Filed under: Macworld
Cisco v. Apple II: AM followup on trademark lawsuit
As you all know by now (and saw Scott post last night), the trademark discussions between Apple and Cisco over the use of the iPhone name did not resolve cleanly and Cisco has filed suit. Negotiations were apparently in progress up until Monday night, with the remaining issues focused on interoperability between the Linksys iPhone and Apple's new cellphone, according to Cisco's spokesman. Cisco didn't expect Apple to introduce the phone as "iPhone" without a completed agreement.
Apple's response? Spokeswoman Natalie Kerris pointed out that the iPhone trademark has been poorly defended: there are several other VoIP products and at least one set of headphones that are already using the "iPhone" or "IPhone" brand.
The New York Times reports that companies like Comwave, Nuvio and Teledex already sell products with an iPhone name; there's also a full rundown in this preannounce post at the Barron's blog.
Quoting Ms. Kerris, via News.com:
"We think Cisco's trademark suit is silly...We believe (their) trademark registration is tenuous at best," said Natalie Kerris, an Apple spokeswoman.
"There are already several companies using the iPhone name for VoIP (voice over IP) products," Kerris said. "We're the first company ever to use iPhone for a cell phone. If Cisco wants to challenge us on it, we're confident we'll prevail."
As noted previously, I am not a lawyer; my minimal knowledge of trademark law tells me, however, that when a trademark falls into disuse, is not defended against infringement, or becomes a generic word (aspirin), it's fair game for other companies to use. Cisco claims that it has pursued infringement actions against these other companies, but it seems that many of them have been selling "iPhone" products for some time.
OK, time to call on the TUAW Law Squad: any professional opinions out there?
Update: Cisco's general counsel blogs on the suit here; Harvard Law on the loss of trademark here. If Infogear/Linksys/Cisco had a three-year lapse in using "iPhone" for a product at any time between 1996 and today, that's abandonment. If not, they have a case.
Update II: Check the Internet Archive to see Cisco's iPhone support page from 2000-2006. Not an aggressive defense of trademark, but the product was there...
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Reader Comments (Page 1 of 2)
ceriumcv said 9:56AM on 1-11-2007
http://nonrandomchaos.blogspot.com/2007/01/why-apple-has-defense-against-cisco.html
This makes an interesting read. From the looks of it, so far it was right.
The comments say otherwise.
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Quix said 10:12AM on 1-11-2007
Oh good grief. Is this lame name really worth putting up such a stink? It's not like we're talking about "sex.com" or anything similarly monumental. "iPhone" is weak, contrived, and worn-out already anyway. Come on, Apple, think of something better. And please don't stoop to childish arguments such as "their trademark registration is tenuous at best."
Ridiculous. I love Apple, but sometimes they do some really stupid things.
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Craig said 10:14AM on 1-11-2007
Until twelve months ago very few people had heard of an iPhone, then rumors of an Apple phone emerged, and due to their naming scheme, people dubbed it the iPhone. The first time I heard anyone from Apple specifically call it an iPhone was during the keynote.
I think Apple do have an argument that
1 - Cisco have allowed their trademark rights to lapse by not pursuing other companies that have abused the mark.
2 - by allowing the continued speculation that Apple were making an 'iPhone' without issuing any cease and desist orders to various websites/newspapers - they have allowed their own product identity to be usurped.
3 - by issuing their own 'iPhone' a month before they knew (if they were negotiating for that long) about the Apple launch, it's actually Cisco that is trying to create customer confusion.
With all that said, I find it a little galling that Apple has done this when they so actively try to stamp on anyone using the term POD!
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Pete said 10:23AM on 1-11-2007
I completely agree -- the name iPhone is now so associated with Apple it seems ridiculous for anyone else to even want the name... except as an underhanded way to draw attention to their product perhaps.
I doubt Apple would worry about swapping to another name though -- they gained a lot from announcing the product as the iPhone (regardless of the final name on release), since that ties in with all the prior speculation and interest, but they didn't seem to worry about changing iTV.
Personally I hate these cheesy 'i' prefixes and wouldn't mind them going the way of the iBook.
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Justin said 10:26AM on 1-11-2007
I think they should just call it Apple phone like Apple TV, and be done with it. I don't care which name is better, people can call it whatever they want. We will figure out what they are talking about. I just want the phone.
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Tony Ward said 10:35AM on 1-11-2007
If the name is so used, abused, prostituted etc. anyway, why the hell would you want to toss your groundbreaking, revolutionary product into that particular cesspool in the first place?! It's like coming up with a fantastic, delicious, completely original beef dish and proudly naming it "cheeseburger." I could get used to this thing being called "iPhone," but it may not be worth the headaches, Apple.
However, the popular suggestions "iPod Mobile," "MacPhone," etc, offiically make no sense as of Tuesday's keynote if Apple, Inc. is serious about desginating the phone (which. I think, I will henceforth refer to as "Charlie" until the lawsuit is settled) as a distinct product line (i.e., Mac, iPod, tv). Does "Phone" do the trick? How about "iCom?" I dunno.... best of luck with this one, Marketing.
In the meantime, I can only say that I'm feeling the same kind of vibes about this that I feel every time I hear Bush talk about the Middle East: "you aren't doing it right, we're doing what we want, touch cookies for you." Using this name without an actual agreement with Cisco was plain arrogant. Makes me embarrassed as an Apple zealot. Hopefully, Charlie gets a nice, legal, cool and relevant name we can all agree on; otherwise, it's iPhone and a legal smear on the product's history. Sorry, Charlie.
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Bultie said 10:28AM on 1-11-2007
They tricked Apple…… Isn't it strange that they sued just after the name was official and that they had told there will be a solution for both sides.
Had they said "No" before there was NO money for them because apple could have changed the name, but now they can't never ever again.
Cisco could have got a lot free publicity, but now.
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Mike K. said 10:34AM on 1-11-2007
I don't see why they don't just release it as the (Apple)Phone, just like they did with the AppleTV (nee iTV).
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Joe said 10:41AM on 1-11-2007
I think this shows that Brian Lam, at the blog I don't visit anymore, was just a Cisco tool.
Personally, I was hoping for something besides the obvious iPhone, like iTalk or iChat. It really doesn't matter, they could call it the iZoon and I'll still be at the Apple Store early in the morning the first day it's released.
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Quix said 10:47AM on 1-11-2007
"I can only say that I'm feeling the same kind of vibes about this that I feel every time I hear Bush talk about the Middle East"
Wow, for some people everything really IS about Bush.
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Thataboy said 11:00AM on 1-11-2007
I don't understand -- Apple can say "Cisco never defended its trademark," but wouldn't anybody be able to use the iPhone name then? LG iPhone, Nokia iPhone, etc.? Or will their assertion be that they will go after only CELL phones that use the name?
Seems tenuous at best. Apple should simply rename it -- I still say a "Newton" rebirth would be great.
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Mike Rose said 10:53AM on 1-11-2007
Updated the main posts with links to Cisco SVP/gen counsel blog and Harvard rundown of trademark law.
So, anyone want to fire up the Internet Archive and figure out when all these other iPhones came on the market? We're looking for a three-year lapse from Infogear, Linksys or Cisco in selling the product, anywhere from 1996 on.
http://www.archive.org/web/web.php
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Guy said 12:02PM on 1-11-2007
Why do you think Cisco realeased a phone a month ago with that name? They can say "We are using our trademark, look we just released a product with it"
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Matt said 12:12PM on 1-11-2007
Apple doesn't care if the name is trademarked for them and they don't care that 5 other companies have iPhone products because everyone knows Apple 'owns' the iPhone name. Nokia or Moto or anyone else would never release an iPhone because it would have 0 brand power. People hear iPhone and they think Apple.
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Kevin K said 12:24PM on 1-11-2007
Apple's so cocky,
I hope cisco wins!!!
The rightful owner of the trademark.
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pixelslut said 12:56PM on 1-11-2007
honestly beyond getting some $$$ from APPL (ad i dont balme them there) i dont knwo what Cisco wants. The name of thier product was nearly 0 inbrand power since rumors of the iPhone took to the net. It doesnt matter what apples product is actually called or who actually owns the trademark the point is iPhone is in reality apple's jsut because people recognize the porduct as such. IF apple never even used the term iPhone themselves, it would still be a damned iPhone... nothing Cisco OR Apple does will change that its out of thier hands. Cisco should get some $$$ but the iPhone moniker will never, ever be synonomous with Cisco or anyone else's product - it will always be with apple's product.
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Joe said 12:59PM on 1-11-2007
I agree that the suit is mostly silly. I can solve the problem. Cisco keeps iPhone (for use with VOIP) and Apples keeps iPhone for cellular.
Wonder how long it will be before Skype runs on the Apple iPhone?
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jumBo BoB said 3:01PM on 1-11-2007
So Apple new there would be a problem and so they entered into negotiations with Cisco. So Apple knew there could be a problem. Then Apple announces their new cell phone and uses a name that's not theirs.
Sounds open and shut to me.
Apple's not so big that it can ignore the law. They make a great computer, an OK incompatible OS, and a decent music player with a stolen interface.
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EvilMole said 2:07PM on 1-11-2007
"If Infogear/Linksys/Cisco had a three-year lapse in using "iPhone" for a product at any time between 1996 and today, that's abandonment."
This is excellent news. Anyone else fancy starting a company with me to make a product called the Newton MessagePad? :)
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Sam G. said 3:54PM on 1-11-2007
I just read Cisco's blog on the suit. Their motives become transparent.
Cisco wasn't looking to "protect its intellectual property." What it wanted was to be a part of the iPhone. It wanted "collaboration." It wanted to tell Apple how to make its product!
You really think Steve was going to acquiesce to that?!?
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