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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 applica