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Apple given more time to respond to iPhone trademark infringement suit

The battle commanders over the iPhone trademark on Thursday agreed to a temporary truce in hopes of reaching an agreement before taking things to the courts.

In a joint statement from Apple and Cisco regarding iPhone trademark, the companies have announced that they “have agreed to extend the time for Apple to respond to the lawsuit to allow for discussions with the aim of reaching agreement on trademark rights and interoperability.”

While the iPhone name may already be associated with Apple and the rest of its iLife products, Cisco has owned the iPhone trademark since 2000. In fact, Cisco in December 2006 launched its own line of telephony devices carrying the iPhone brand. Apple then bravely announced its wireless product carrying the same name in January.

Cisco took immediate exception to Apple’s use of its trademark and sued for infringement. “Cisco entered into negotiations with Apple in good faith after Apple repeatedly asked permission to use Cisco's iPhone name,” said Mark Chandler, senior vice president and general counsel for Cisco. “There is no doubt that Apple's new phone is very exciting, but they should not be using our trademark without our permission.”

“Today's iPhone is not tomorrow's iPhone. The potential for convergence of the home phone, cell phone, work phone and PC is limitless, which is why it is so important for us to protect our brand,” said Chandler.

Oddly enough, Apple responded to Cisco’s lawsuit by calling it silly. “We think Cisco's trademark lawsuit is silly. There are already several companies using the name iPhone for VOIP products, and we believe that Cisco's US trademark registration is tenuous at best,” said Apple spokesperson Alan Hely.

“We are the first company ever to use the iPhone name for a cell phone, and if Cisco wants to challenge us on it we are very confident we will prevail.”

With the entertaining sound bites out of the way, the two companies will now have another two weeks to sort things out. If the decision ends up in the hands of the court, some believe that Apple and Cisco could both end up using the iPhone name on the basis of its increasing iGeneric nature.

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Apple's mistake
By lazyinjin on 2/2/2007 10:35:10 AM , Rating: 2
As anti-Apple as I am, this is a really sick-nasty phone with just about everything cool wrapped into one, which will sell in rediculous volumes(relative to its steep price). But apple made a really dumb mistake launching it right after Cisco did. Now its gonna have to save face and shell out some serious dough I believe. I just wish I had trademarked the name myself!




RE: Apple's mistake
By masher2 (blog) on 2/2/07, Rating: -1
RE: Apple's mistake
By feelingshorter on 2/2/2007 12:39:39 PM , Rating: 4
quote:
This is one of the reasons Apple's position is fairly strong...and likely, the rationale behind Cisco returning to the bargaining table.


Cisco is using the trademark! Its called the VOIP iPhone. AAPL are punks, they've been known to sue people left and right. They sued people a while back (and the news was posted here) for anything that had the word pod in it. Now, they are the ones infringing on someone else's copy right bluntly. Hope AAPL goes down in flames.


RE: Apple's mistake
By masher2 (blog) on 2/2/2007 12:47:29 PM , Rating: 1
> "Cisco is using the trademark! "

The trademarked was first registered in 1996 by Infogear. Cisco bought the mark when they purchased Infogear. It's now 2007...and under trademark law, nonusage for three consecutive years is prima facie proof of abandonment.

And let's not forget the generality problem. You can't trademark the word "phone" to sells phones. Does a single lowercase "i" distinguish the word sufficiently enough to be valid for trademarking phones? Given past legal precedent, Cisco could well lose on just this objection alone.





RE: Apple's mistake
By TomZ on 2/2/2007 1:34:07 PM , Rating: 2
Apple must believe Cisco's trademark claim has merit, since they are actively negiotiating with Cisco, rather than just letting the courts sort it out.

If anything, it is a significant PR blunder on the part of Apple to not have ownership or license to the product name arranged before they announce the product using that name. I can't imagine that Apple arrived at the current situation through an active decision; someone at Apple must have dropped the ball.

Just my personal opinion: I believe that iPhone should be a valid trademark because it is a made-up word and is easily distinguished from the common word "phone." Furthermore, allowing two different phone-related products called "iPhone" from different companies would lead to brand confusion. The legal precedent may or may not be otherwise, but that is what seems reasonable to me.


RE: Apple's mistake
By masher2 (blog) on 2/2/2007 2:46:14 PM , Rating: 1
> "I believe that iPhone should be a valid trademark because it is a made-up word and is easily distinguished from the common word "phone"

The same could be said of the invented word "eMail", easily distinguished from the common word mail. Yet no one can trademark email to sell electronic mail programs, even before email entered the lexicon in its own right. And also why you'll never see the trademark "MyApple" used to sell apples...even though its a perfectly valid mark to sell electronic equipment.

In my mind, "iPhone" means internet phone. Apparently it does to a lot of other people as well. Several other companies have been selling VOiP phones under the iPhone name...some of them for two or three years.

Obviously there's a degree of judgement involved in determining how far a mark diverges from the product it describes. Several trademark attorneys have weighed in on the side of Apple. Until a judge rules, the legality is still open to debate...which is why both companies are still willing to negotiate. Still, if I was a betting man, I'd put my money on Apple winning the suit, if it ever came to trial.


RE: Apple's mistake
By TomZ on 2/2/2007 3:07:33 PM , Rating: 2
Don't mean to beat a dead horse, but I don't understand why "eMail" or "e-mail" couldn't have been trademarked by the person who first coined the phrase.

Here is what I am reading in Wikipedia, which I admit is not authoritative, although it is usually correct:

A fanciful / inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or "fanciful" sign. For example, "Kodak" had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary.
http://en.wikipedia.org/wiki/Trademark

and

The term e-mail, as used today, would be an example of a neologism.
http://en.wikipedia.org/wiki/Neologism

If I string these two together, I would have to conclude that e-mail could have been a valid trademark. What went wrong with this/my logic?


RE: Apple's mistake
By masher2 (blog) on 2/2/07, Rating: 0
RE: Apple's mistake
By crystal clear on 2/3/2007 4:26:19 AM , Rating: 2
"the person who first coined the phrase. (E-mail.)"

Unfortunately it should been coined "i-mail"-in short for
"internet mail."

Because this type of mail is transmitted via the "internet".
Without the internet you can SEND/RECIEVE this mail.
There is nothing electronic about this mail.

Quote-

email, e-mail Show phonetics
noun
1 [U] the system for using computers to send messages over the Internet:
You can contact us by email or fax.
What's your email address?

Also-

fax Show phonetics
noun
1 [C] (a copy of) a document that travels in electronic form along a telephone line and is then printed on paper:
I'll send you a fax with the details of the proposal.

http://dictionary.cambridge.org/define.asp?key=252...







RE: Apple's mistake
By masher2 (blog) on 2/3/2007 10:30:34 AM , Rating: 2
> "There is nothing electronic about this mail..."

You mean, except for the fact that it exists in electronic form, and is composed, transmitted, stored, and read upon electronic devices? :p

> "Unfortunately it should been coined "i-mail"-in short for "internet mail."

Oops...people were sending and receiving email long before the Internet existed. Even today, a substantial percentage of emails never see the Internet at all...they travel entirely over local corporate or university networks only.


RE: Apple's mistake
By MustaineC on 2/2/2007 2:26:46 PM , Rating: 2
I wonder what Apple would do if another company released an iBook.


RE: Apple's mistake
By INeedCache on 2/2/2007 4:52:39 PM , Rating: 4
They would scream and gather up their cadre of lawyers and sue, sue, sue! There seems to be a double standard amongst many folks regarding Apple. It seems they should be allowed to do whatever they want, while others cannot come anywhere close to anything Apple. I can't help thinking if this were Microsoft in place of Apple, the hordes would be calling for Cisco to sue them to into oblivion. I'm not sure where this comes from, but it seems many people seem to think Apple is some kind company looking out for you, while barely squeaking by with minimal profits. Meanwhile, Microsoft so some evil company only trying to rip you off. You folks need to wake up and smell the coffee, and come to grips with corporate America. I have nothing against Apple, per se, but I also have nothing against Microsoft, either. I don't think many can say that from what I've been reading around here.


RE: Apple's mistake
By masher2 (blog) on 2/2/2007 5:31:09 PM , Rating: 2
> "There seems to be a double standard amongst many folks regarding Apple. It seems they should be allowed to do whatever they want..."

Personally, I really don't like Apple the company, any of their products, or even Jobs himself. I try not to let it cloud my judgement though. In this particular case, its my opinion that Apple is in the right.


RE: Apple's mistake
By TomZ on 2/2/2007 5:53:57 PM , Rating: 2
Besides, we can always count on you for a contrarian viewpoint. :o)


RE: Apple's mistake
By masher2 (blog) on 2/3/2007 1:26:51 AM , Rating: 2
On those subjects where my view agrees with the majority, I'm rarely motivated enough to post. :)


RE: Apple's mistake
By crimson40 on 2/3/2007 9:48:42 AM , Rating: 2
It is used by an active Cisco product: http://www.linksys.com/servlet/Satellite?c=L_Promo...

(Cisco is Linksys's parent company).


RE: Apple's mistake
By fic2 on 2/2/2007 12:44:10 PM , Rating: 2
quote:
This is one of the reasons Apple's position is fairly strong


Since Cisco (through Linksys) has a product named iPhone:
http://www.linksys.com/servlet/Satellite?c=L_Promo...
I conclude that you don't know what the hell you are talking about.

Since Cisco has an iPhone product then I would guess that Cisco's position is fairly strong.


RE: Apple's mistake
By masher2 (blog) on 2/2/2007 12:49:33 PM , Rating: 2
> "I conclude that you don't know what the hell you are talking about."

Read my post above. There is quite a bit more to Trademark Law than simple "first-come-first-served".


RE: Apple's mistake
By Wightout on 2/2/2007 3:06:52 PM , Rating: 2
I was hoping for the Macintalk personally.


RE: Apple's mistake
By h0kiez on 2/2/2007 11:59:32 AM , Rating: 3
this is a really sick-nasty phone with just about everything cool wrapped into one

You must have never had a 3G phone if you think 2.5G is just about everything cool

Trademark squatting isn't allowed...if you register a mark and fail to use it, you lose the rights to it.

Am I missing something? Cicsco launched the iPhone before apple launched theirs. Hardly squatting.

Apple is going to have to make some concessions and pay some loot if they want to use the name. However, at this point, it seems like the hype has been so huge that they could change the name to the "apple phone" and I can't imagine it would affect sales very much.




RE: Apple's mistake
By othercents on 2/2/2007 6:02:23 PM , Rating: 1
quote:
But apple made a really dumb mistake launching it right after Cisco did.


Apple had already announced the iPhone before Cisco released their Linksys iPhone. Actually the Linksys iPhone almost looks like a rushed product, so that they can say they have a phone and are using their trademark. However I really do agree on the point that the trademark could be overturned. iPod isn't as generic of a word as iPhone is. Maybe I should go out and trademark Phone and sue both Apple and Cisco for using my word for their products?

Other


one more thing:
By ForumMaster on 2/2/2007 1:19:46 PM , Rating: 2
apple is correct in the sense that several other companies use the iPhone. in fact, look at this:

http://www.iphone.com/

Cisco's product is a VOIP phone. not a cell phone. therefor apple can and probably will win. they just won't be able to introduce VOIP features for their iPhone which is unfortunate since it has Wi-Fi. people will hack it and add VOIP functionality pretty quickly though.




RE: one more thing:
By TomZ on 2/2/2007 1:39:15 PM , Rating: 2
I also find it interesting that Apple wouldn't choose a product name whose main URL would be readily available. By going with iPhone as their product name, they are just going to drive a lot of traffic to that "other" iPhone company, and make it a tiny bit harder for people to find their product information on the Internet. Why wouldn't Apple instead just make up some word where the URL and trademark was readily available?


RE: one more thing:
By creathir on 2/2/2007 7:27:38 PM , Rating: 2
I would have thought Microsoft would have bought Zune.com... but they didn't... oh well...

I guess they wanted that beloved i in there...

How about iCell? podPhone? cellPod? Any number of things...

- Creathir


RE: one more thing:
By robber98 on 2/2/2007 2:05:51 PM , Rating: 2
Hmmm... So if I create a new cooking pot call "iPod", I won't be sued by Apple because my "iPod" doesn't play MP3?


RE: one more thing:
By robber98 on 2/2/2007 2:10:10 PM , Rating: 2
Cooking pot*


RE: one more thing:
By masher2 (blog) on 2/2/2007 2:50:49 PM , Rating: 2
> "Hmmm... So if I create a new cooking pot call "iPod", I won't be sued by Apple because my "iPod" doesn't play MP3? "

In general, yes you'd be safe. However, Apple could make a claim that iPod is a "famous" trademark, a special level of status which grants it additional protection. So even though your usage would not be technically infringing, Apple could bring a dilution claim.


RE: one more thing:
By crystal clear on 2/3/2007 3:41:06 AM , Rating: 2
Whats a POD without the "i" ?

Quote-

like two peas in a pod
very similar, especially in appearance:
The twins are like two peas in a podpod


(AIRCRAFT PART) Show phonetics
noun [C]
a long narrow container which is fixed to an aircraft for carrying engines, weapons, extra fuel, etc:
an escape/storage/accommodation pod
a space pod


pod (PLANT PART) Show phonetics
noun [C]
a long, narrow, flat part of some plants, such as beans and peas, which contains the seeds and usually has a thick skin:
seed pods
a pea/vanilla pod

http://dictionary.cambridge.org/results.asp?search...


RE: one more thing:
By masher2 (blog) on 2/3/2007 10:34:33 AM , Rating: 1
> "Whats a POD without the "i" ? Quote..."

What is your point? There is no question that the term "iPod" is a fanciful mark, and thus capable of protection. MP3 players are not "pods"; the term is in no way descriptive.

That in of itself still allows other companies to use the "iPod" mark in conjunction with products other than MP3 players....except for the fact that it is now very likely considered a "famous trademark", and thus entitled to additional protection.


bah
By Hyperlite on 2/2/2007 11:24:27 AM , Rating: 3
no point in hiding my feelings, i hope apple gets castrated. Cisco should not back down, if only out of principle.




RE: bah
By AstroCreep on 2/2/2007 12:41:54 PM , Rating: 2
Worse comes to worse, all Apple will need to do is rename it to the 'ApplePhone' (to go with their new 'naming convention' as they've shown with 'AppleTV') and say that the name 'iPhone' was the codename.
But instead of being 'ApplePhone' it will be the Apple logo followed by the word 'phone'; kinda like Prince going by that dumb symbol for his name. :p


RE: bah
By Hyperlite on 2/2/2007 12:52:05 PM , Rating: 2
haha yeah


Cisco should win this one
By HrilL on 2/2/2007 1:03:08 PM , Rating: 2
Cisco had the product out first and that is clearly not squatting on the trademark. Apple new they had it and used it anyway In the older article they talked about how they were talking to cisco about using it and then back out of a deal so this sounds like stealing to me...




RE: Cisco should win this one
By TomZ on 2/2/2007 6:54:35 PM , Rating: 2
I also would like to see Cisco win this, and get paid for the name, or else force Apple to pick an original name. The reason I believe this is because Apple's due diligence surely turned up the Cisco registered trademark, and Apple arrogantly decided to use the name anyway. Apple may be ultimately found to be legally correct in doing so, but I disagree with how they went about it.


Funny
By creathir on 2/2/2007 7:22:39 PM , Rating: 2
Apple believes this lawsuit is funny... but when they go after the Profit Pod, used for arcade machines, its serious business.

http://www.engadget.com/2006/08/14/no-pod-for-you-...

This company is such a joke... I really do not know why ANYONE takes them seriously anymore...

What hypocrites...

- Creathir




RE: Funny
By TomZ on 2/2/2007 9:48:46 PM , Rating: 2
I agree - it's such a double-standard. On the one hand, they expect their trademarks to be treated with the highest regard. But when it comes to other companies' trademarks, they infringe quite freely.


OK
By sprockkets on 2/2/2007 12:26:45 PM , Rating: 2
Why not sue the iRiver people? Why not then get Intel into it, you know, the people who wanted to trademark the letter i?

Why not start everything with the letter p? Ptunes sounds great.




Apple Iphone
By MHughes on 2/2/2007 4:35:50 PM , Rating: 2
Apple's claim to the IPhone name is based on the argument that theirs is a cell phone, while Cisco's is an internet-based Voip phone. If I understand correctly, the Apple IPhone is a cell phone that can also connect to Internet. Offering hotspot access opens this "cell phone's" use to many purposes, including VOIP--thus infringing on Cisco. If Apple chooses to restrict their phone to cellular use in order to not infringe on Cisco's copyright, they probably won't sell many phones.

By the way, a combination cell phone/VOIP phone would impact AT&T's cell phone current business model pretty severely. My compliments to Apple and AT&T--it's going to be interesting!




RE: Apple Iphone
By masher2 (blog) on 2/2/07, Rating: 0
IPHONE or better yet IPFONES
By thomasbui on 2/2/2007 7:15:34 PM , Rating: 2
Since we are moving toward Internet Protocol Phones, why not IPFONES? Phonetically and aesthetically, IPFONES sounds like a good name no? What do you think for an IPFONES by APPLE?

Instead of wasting all this mumbo jumbo money burning, why not keep the resources for better features and giving more technology?




Repeat post
By crystal clear on 2/3/2007 1:50:59 AM , Rating: 2
I had made a comment recently -Read on.

The Apple show
By crystal clear on 1/26/07, Rating: 2
By crystal clear on 1/26/2007 4:23:21 AM , Rating: 2

http://www.dailytech.com/article.aspx?newsid=5814

I quote a protion of that-
Quote-

EXCLUSIVE: Third company could claim the "iPhone" trademark
As crazy as you may find this, we could not currently find any corroborating reports on the web relating these facts. On July 29, 2003, a Florida-based company called "Teltronics" has registered the "Vision I-Phone" trademark under the Serial Number 76349278 at the U.S Patents & Trademarks Office. The goods & services section of the filing states "IC 009. US 021 023 026 036 038. G & S: Telecommunications products; namely, digital telephones. FIRST USE: 20020416. FIRST USE IN COMMERCE: 20020416". Cisco has reportedly not objected to the registering of the "iPhone" trademark by Teltronics.

The filing also states in the disclaimer section: "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "I-PHONE" APART FROM THE MARK AS SHOWN". This disclaimer may be good news to Apple because it means Teltronics shouldn't claim exclusive use on the "iPhone" trademark unless it is preceded by the word "Vision"

However, the report MacScoop has obtained from an source who appears to have widely investigated the case says that on December 13th, Teltronics was partially responsible of the refusal of the "iPhone" trademark registering that another telecom company, Teledex was trying to obtain.

If we look at all these reports as well as the exclusive report MacScoop has obtained, we notice that the only company that may currently legally use the "iPhone" trademark is actually neither Cisco or Apple, but Teltronics!..............................
.............................
So, now just speculating, maybe behind the curtains, the real reason why Apple dismissed negotiations with the networking giant (Cisco) was because it saw that the real deal was somewhere else. Time will tell

http://www.macscoop.com/articles/2007/01/16/exclus...





Easy Answer
By mindless1 on 2/3/2007 9:02:29 AM , Rating: 2
Since Apple clearly considers it irrelevant that Cisco already had iPhone name and product, it is only fair that the courts now refuse to uphold Apples' other iProduct trademarks. Apple needs to be taught a lesson after having pursued others in infringment cases, and that lesson needs to be learned the hard way.




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