iPhone, uPhone, We All Sue for iPhone
As reported in articles such as this one,
Cisco has sued Apple in the U.S. District Court for the
Northern District of California, alleging that Apple's use of the name
"iPhone" for its new product release has infringed Cisco's registered iphone trademark. (See here
for a picture of each phone.) According to the article, Cisco
trademarked the term iPhone in 2000 and subsequently entered into
negotiations with Apple after Apple sought permission to use the iPhone
The "i" vs. "i" lawsuit has generated discussion in the blogosphere
on both procedural and substantive matters. For example, as Kevin
O'Keefe writes here, Cisco's GC, Mark Chandler, is using his blog to disseminate Cisco's reasons for the lawsuit. O'Keefe points out that he's never seen blogs used this way before. And from Wired GC's perspective, Cisco is winning the war on the blogging front with this argument from Chandler:
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.
As Wired GC notes:
response yet from new Apple GC Donald Rosenberg; he’s probably still
unpacking his bags. And Apple employees don’t blog. But they certainly
Given that Cisco has held the iPhone
trademark since 2000 (something that Apple implicitly acknowledged by
negotiating to obtain those rights), does that mean that Cisco's case
is a slam dunk? Hardly. Leaving aside conspiracy theories that
Cisco's suit is merely a plot for more publicity or a temper tantrum because Cisco simply isn't as cool as Apple, Marty Schwimmer's extensive list of defenses
that Apple has suggests that Cisco will have an uphill climb. Among other
things, Schwimmer explains that Apple can argue that the form of
trademark that Cisco selected (a Section 8 rather than a Section 15)
may not give it a presumption of continuing use and, in fact, may give
Apple grounds for arguing that Cisco abandoned its trademark rights.
Schwimmer also explains that given Apple's cache in the marketplace, it
is unlikely that consumers will confuse Apple's iPhone with Cisco's.
Still, Cisco will have some strong arguments as well, as summarized here by Jessie Seyfer at Legal Pad. From the post:
IP attorney and partner at Ropers Majeski Kohn & Bentley’s Redwood
City office, thinks Apple could fail with some arguments and succeed
"Apple's argument that its use of the mark iPhone would not be
infringing because the two products are materially different will be a
tough row to hoe. In infringement actions, judges and juries are
allowed to consider the differences between the products using a mark
when deciding whether there is a likelihood of confusion. But they are
also allowed to consider whether the products are sold into similar
markets and whether it is likely the mark holder's product line will be
expanded to move into the infringer's market.
Overall, the only consensus in the blogosphere at this point is that the Cisco-Apple fight will provide much more fodder for bloggers. Stay tuned ...
Posted by Carolyn Elefant on January 12, 2007 at 08:10 PM | Permalink
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