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Gadgets iPod touch Could Run Into Legal Issues
Brandon Hill (Blog) - September 6, 2007 12:40 PM
Print E-mail del.icio.us 49 comment(s) - last by KristopherKubi.. on Sep 8 at 12:59 AM

Touch vs. touch
HTC may have a thing or two to say about about Apple's new iPod touch

It's often said that Apple takes a good idea created by someone else and perfects it for the mainstream audience with a dash of style. Apple didn't create the first MP3 player, but its first generation iPod revolutionized the market. Apple also didn't create the first portable media player (PMP) with WiFi, but it did create a fully-fledged PMP with full access to the iTunes Music Store.

Apple, however, may be in a bit of trouble when it comes to its new iPod touch. The new top-of-the-line iPod features the iPhone's touch screen, the aforementioned WiFi connectivity with iTunes Wi-Fi Music Store access and is available in 8GB or 16GB varieties.

The problem is that HTC has already applied to trademark "Touch" for its Windows Mobile 6 Professional-based Smartphone. The iPhone rival was launched in June.  Though the HTC Touch carries much of the same functionality as the iPod touch, including a touch-sensitive screen, the HTC Touch is marketed as an iPhone-killer rather than an iPod-killer.

According to the United States Patent and Trademark Office, the "HTC Touch" trademark application was filed on May 25. "Touch by HTC" was filed on August 8, 2007.  Apple has no approved or publically applied trademark for "iPod touch."

"HTC Touch is a trademark, but I can't comment right now," said HTC president and CEO Peter Chou.

According to a Taiwanese trademark lawyer who wished to remain anonymous, Apple may be in for a legal battle if HTC decided to pursue legal action over the "Touch" moniker. Both devices can store and playback music which would make a legal challenge by HTC more salient.

This isn't the first time that Apple has run into issues with its product names. Apple was sued by Cisco in early January over the use of "iPhone." The two parties came to an agreement on the use of the iPhone trademark in late February.

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"Touch" is too generic
By kevincasey on 9/6/2007 1:36:07 PM , Rating: 5
This is the same situation Microsoft ran into when naming some of their software, i.e. Windows, Outlook, Word, Access, etc. Those words are so generic that they alone cannot be trademarked. As a result, Microsoft decided to trademark "Microsoft Windows", "Microsoft Outlook", etc.

The result is that all printed documentation and advertising always refers to the products by their full trademarked names.




RE: "Touch" is too generic
By KristopherKubicki (blog) on 9/6/2007 1:43:20 PM , Rating: 3
Yes, but keep in mind trademarks are not strict filters. If I start to market my new operating system, Kristophersoft Windows tomorrow, I will get a call from lawyers.


RE: "Touch" is too generic
By Bluestealth on 9/6/2007 1:54:38 PM , Rating: 3
I think that if I released an OS called OpenWindows I'd get same day service... no? :)


RE: "Touch" is too generic
By ObscureCaucasian on 9/6/2007 2:17:12 PM , Rating: 2
I had a Creative Zen Touch several years ago. Sure they were just referring to the vertical touch sensative panel, but it's yet another media player that uses the "Touch" moniker. Perhaps Creative could go after HTC and Apple here.


RE: "Touch" is too generic
By OddTSi on 9/6/2007 2:33:24 PM , Rating: 2
Creative also had a Nano well before Apple did.


RE: "Touch" is too generic
By George Powell on 9/6/2007 4:07:15 PM , Rating: 2
I quite agree here that touch is too generic a term. Also as has been mentioned the HTC device is a phone with an mp3 player. The iPod touch is an mp3 player first and foremost. Therefore they do not compete. When I want a new phone I don't go looking at ipods and likewise when I bought my first mp3 player I didn't feel the need to look at phones on the market. Looks to me like another company trying to profit off Apple's success. All I can say to that is save your $ for R&D and build a product that we would really like.


RE: "Touch" is too generic
By bhieb on 9/6/2007 5:41:22 PM , Rating: 2
Yes this is a non-story. How is this news. HTC might have a copyright case, but are not persuing it. Hell I might sue them both I've been "ITouching" since puberty. I hate apple, but this is a litte too anti-apple even for DT. Basically making up a story about a case that doesn't exist. Come on


Why don't Apple call it iTouch?
By mxnerd on 9/6/2007 2:18:50 PM , Rating: 3
Apple or Microsoft always sue someone using name that's not even close to their name, remember Lindows?

Do you think anyone will mistaken it as Windows? Microsoft even threaten a boy with lawsuit just because that boy has a website like "MichaelSoft.com" or something similar, I don't remember exactly the name.

And Apple always sue someone with product name with "Pod" in it.

Apple think they have a right to use iPhone when Cisco already copyrights it.

I do belive HTC has the rights to sue Apple using "touch" in similar products.

Why not Apple just rename it to "iTouch" if they really want to use the name "touch"?




RE: Why don't Apple call it iTouch?
By themadmilkman on 9/6/2007 4:11:50 PM , Rating: 1
quote:
Apple or Microsoft always sue someone using name that's not even close to their name, remember Lindows?


Failure to attempt to defend your trademark can lead to the loss of the trademark.

quote:
Do you think anyone will mistaken it as Windows? Microsoft even threaten a boy with lawsuit just because that boy has a website like "MichaelSoft.com" or something similar, I don't remember exactly the name.


Without knowing the exact name of the site, or the circumstances, this whole statement is worthless.

quote:
And Apple always sue someone with product name with "Pod" in it.


When that product is closely related to the iPod in either form or functionality, I don't blame them.

quote:
Apple think they have a right to use iPhone when Cisco already copyrights it.


It was trademarked, not copyrighted. There is a huge difference between the two, and it's important to not confuse or interchange them. But, in general terms, Apple believed, if I recall correctly, that the term "iPhone" was too generic to be trademarked for the use in a phone. This is a perfectly legal thing to do. You are certainly allowed to ignore another person's trademark and choose to challenge it later in court.

quote:
I do belive HTC has the rights to sue Apple using "touch" in similar products.


Yes, they have the RIGHT to sue. The question is whether or not it is worth their time to sue. Among other things to be considered is the kind of damages that can be shown, the cost of litigation, the possibility of agreements and payoffs outside of court, etc.

quote:
Why not Apple just rename it to "iTouch" if they really want to use the name "touch"?


Why would they abandon the name iPod? Calling it the iPod Touch describes exactly what it is -- an iPod with a touch interface. Calling it iTouch could confuse consumers who want an iPod, thinking the iTouch was a completely different type of product.


RE: Why don't Apple call it iTouch?
By mxnerd on 9/6/2007 5:37:56 PM , Rating: 2
Yes, like ghost101 said, the boy's name is Mike Rowe, and his website is MikeRoweSoft.com and Microsoft threatened him with lawsuit, just because his name pronounced similar!

And who will mistaken MikeRoweSoft with Microsoft? A baby?

All the boy got was a XBOX and some gift.

A billion dollars corporate can be as evil as they want.


By KristopherKubicki (blog) on 9/8/2007 12:59:12 AM , Rating: 2
I don't like to side with Microsoft that much, but they actually do have the burden of defending their name. Trademarks, like patents, can be lost (or infringed upon in the future) if you you don't defend them.


RE: Why don't Apple call it iTouch?
By ghost101 on 9/6/2007 4:33:09 PM , Rating: 2
quote:
Microsoft even threaten a boy with lawsuit just because that boy has a website like "MichaelSoft.com" or something similar, I don't remember exactly the name.


What happened was the boy was going to create a sight called MikeRowe.com , but then added soft as a joke.

After Microsoft got annoyed about it, they bought the site of him for quite an attractive package.


By ghost101 on 9/6/2007 4:37:10 PM , Rating: 3
*site *off

note to self, use the preview feature


Fie on armchair lawyers
By Delegator on 9/6/2007 2:38:20 PM , Rating: 3
Opinions about lawsuits are like belly buttons: everybody's got one, and they're all pretty much useless.

HTC has much to gain by filing a lawsuit regardless of their chance of winning. How many of you had heard of the HTC Touch before reading this article? How many had heard of Cisco's iPhone before that brouhaha made the news? The publicity alone would be worth millions to HTC.




RE: Fie on armchair lawyers
By spluurfg on 9/6/2007 3:48:51 PM , Rating: 2
People said the same thing about AMD and Intel.

However, HTC is actually doing fairly well... they're reselling their phones branded in Europe under the Orange, O2, and T-mobile networks... ie Orange SPV, O2 XDA, and T-Mobile MDA/Vario... My colleague has a T-mobile branded HTC touch as a matter of fact.

The publicity might be worth millions, but that would be relatively small compared to the legal costs...


RE: Fie on armchair lawyers
By tdawg on 9/6/2007 4:25:38 PM , Rating: 2
The difference is that Cisco owned a trademark for iPhone well before Apple decided to name their product this, so Cisco had every right to defend their trademark.

How happy would HTC's shareholders be if the company files a lawsuit for a case they can't win and has to swallow legal fees and bad press. I don't know many shareholders that would look favorably on a company essentially throwing money away.

There are much better ways to get your name out there than with a frivolous lawsuit. Are you buying SCO software after they sued half the software industry?


RE: Fie on armchair lawyers
By enlil242 on 9/7/2007 2:58:12 PM , Rating: 2
quote:
Opinions about lawsuits are like belly buttons: everybody's got one, and they're all pretty much useless.


Speak for yourself, but mine is used quite extensively, housing dirt, dust and a whole sort of odd stuff... ;-)


typo
By Future145 on 9/6/2007 1:17:11 PM , Rating: 2
quote:
is available in 8MB or 16MB varieties.

I think you mean GB not MB




RE: typo
By Brandon Hill (blog) on 9/6/2007 1:18:14 PM , Rating: 2
Yup, corrected


By tdawg on 9/6/2007 1:18:49 PM , Rating: 4
The word "Touch" in International Class 009 appears to be highly diluted. HTC Touch, or Touch by HTC and iPod Touch would most likely be allowed to co-exist since "touch" itself is widely used by various trademark registrations. So the chance that HTC would be able to win a judgment against Apple in the face of so many other companies using the word "Touch" in their trademark registrations is slim. Not to mention the fact that the products aren't direct competitors, so a claim on that front would be fruitless as well.

I don't think HTC will waste their time and money with this.




Actually there is a valid argument
By jbzx86 on 9/6/2007 1:20:02 PM , Rating: 4
In this particular case though Apple does not use the word "touch" to describe one of their products. It does, however, use "touch" in naming of one of its products. The purpose to filing for trademarks is to give products unique names that cannot be confused with other products.




HTC Trademarks
By tdawg on 9/6/2007 1:27:08 PM , Rating: 3
The two referenced HTC trademarks are actually just trademark applications. Both cited applications are intent-to-use applications based on future commercial use.

It commonly takes the USPTO anywhere from 3 to 6 months before they even an examining attorney to the application and anywhere from 12 to 18 months before a trademark application matures to a trademark registration, complete with a registration number, and that's if there are no potholes in the process.

As of right now, HTC does not hold any federally registered trademarks for "touch", though if/when the HTC applications do become registered trademarks, they will be effective from the filing date.




In other news
By FITCamaro on 9/6/2007 2:14:23 PM , Rating: 2
Michael Jackson is being sued by HTC for touching himself.




About time
By mindless1 on 9/7/2007 8:37:29 AM , Rating: 2
It's about time companies stopped trying to coin common words for their products. The descriptive words like "touch" can be an adjective instead of the name.




By Thetech on 9/7/2007 11:29:40 PM , Rating: 2
"Ipod touch could run into legal issues"
When I saw this articles title I thought it was about a
sexual harassment suit, maybe the Ipod got a little to close to one of the silhouette dancers off camera.

Remember "Itouch myself, and that's the only one I legally can"




Stupid
By mdogs444 on 9/6/07, Rating: -1
RE: Stupid
By Locutus465 on 9/6/2007 1:15:06 PM , Rating: 3
No, actually this is trademarking a brand... Sort of like another resturant trying to sell "Big Macs", I doubt McDonalds would be thrilled.... There are a lot of junk IP lawsuits out there, this one isn't one of those.


RE: Stupid
By Lord 666 on 9/6/2007 1:20:24 PM , Rating: 3
I actually thought it was odd being called the iPod touch.

Almost like an afterthought or lack of better name/nickname, but not the official name.

With a marker you can make the "t" a "d" and then add an e at the end... the iPod douche anyone?


RE: Stupid
By Omega215D on 9/6/2007 10:44:16 PM , Rating: 2
The iPod douche... it can squirt music to your ears or you can squirt your friend's Zune.


RE: Stupid
By Lord 666 on 9/7/2007 4:15:29 AM , Rating: 2
For the accessory line: the iPod douche bag and the ipod douche case.


RE: Stupid
By othercents on 9/6/2007 1:24:02 PM , Rating: 2
Yes, but Big Mac is very specific. Touch on the other hand Touch is very generic and could be considered a definition for the type of interface. This would be equivalent to McDonald's trademarking Hamburger and saying no one else can use it to sell meat patties that are put between two pieces of bread.

Other


RE: Stupid
By peritusONE on 9/6/07, Rating: 0
RE: Stupid
By therealnickdanger on 9/6/2007 1:55:48 PM , Rating: 2
I've been to other restuarants that serve "quarter pounders" and "half pounders" and what-not, however they aren't on the same scale as McDonald's. I don't believe McDonald's can sue anyone over the use of "quarter pounder", but perhaps they can with its marketing moniker of "QPC". There are plenty of overlaps in the world of trademarks, and these companies pick their battles very carefully. Litigation isn't free.


RE: Stupid
By Bluestealth on 9/6/2007 1:52:46 PM , Rating: 2
Of course since trademarks like Windows and Office are so very specific too.
I actually believe HTC has a valid complaint, and that they could win this case.

Whether or not they actually deserve the "Touch" trademark is up for debate though.

Although nowadays people are given all kinds of Patents, Trademarks, and Copyrights they don't deserve and that arn't really valid.


RE: Stupid
By Locutus465 on 9/6/2007 5:38:34 PM , Rating: 2
To my mind this is much more valid than Amazon's "OnClick" patent... This affects then entire trademark system... Stuff like "onclick" is trying to patent the obvious usage of existing technologies.


RE: Stupid
By Locutus465 on 9/6/2007 5:35:13 PM , Rating: 2
This however is being used as a product brand name, one which unfortunetly for Apple was already taken... This is why big company's need to do research before branding their product.... If this wasn't true for "touch", then it'd be just as untrue for McDonalds... After all, a man named "Mac" who happens to own a resturant may decide that he wants to name his latest burger after him self, i.e. "Big Mac"...


RE: Stupid
By othercents on 9/6/2007 1:18:59 PM , Rating: 2
Actually we have gone through this multiple times, but I don't think this case, just like iPhone, is cut and dry. iPhone was allowed to be used by both parties because they didn't directly compete against each other and iPhone was such a generic term. iPod on the other hand is specific.

Touch is such a generic term that it could be used for anything that has a touch screen. Should the word touch ever been a trademark? Both devices don't directly compete against each other even though both have similar functionality. I don't think someone looking for a phone called Touch will buy the iPod Touch on accident.

How would you describe the iPod Touch if you couldn't say Touch when you were describing it?

Other


RE: Stupid
By Oregonian2 on 9/6/2007 1:28:35 PM , Rating: 2
I think you make a very good point. I really can't say "I've got a touch" and have confusion between HTC touch and iPod touch. Not that people won't be confused -- they'd have been confused two weeks ago as well with ONLY HTC touch existing. Just "touch" doesn't work unless the question is "Which iPod did you buy?", and even then the answer is "the touch", not "touch" by itself.

To the posting about "Big Mac", that's very different. If one says "I've a Big Mac", then a particular product comes to mind. That doesn't work with just "touch". Just "touch" could be a porn thing. :-)


RE: Stupid
By Scorpion on 9/6/2007 1:34:43 PM , Rating: 2
Is it me or is there an increase in the generic names on tech devices now. And in increase in these types of lawsuits? It's all getting quite ridiculous. The only way I can describe this mess is to make a car analogy (first thing to come to mind). It would be like Honda coming out with a car called the "Honda Electric" and then suing any company which marketed their car as being an "electric".


RE: Stupid
By JazzMang on 9/6/2007 1:31:17 PM , Rating: 2
"Touchscreen iPod"


RE: Stupid
By Murst on 9/6/2007 1:33:07 PM , Rating: 3
quote:
iPhone was allowed to be used by both parties because they didn't directly compete against each other and iPhone was such a generic term. iPod on the other hand is specific.


Huh? Where did you come up with that information?

The only reason why iPhone was allowed to be used by Apple was because they settled with Cisco (in other words, Cisco allowed Apple to use the name).

And how can iPhone be a generic term if iPod is a specific term? That makes no sense.


RE: Stupid
By oTAL (blog) on 9/7/2007 5:05:56 AM , Rating: 2
It makes sense for a simple reason. You can't sell a phone, name it Phone and trademark the word.
You can, however, sell a refrigerator, call it Phone, and trademark the word so that no one else can use it for that purpose. See the difference?

Apple has a trademark for an mp3 player called iPod, and if anyone uses the word pod for any other product that plays music, Apple will sue and probably win. That doesn't stop you from selling pods, creating a site called mypods.com, and marketing the hell out of it. That's why both Apple companies were allowed to coexist. They operated on different markets which made it harder for consumers to be confused.


RE: Stupid
By peritusONE on 9/6/2007 1:56:47 PM , Rating: 2
quote:
iPhone was allowed to be used by both parties because they didn't directly compete against each other and iPhone was such a generic term. iPod on the other hand is specific.

Touch is such a generic term that it could be used for anything that has a touch screen. Should the word touch ever been a trademark? Both devices don't directly compete against each other even though both have similar functionality. I don't think someone looking for a phone called Touch will buy the iPod Touch on accident.

First of all, the iPhone name was allowed to be used by both parties because Cisco and Apple reached a settlement, not because the devices didn't compete with each other.

Second, every product name is generic until said product was associated with the name. Ford was just a generic last name, Halo was just a common word, and Brother was something we called siblings. But you wouldn't get away with naming your product or company by those names. Trademark laws exist for the protection of IP's, not to protect generic words.

If someone else names their mobile device that plays music the Touch, then Apple has absolutely no claim to that name now, regardless of how generic the term is/was before the application for the name was filed. And with your last sentence in the quote above, you give the general populous way too much credit.


RE: Stupid
By othercents on 9/6/2007 2:33:30 PM , Rating: 2
Ford and Brother are both Business names not product names. They don't actually fit in this discussion since we are talking about product names. The word Halo is an acronym the military uses and it describes a white band of light encircling items. I'm also sure if Apple called the Touch an iPod Halo it would be fine especially if it had a white band of light around it.

How many times have you used the word Halo and not in conjunction to a computer game? However the word Touch is used all the time especially in documentation to tell someone how to work a device that has a touchscreen. You might even see it in your manuals for remote controls or even your car. Check those manuals for Halo.

Apple might still be able to use the word touch especially since it is with a product that would not directly compete against the other product. The other device is a portable PHONE that also plays music. The iPod touch is a portable music device. They don't directly compete and to force Apple not to use the word touch for the naming of the device or within any literature would be foolish.

Maybe I'm giving you WAY to much credit to understand this.

Other


RE: Stupid
By glitchc on 9/6/2007 3:20:50 PM , Rating: 2
quote:
How many times have you used the word Halo and not in conjunction to a computer game?


Every time I write an essay on Jesus, and multiple times within that essay.


RE: Stupid
By Lightning III on 9/6/2007 4:11:45 PM , Rating: 2
halo

mean's

High
Altitude
Low
Opening

It's a parachute infantry term for being so high you have to use oxygen

freefalling through an enemies radar envelope and the opening the chute beneath it

this is used by pathfinder's and special forces

its not a white band of light


RE: Stupid
By FITCamaro on 9/6/2007 4:12:36 PM , Rating: 2
The military also did not trademark the term Halo. Nor are you expected to pay license for using the word.

Simply no other product can be called "Halo" unless Bungie permits it since its their trademark. Nor would Apple be charged with using the word "touch" in its documentation. But calling its new iPod the "Touch" is no longer feasible. Now "iPod Touch" is different, but they will certainly be referred to as "Touch" soon enough if they get the name. And there's justifiable grounds that the two could be confused. If you say "I've got a Touch" and there's the phone which is called that and the iPod which is commonly referred to as that, its confusion. Thats what trademarks are all about. "Xerox" is a common word now. But Xerox the company still has the trademark on the name. Just as "Google" is a common phrase but Google still has a trademark.

It doesn't matter that they don't compete(which is debatable since they're both consumer electronics). Look at Apple with its "i" brand of products. They sued and won against a company that makes devices for keeping track of revenues on arcade games.


RE: Stupid
By Misty Dingos on 9/6/2007 1:24:58 PM , Rating: 2
But they did pay attention to what Apple did when faced with a copyright infringement law suit. They negotiated a settlement and right quick. The company bringing the suit is doing what it can to remain profitable. It is up to Apple to do the same. Cost benefit ratio of fighting this type of law suit has got to be pretty low. Apple sends in its sharks, sorry, lawyers with the instructions to settle and settle quick. Anything reasonable will be accepted.


RE: Stupid
By kkevin6154 on 9/7/2007 9:23:19 AM , Rating: 2
I've skimmed through this entire blog and no one mentioned the real names of these devices. Everyone is stuck on the word "Touch".

These devices actual names are "iPod Touch" & "HTC Touch". As far as it goes, these names are unique to each other and neither company can sue each other over the word "touch".


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