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How did Apple not work out the licensing first?

http://newsroom.cisco.com/dlls/2007/corp_011007.html

We all knew Cisco had the trademark on the name.  According to their press release linked above:

> "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."


They negotiated, Cisco said no.  So they release it anyway.  And their response ( http://news.bbc.co.uk/2/hi/business/6250511.stm )is:

> Apple responded by saying the lawsuit was "silly" and that Cisco's trademark registration was "tenuous at best".

> "We think Cisco's trademark lawsuit is silly," Apple spokesman Alan Hely said. "There are already several companies using the name iPhone for Voice Over Internet Protocol (VOIP) products."

It's "silly"?  Come on, that sounds like they're *daring* Cisco to take it to court.  And claiming that the trademark has already been diluted by other products is a dangerous game.  If that argument prevails, then Apple will have no standing to prevent *anyone else* from releasing their own iPhone.

What the hell are they thinking?
Drew K
Thursday, January 11, 2007
 
 
It could be a negotiating tactic:  Give us a an affordable license, or we'll invalid your trademark
Sunil Tanna
Thursday, January 11, 2007
 
 
I remember from Joel's blog that Copilot is officially called 'FogCreek Copilot' to dodge round trademark issues, the same with 'Microsoft Word' etc.

I know the lawyers will eventually sort it out, but would they have been fine calling it the 'Apple iPhone'?
kangaroo bob
Thursday, January 11, 2007
 
 
A search for "iphone -apple" yields a few companies offering products or services under that name.  None of them appear to be actual phones, but rather VOIP or otherwise audio-related products.
John Cromartie Send private email
Thursday, January 11, 2007
 
 
I thought the same thing.  I have a couple of theories:

1. They really feel that they could win the law suit because the products are very different so no infringement.
2. They figure the publicity over the lawsuit will be worth more than they'll have to pay in legal fees and fines.
3.  They are arrogant and figure that now they own everything that starts with "i" now.
Bill Rushmore Send private email
Thursday, January 11, 2007
 
 
It's a negotiating tactic.

No matter what happens, people are going to call Apple's product the iPhone. Cisco and Apple will jostle for a while and then Cisco will sell them the rights to the name.
Bruce Rennie
Thursday, January 11, 2007
 
 
4. They don't think they can win but like Google and MS they think they can just keep the lawsuits going long enough that it doesn't matter anymore or a settlement is reached.
son of parnas
Thursday, January 11, 2007
 
 
Write any noun on paper, capitalize it, and precede it with an "i". Most people would jump to the conclusion that it's an Apple product. I doubt they're worried about the lawsuit.
Financial programmer
Thursday, January 11, 2007
 
 
If they lose, I guess the name will be ilegal
el
Thursday, January 11, 2007
 
 
This is nice, from the company that sued MacIntosh the high fidelity audio company over the Macintosh trademark and otherwise likes to throw its legal weight around.
dot for this one
Thursday, January 11, 2007
 
 
Dear Cisco,

iCanNameMyPhoneWhateverIWant.

Sincerely,
Steve
iBelieveIveProvenMyPoint
Thursday, January 11, 2007
 
 
When you have a lot of money to spend on lawyers and the stakes are so high, you can do things that other companies would not do - even against Cisco.

I imagine Apple's lawyers will argue that the trademark had not been adequately used in addition to other arguments.  Trademarks are a lot different from copyrights and patents, in that they have to be used to preserve them - but then you can keep them forever.  In the case of patents and copyrights, in return for protections under the law, the owners relinquish those rights after a limited time.
Cade Roux Send private email
Thursday, January 11, 2007
 
 
Of course we let Disney's lawyers define "limited", but other than that you're right.
Drew K
Thursday, January 11, 2007
 
 
Apple is a bunch of hypocritic bastards. They took other people to court for using part of their trademark. I dont remember. But i recall they had sued some website because it bore some resemblence to their product name. I also recall it seemed silly to me.

I hope Cisco wins
na
Thursday, January 11, 2007
 
 
Apple and trademarks?  Remember this one?
http://blogs.zdnet.com/BTL/?p=3482
Sunil Tanna
Thursday, January 11, 2007
 
 
The key phrase here is "market confusion."

While Cisco does make several VOIP products and does brand them under the iPhone brand name, it's highly unlikely that you'll be able to walk into Radio Shack, ask for an iPhone and be handed a Cisco product.

(Disclaimer: I have a "Cisco IP Phone" right here on my desk and it looks nothing like anything Apple's ever produced.)

While Apple certainly would have loved to have permission first, I don't really think the trademark is that enforcable. It would be a different story if Cisco had white minimalistic phones or decided to enter the cell phone business.

Re: Apple suing others over "Pod". Unlike Cisco, there is market confusion. Again, if you go into Radio Shack and ask for a portable music player called "myPod" or see a bunch of accessories for the "myPod", you may not get a genuine Apple licensed product.
TheDavid
Thursday, January 11, 2007
 
 
How 'bout changing the name to Prince's symbol and calling it "the product formerly known as iPhone".

Why anyone would pay $500 for someone I lose almost as often as umbrellas is beyond me, but what do I know?
Steve Hirsch Send private email
Thursday, January 11, 2007
 
 
"While Cisco does make several VOIP products and does brand them under the iPhone brand name, it's highly unlikely that you'll be able to walk into Radio Shack, ask for an iPhone and be handed a Cisco product."

That's exactly Cisco's point.  They had the name first.  Now that Apple has release their iPhone, if Cisco tries to sell theirs people will likely say, "*That's* not an iPhone."
Drew K
Thursday, January 11, 2007
 
 
> Re: Apple suing others over "Pod". Unlike Cisco, there is market confusion. Again, if you go into Radio Shack and ask for a portable music player called "myPod" or see a bunch of accessories for the "myPod", you may not get a genuine Apple licensed product.


Yep.

It's easy to confuse coin counters that go inside arcade machines, for portable music players.
Sunil Tanna
Thursday, January 11, 2007
 
 
http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

As a condition of the settlement, Apple Computer agreed not to enter the music business.

You know, for all the alleged "good design" that comes out of Apple Computer, I'd still take Abbey Road over all the Bauhaus-style junk that comes from JobsCo.
mynameishere
Thursday, January 11, 2007
 
 
I disagree with TheDavid completely.  I don't know how you can say the a phone that uses one technology (VoIP) won't be confused with a like-named phone that uses another technology (GSM). 

Feature parity and physical design don't allow you to sidestep existing trademarks.  It's be one thing if Apple were selling tractors (very little chance for confusion), but it's just a different type of phone.
Jake
Thursday, January 11, 2007
 
 
"Re: Apple suing others over "Pod". Unlike Cisco, there is market confusion. Again, if you go into Radio Shack and ask for a portable music player called "myPod" or see a bunch of accessories for the "myPod", you may not get a genuine Apple licensed product."


Yes, but we're not talking about a place with a product called "myPod."  We're talking about products called "Profit Pod" and "TightPod".  How are you going to mix those up with "iPod"?
Kyralessa Send private email
Thursday, January 11, 2007
 
 
iPod, iMack, iBook, etc.. When someone says iPhone, they will think of Apple.  Apple has a very good case for winning any trademark suit.
stephen
Thursday, January 11, 2007
 
 
Because Apple owns the letter i?
Sunil Tanna
Thursday, January 11, 2007
 
 
No - b/c when you say i-"anything', you think of Apple.  That's what a trademark is.  I'm surprised that Apple didn't sue Cisco 6 years ago over it.
stephen
Thursday, January 11, 2007
 
 
Apple chose to build a brand around a naming scheme that would inevitably lead to confusion.  If anything, I think this suit represents more of a danger to the existing trademarks on iPod and iBook than it does to Cisco.

Of course that's assuming the legal system works the way I think it should. :-/
Drew K
Thursday, January 11, 2007
 
 
i-"anything' existed long before iMac and iPod, and was used to describe many products and services.

It seems to me your argument is that Apple does now own the letter i, and usurped anybody else's prior use of it.
Sunil Tanna
Thursday, January 11, 2007
 
 
If the prior use of 'i' in product names was still a going concern, Apple wouldn't have been able to usurp it, would they?

Apple may not have done it first, but they did it best. Again, it doesn't matter one whit whether Cisco has a case or not. When someone says 'iPhone' they will think of Apple's product. Cisco can be stubborn about the name, if they want to, but all they'll be doing is wasting marketing dollars. Time to throw in the towel and move on.
Bruce Rennie
Thursday, January 11, 2007
 
 
There are still non Apple "i" products, predating Apple's use of i.  e.g. iSearch which dates back to 1994.

> Apple may not have done it first, but they did it best. Again, it doesn't matter one whit whether Cisco has a case or not. When someone says 'iPhone' they will think of Apple's product

By that argument any big highly visible organization can take any smaller niche organization's trademark, with impunity.

If Apple create a product called "iSearch" and generate a lot of publicity, so that it swamps the original iSearch's recognition, that's fair according to your theory, right?

Or is that exactly the type of thing that trademark laws are supposed to prevent?
Sunil Tanna
Thursday, January 11, 2007
 
 
"Cisco can be stubborn about the name, if they want to, but all they'll be doing is wasting marketing dollars. Time to throw in the towel and move on."

This unfortunately is the reality of business. As Drew pointed out, Cisco has a valid case in that they can no longer extend their existing VOIP line into the cellular market without causing some confusion.

I believe one of the practical litmus tests that the Courts use is whether you actually do use your trademark within the market and/or you defend against people using it. Cisco would be in a much stronger position if they had sold a cell phone, or if they had openly and publically affirmed their intent to sue anyone (not just Apple) creating an cellular "iPhone."

As is, consider this analogy. I create an embedded processor and call it "Hypervector", which I then sell to companies as a direct competition to ARM. Intel then decides to market their Core 3 Duo chips for desktop computers under the "Hypervector" brand name. Is that trademark infringement?  Not necessarily...

I am not a lawyer but I think for Cisco to win AND force Apple to change the name of the phone, Cisco either needs to demonstrate they have a cellular VOIP solution or show that Apple has deliberately hindered Cisco from entering that space.
TheDavid
Thursday, January 11, 2007
 
 
Jake was right: A phone is a phone.  Saying that a cell phone is not a VoIP phone does not IMO get you around the "same market" issue.

And even if someone *does* decide that a cell phone is different enough from a VoIP phone to not infringe, since Apple's iPhone has Wi-Fi and runs OSX there's no reason it couldn't *alos* be a VoIP phone.
Drew K
Thursday, January 11, 2007
 
 
anon
Thursday, January 11, 2007
 
 
I think Jake is wrong.

It's not about what an item is, it's about what people believe the item is. And people believe there's a distinct difference between a phone that requires a landline, and a cell phone even though we all know that fundamentally, one has a NIC and uses a certain protocol, and the other has a wireless NIC and uses a different protocol. Everything else inside a phone is arguably the same.

Keep in mind that we're talking about trademarks here, not patents.
TheDavid
Thursday, January 11, 2007
 
 
So why then, is it called Apple TV and not iTV?

Because Apple's less scared of Cisco than they are of the other ITVs out there.
Big Jobs
Thursday, January 11, 2007
 
 
"No - b/c when you say i-"anything', you think of Apple.  That's what a trademark is.  I'm surprised that Apple didn't sue Cisco 6 years ago over it."

No, that is mindshare.

Apple does not own the letter i.  Trademarks are for specific terms, not just those that start with a certain letter, and in a specific area.  In Canada, some years back, McDonald's sued one company for naming their product "McYogurt".  McDonald's lost.

Sincerely,

Gene Wirchenko
Gene Wirchenko Send private email
Thursday, January 11, 2007
 
 
As others have pointed out, there are already a number of products out there named "iPhone" (notably Comwave's product; USPTO's trademark database lists others), and Apple has successfully registered the trademark in a bunch of other jurisdictions.  They're probably gambling that since (if?) Cisco hasn't defended the mark against these other companies/products, the mark is vulnerable.
Lazlo Send private email
Thursday, January 11, 2007
 
 
> It's "silly"?  Come on, that sounds like they're *daring* Cisco to take it to court.

That's correct, that's what they are doing.

> And claiming that the trademark has already been diluted by other products is a dangerous game.

If Apple can show that Cisco didn't defend their trademark with other companies, then every court in the US will rule in favor of Apple.

This is why you have to defend trademarks to keep them. Apple didn't like their terms, so their IP attorneys, who are the absolute best in the industry, looked into it and concluded that there was no need to license it because it was not a valid trademark.
Meghraj Reddy
Friday, January 12, 2007
 
 
"the company that sued MacIntosh the high fidelity audio company"

Did Apple really do that? I used to have a MacIntosh (tm) amplifier that I think was manufactured in the 1950s. Was that before Steve Jobs was born?
Meghraj Reddy
Friday, January 12, 2007
 
 
release a product called iTV in the uk thats even partly related to a tv system and confusion will abound. oh and ITV will probably be pissed as well.

plus i dare say ITV would do all they could to block 'their' content appearing on iTV if you see what i mean.

'appleTV' is another matter.

Actually I'm all for things carrying the 'apple' brand name, and reasonably distinctive styling, if you like it you like it all and if you hate it its easy to avoid.

the thing with the phone..

as has been pointed out call it iPhone and people think apple, no matter what the lawyers think. plus this is going to be known as the 'iphone' now no matter what anyone says.
Claire Rand
Friday, January 12, 2007
 
 
Cisco have all the right to sue Apple. Its their trademark and they do have a product. If MS named their Zune to iZune will Apple sue them cause their using the letter i? People might think its a Apple product.
Flxrms Send private email
Monday, January 15, 2007
 
 

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