rights to it. The mark may be deemed generic, or become so after time. It may be abandoned, either intentionally or accidentally through misuse, lack of use, or failure to protect. It may be deemed diluting to a differing, but "famous" mark. It may be deemed specific enough that others can use the mark in differing regions or markets without consumer confusion.

So simply because one "came first" to the USPTO does not automatically give you rights to a mark. There is-- as you well know-- much more to it than that.



By patentman on 1/15/2007 10:46:34 AM , Rating: 2
"If Cisco had promoted the term iPhone to the point that, to the average consumer, it evoked their product, the generality of the term would no longer be relevant. That was my original point....and based on your other remarks, I think you agree with it."

I agree with your underlying point. My disagreement is/was with your terminology. You keep saying that "generic" terms cannot be registered but that terms which are "somewhat generic" may be trademarked. I think you mean that "generic" terms cannot be trademarked, whereas terms that are "merely descriptive" may be trademarked with a showing of secondary meaning. It is inconcistent with the law to call a term "generic" or "somehwhat generic" and indicate that it can be trademarked. Only in very very few instances has a term that has "gone generic" (meaning a term that once was a trademark but eventually became associated with the good itself and not the source) been recaptured from the public so as to recoup its original association with a source, i.e., in the Singer case.

"There is no such thing as "conclusive proof" in our legal system."

While I agree with you that 99.9% of the time there there is no such thing as "conclusive proof," I would mention that many laws, including the IP laws, present certain conditions that, if met, result in a given effect or punishment per se. I.e., in antitrust law, if a firm engages in minimum resale price fixing, that is a per se violation. In that case, if minimum price fixing is found, then a violation necessarily ensues (of course, evidence establishing minimum price fixing must be presented)

Anyways, I think our points are the same, in that we both agree that lack of use for 3 years establishes a rebuttable presumption of abandonment (as you said, it is prima facie proof of abandonment), but that presumption is rebuttable.

"Just so. Which is why I said this third claim of Apple's was suspect. When you make a legal case, you throw everything on the wall and see what sticks. However, the other two points (generality and abandonment) are, if proven, each sufficient by themselves."

I agree generally, although I will say that from a practical standpoint that when you make a legal case you do not necessarily take the shotgun approach and "throw everything on the wall and see what sticks." If you associate a very tenous/unsupportable allegation with a very strong one and bring them both in the same court, it is likely that your credibility before the judge and jury will be blown out of the water by the tenous claim. I've always been taught to bring causes of action that pass the "laugh test." That is, if I honestly beleive a judge would not laugh me out of court, then its proibably ok to bring.

So simply because one "came first" to the USPTO does not automatically give you rights to a mark. There is-- as you well know-- much more to it than that."

Oh I agree that there is a lot more tho trademark law than showing up first to the PTO. I am merely arguing about priority. I think my use of "entitled" in my post above confuses the point I was trying to make, which is that
with respect to common law rights, so long as a mark is valid (i.e. not generic, not abandoned etc.), it is a first come first serve system. Specifically, the first party to use a mark in commerce as an indication of source has priority (and several other rights to the mark) to the mark.

The same is generally true under the federal law, except that the first party to use the mark in commerce as an indicator of the source of goods or services OR the first party to file an bona fide intent to use application in the USPTO and subsequently establish use in commerce has priority to the mark.

As you mentioned, it is possible to have concurrent use registrations, which typcially crop up when two common law users of a mark are limited to the use of that mark within certain defined areas of the country.


By masher2 (blog) on 1/15/2007 12:48:16 PM , Rating: 2
> "You keep saying that "generic" terms cannot be registered but that terms which are "somewhat generic"

No. I never used the term "generic", because (as you apparently know) it has special meaning within trademark law. I used the English word "general" instead. To me, the term "iPhone" brings to mind an "Internet Phone" of some sort, just as "eMail" means "Electronic Mail". Both are generally descriptive terms (when applied to phones and mail, respectively) and thus both would face more stringent challenges to be recognized as registered marks.

> "we both agree that lack of use for 3 years establishes a rebuttable presumption of abandonment...but that presumption is rebuttable.

All presumptions are rebuttable...else there would be no need to go to court. However, from all the publicly available evidence (which is all we can debate at this time) all the points lie in Apple's favor, not Cisco's.

> "If you associate a very tenous/unsupportable allegation with a very strong one and bring them both in the same court, it is likely that your credibility before the judge and jury will be blown out of the water by the tenous claim"

I'm sorry, but this isn't true. Ask any attorney. I've been to civil court dozens of times, both as plaintiff and defendant. You make any and all claims that have even a slim chance of succeeding...and you regularly expect many of them to fail. A claim being rejected by a judge in no way prejudices any of your others.

> "I've always been taught to bring causes of action that pass the "laugh test."..."

Ah, but a claim that has a slim chance of succeeding passes the "laugh test". By definition.

Apple claims cell phones are a different market than VoIP phones. Personally I disagree...but its certainly not wild enough to make me laugh. Now, the EU attacking Microsoft by defining the "workgroup server software market" separately from the "server software market", even though the exact same products are marketed and sold in both...that fails the laugh test in my opinion. Yet it went to court and the judge sided with the EU.

It is an attorney's business-- indeed his duty-- to advance any and all claims he feels have even a small chance of succeeding.


"It seems as though my state-funded math degree has failed me. Let the lashings commence." -- DailyTech Editor-in-Chief Kristopher Kubicki

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