Cisco Sues Apple Over iPhone Trademark

Well, you had to know this lawsuit was coming:

Cisco (CSCO) [yesterday] announced that it has filed a lawsuit in the United States District Court for the Northern District of California against Apple, Inc (AAPL)., 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.

Magnificent silly stuff. But on a somewhat more serious note, I'm surprised Apple doesn't redirect www.apple.com/phone to www.apple.com/iphone, and/or vice-versa. They really have it all staked on iPhone. (Upon doing a little more work this became a little clearer: Apple has iPhone trademarks for phone-like uses in a number of countries outside the U.S., including Australia, Canada, and the U.K.)

The full text of Cisco's iPhone suit against Apple is here. The following is a fascinating excerpt showing the kinds of entertaining Spy vs. Spy skulduggery to which Apple resorted in trying to obtain usage of Cisco's iPhone trademark (after Cisco made it clear it wouldn't cede the mark):

Cisco has made some reasonably sober-minded comments on the blogstorm concerning this suit. There is clearly fault enough to go around here, with Apple acting precipitously, and Cisco underestimating Apple's self-confidence. (The former company sounds more than a bit plaintive when it complains that Apple gave it the equivalent of a "We're too busy" response.)

Then again, while Cisco says it didn't want money, what it did want isn't nearly as clear as it is suggesting that it is:

Fundamentally we wanted an open approach. We hoped our products could interoperate in the future. In our view, the network provides the basis to make this happen--it provides the foundation of innovation that allows converged devices to deliver the services that consumers want. Our goal was to take that to the next level by facilitating collaboration with Apple. And we wanted to make sure to differentiate the brands in a way that could work for both companies and not confuse people, since our products combine both web access and voice telephony. That’s it. Openness and clarity.

While this sounds nice, does anyone know what it all really means? A guarantee of a Cisco-friendly protocol and an assurance that Cisco products would get promoted in every Apple iPhone campaign? More? Less? Would Cisco get to vet all Apple iPhone ad campaigns?

Comments

[Julian Ivan...:]

The Guardian: AAPL Will Keep Name
By Charles Arthur / Apple 09:47pm

The more we look into this, the more it becomes (as Malcolm Gladwell points out in an excellent New Yorker article) like a mystery, not a puzzle - that is, the answers were all out there already, but needed to be put together. (Gladwell's piece is about Enron. Highly recommended.)

Apple did indeed register the "iPhone" trademark in the US, and it was granted in September 2006. Don't believe us? See this page. Sure, it's down for "Ocean Telecom Services", but the description (not to mention the typography) are all that Apple gear. And as 10layers noted in October, Apple had been filing with the same description all over the world, including the UK.

Now, if you look at the results of a search in the US Patent and Trademark Office for "iPhone", you get 9 results, of which 6 have been abandoned. The only others, besides Apple, are for a hotel internal phone, and Cisco's, which arguably doesn't conflict with the Apple one - the trademark is in a different field, of "computer hardware and software for providing integrated telephone communication with computerized global information networks", not "handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data..."

So Apple might squeak through this one without having to shell out to either of the other trademark holders.

2007 Jan 11 08:59 AM

[Tom B:]

Cisco is trying to shake Apple down. Paul McCartney tried the same thing last year, with regards to "Apple".

2007 Jan 11 09:04 AM