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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 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.


"We basically took a look at this situation and said, this is bullshit." -- Newegg Chief Legal Officer Lee Cheng's take on patent troll Soverain

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