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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 name.

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:

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.

As Wired GC notes:

No response yet from new Apple GC Donald Rosenberg; he’s probably still unpacking his bags. And Apple employees don’t blog. But they certainly can innovate.

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:

Robert Andris, IP attorney and partner at Ropers Majeski Kohn & Bentley’s Redwood City office, thinks Apple could fail with some arguments and succeed with others.

"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 | Comments (0)


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