iPhone versus iPhone

The launch of the iPhone wasn’t a welcome development for everyone.  Cisco, the company behind the other one, the Linksys iPhone range, took great exception to Apple’s use of their trademark on the work "iPhone" and has sued Apple for trademark infringement.  According to a Cisco news release issued on the 10th of January:

SAN JOSE, Calif., January 10, 2007 – Cisco® today announced that it has filed a lawsuit in the United States District Court for the Northern District of California against Apple, Inc., seeking to prevent Apple from infringing upon and deliberately copying and using Cisco’s registered iPhone trademark.
Cisco obtained the iPhone trademark in 2000 after completing the acquisition of Infogear, which previously owned the mark and sold iPhone products for several years. Infogear’s original filing for the trademark dates to March 20, 1996. Linksys, a division of Cisco, has been shipping a new family of iPhone products since early last year. On Dec. 18, Linksys expanded the iPhone® family with additional products.
"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, 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," Chandler concluded.
With its lawsuit, Cisco is seeking injunctive relief to prevent Apple from copying Cisco’s iPhone trademark. For more information on the Cisco iPhone product line, please visit www.linksys.com/iphone.

Cisco has been blogging about the iPhone dispute quite extensively in its blogs.  Its General Counsel, Mark Chandler, has been fairly active on the News@Cisco Notes blog (a fantastic example of how a blog should be used, by the way) about this dispute.  According to Cisco, it has owned the trademark since 2000 when it took over a company called Infogear which had been pursuing the mark "before iMacs and iPods were even glimmers in Apple’s eye".  Cisco says it has released products branded as iPhone for "years" and has produced updated iPhone products since last year.  Apple apparently contacted Cisco a number of times about sharing the trademark and both companies were in fairly advanced discussions when Apple announced its iPhone last week.  I noticed a post by Cisco’s Director of Public Relations, Penny Bruce, dated 9 January 2007 stating the following:

Given Apple’s numerous requests for permissions to use Cisco’s iPhone trademark over the past several years and our extensive discussions with them recently, it is our belief that with their announcement today, Apple intends to agree to the final document and public statement that were distributed to them last night and that addressed a few remaining items. We expect to receive a signed agreement today.

Either Cisco expected some sort of deal to be reached or (put on your tinfoil hats please) this post was published to pave the way for the lawsuit that followed.  Chandler does make a valid point in his post titled "UPDATE on Cisco’s iPhone Trademark" where he says the following:

At MacWorld, Apple discussed the patents pending on their new phone technology. They clearly seem to value intellectual property. If the tables were turned, do you think Apple would allow someone to blatantly infringe on their rights? How would Apple react if someone launched a product called iPod but claimed it was ok to use the name because it used a different video format? Would that be ok? We know the answer – Apple is a very aggressive enforcer of their trademark rights. And that needs to be a two-way street.

The plan was apparently for both companies to develop their own iPhone product range and differentiate their products "in a way that could work for both companies and not confuse people".  This makes a lot of sense if the intention is to allow Apple to use the iPhone trademark and still protect it.  I wonder where the benefit is for Apple to share the trademark from Cisco’s perspective though.  If anything people may tend to associate the trademark with Apple’s device and not Cisco’s so, if anything, Apple’s use of the trademark would probably dilute it in the marketplace.

John Earnhardt, Cisco’s Senior Manager, Global Media Operations, posted a few answers to questions that have been asked about Cisco’s claims in his post titled "More Answers on Cisco iPhone Trademark Issue" where he talks about the Cisco’s intentions for the trademark and its discussions with Apple.  It is a handy summary of Cisco’s position.  In short, Cisco says the lawsuit is not about the money but rather about protecting its trademark.  As Earnhardt pointed out on the yesterday:

We’ve been following our iPhone trademark issue in the blogosphere closely and it’s been interesting to see the commentary from some posters suggesting that somehow Cisco either in the US or Europe didn’t meet the requirements to maintain the iPhone trademark. Our response is pretty simple: We have met all elements required by all authorities to maintain our mark. We’ve been pretty direct about the fact that we’ve been shipping the iPhone since last spring.

(See also the ZDNet blog)

While I haven’t seen anything from Apple about this dispute, it has most certainly been debated quite extensively in the blogopshere.  The Trademark Blog has a list of issues and comments on those issues.  One of these issues is the fact that Cisco filed a particular affidavit in its sixth year of registration that sought seeking continuity of its registration and not another affidavit which would assert continued use of the trademark.  This could be used to argue that Cisco had no intention to continue using the trademark.  Certainly if Cisco had filed the second type of affidavit it would have made its position far stronger.  Another argument is that the two devices are basically different products and on this basis Apple is not infringing Cisco’s trademark.  There is some doubt about this approach though.  Legal Blog Watch has pretty good coverage of the various opinions in the legal blogosphere and this post is worth checking out.

The saga becomes more entertaining as there are allegations that Apple created a front company called Ocean Telecom Services which tried to acquire the iPhone trademark in September 2006.  Apple also applied for the iPhone trademark in Australia in that same month.

I wonder why Apple just didn’t called its device the "applePhone" or something like that.  I suppose the one answer is that there was such a frenzy in the year or two leading up to the announcement about a mythical "iPhone" that Apple thought it simply had to capitalise on the brand that had been established by the fans.  Either way, this is now very much a legal issue and the future of the iPhone brand will depend either on a settlement reached between Cisco and Apple or on protracted litigation in the years to come.  (Take a look at this other post on the ZDNet blog).

This is a repost from chilibean.

Tags: , , , , , ,






What do you think?

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: