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Cisco Sues Apple for "iPhone" Trademark Infringement
In a suit filed in the United States District Court for the Northern District of California, Cisco accused Apple of infringing Cisco’s “iPhone” trademark. In addition to damages, Cisco is seeking to enjoin Apple from using the iPhone name in the U.S.
On January 9, 2007, at the Macworld Expo in San Francisco, California, Apple announced the launch of its latest product, the iPhone. The iPhone combines smart phone cellular technology with the full functionality of an iPod music and video player. However, Cisco submits that Apple does not have the right or permission to use the iPhone trademark in the U.S. That being said, the night before Apple’s announcement, Apple and Cisco were actually in the last stages of negotiating a deal. The deal would have allowed Apple and Cisco to both use the iPhone name in the U.S. More specifically, the plan was to have a technical interoperability between Cisco’s Linksys Internet telephony products and Apple’s cell phones.
Subsequent to Apple’s announcement, Cisco alleges it informed Apple that negotiations would have to be completed at once; but Apple never responded. In fact, Apple has taken a rather staunch approach in their decision to launch the iPhone products in the U.S. Apple spokeswoman Natalie Kerris calls Apple’s trademark suit “silly” and “tenuous at best.” Ms. Kerris is further quoted as saying, “We’re the first company to ever use iPhone for a cell phone. If Cisco wants to challenge us on it, we’re confident we’ll prevail. “
Cisco attained the iPhone trademark in 2000, after acquiring a small, California based start up company. The acquired startup company had registered the iPhone trademark in March 1996. Furthermore, Linksys, Cisco’s home networking division, has been using the iPhone trademark for their voice over IP phones (“VOIP phones”) since early 2006.
Apparently to no avail, Apple has repeatedly tried to attain the rights to the iPhone trademark. Thus, in the fall of 2006, a company called Ocean Telecom Services (“Ocean”) attempted to file for the use of the U.S. iPhone trademark rights. Moreover, one week prior to Ocean’s filing, Apple filed for the use of the Australian iPhone trademark rights. In both Ocean’s U.S. filing and Apple’s Australian filing, each company makes reference to a trademark filing made in Trinidad & Tobago on March 27, 2006. To that end, Cisco alleges the obvious, Apple owns Ocean Telecom Services; an alter ego company, established to circumvent Cisco’s U.S. trademark rights.
Legal analysts assert that an expensive legal dispute benefits neither company, and as such, a settlement is likely. However, in the immediate action, the consensus appears to favor Cisco’s legal position. Simply stated, Cisco already owns the U.S. rights to the iPhone trademark. Apple’s Australian rights to use the trademark name are irrelevant in the eyes of a U.S. Court. As such, when assessing trademark disputes, the Court will use a 13 factor list in order to determine the ultimate question: Whether the names will cause any confusion on the part of consumers? Although Apple will probably argue its “iFamily” of trademarks, i.e. iPod, iTunes, iMac etc. will create consumer confusion; in the past, the courts generally have sided with the original trademark holder, which in this case would be Cisco.
For a copy of the decision, visit:
http://i.i.com.com/cnwk.1d/i/ne/pdfs/2007ciscovapple.pdf