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Cisco Exec: iPhone Lawsuit Not About The Money

Friday, January 12th, 2007 at 2:25 PM - by

Cisco's trademark infringement lawsuit against Apple over the use of iPhone is not about money or licensing, according to Mark Chandler, Cisco VP and General Counsel. Mr. Chandler posted a corporate blog entry on the lawsuit in a public relations move to cast the suit as an effort to protect Cisco's trademark on the name, and not an attempt get money from Apple.

He also said that his company had been in negotiations for "weeks" with Apple to find a way for the two companies to share the mark. According to the blog entry, Cisco was pushing for future interoperability between its iPhone and Apple's iPhone as a concession for Apple to use the name on its new cell phone.

"Fundamentally we wanted an open approach," wrote Mr. Chandler. "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."

For its part, Apple said shortly after Cisco announced its suit that it thought the lawsuit was "silly," blunt words in the world of corporate PR fights. Cisco's Mr. Chandler chose an oblique way to answer that charge, by rhetorically asking what Apple would do in Cisco's place.

"At Macworld," he wrote, "Apple discussed the patents pending on their new phone technology. They clearly seem to value intellectual property. 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."

It should be noted that it's rare for company execs at large firms like Cisco to publicly comment on ongoing litigation. In such situations, the lawyers more often than not want commentary from their clients kept out of the public discourse to ensure nothing comes back to hurt their court room efforts.

That Mr. Chandler, himself an attorney, chose to take his position public via a blog entry might suggest that this will be much more of a public fight than a legal one. Like the public ruckous between IDG World Expos former president Charlie Greco and Apple CEO Steve Jobs over the move of the East Coast Macworld back to Boston from New York, there is likely to be more public name calling and attempts at spin control from both Apple and Cisco.

Dave Hamilton contributed to this article.

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Actual Reality said:

member since 16 Aug 2005 with 44 posts, unranked, send him a message or view his profile

Fri Jan 12, 2007 3:40 pm

apple created the "i" prefix... without the ipod, they would have never thought of using that name. apple has grounds to sue them for trying to piggy back on the ipod -- one could easily claim that the use of iphone is meant to confuse consumers and make them think the product is related to the ipod in some way...

as stupid as it sounds, i'll bet thats the way they'll go with this.

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stuartea said:

member since 08 Aug 2005 with 327 posts, unranked, send him a message or view his profile

Fri Jan 12, 2007 4:11 pm

Seems Cisco's interoperability clause might not've been something Apple wanted to get into. 'sure, you can use the name, but you've got to make it work with our stuff'.

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A guest said: (hide)

Fri Jan 12, 2007 4:12 pm

Maybe this suit isn't about Cisco v Apple at all. Cisco might be doing Apple a favor. This maybe about away to loosen Cingular's restriction to use it's network.

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Bosco said:

member since 03 Jun 2002 with 1001 posts, unranked, send him a message or view his profile

Fri Jan 12, 2007 4:16 pm

Wrong actual reality. The company Cisco purchased that gave them the iPhone registered trademark registered it before Apple registered "iMac". By your logic, if Apple decides to call its digital hub "iHome", it could just rip it from the company that makes a super popular clock radio (which sells in Apple's stores).

What Apple is doing is often called "reverse confusion". This is where you steal a trademark by overwhelming public opinion that you own it. So the public thinks iPhone is an Apple thing, when in fact, the trademark is registered and used by Cisco, in however small and insignificant a phone product it's used in.

Let me share an irony about the concept of property and Steve Jobs with you. Yesterday, a court ruled that he can't tear down his mansion and rebuild a new one because it's been declared a historic 1920s building built by some famous architect. Maybe Steve just sees property as something to fight over with lawyers rather than as anything meaningful. Who knows what he's thinking?

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A guest said: (hide)

Fri Jan 12, 2007 4:20 pm

Apple didn't create the i prefix, Actual Reality doesn't know what he's talking about. Apple's use of it in the DAP market was not the first! There were many many players that preceeded the iPod. iRiver, iAudio, I-JAM, etc. Apple doesn't get to just automatically own the iBrand because their marketing has been so successful as to brainwash the public into thinking they are original.

Cisco will likely lose a little bit of money, not a substantial amount, but they have the right to protect their brand identity. Apple cannot just trounce on companies to claim their rights on the next iProduct. If Apple has grounds to sue Cisco for piggy backing on the iPod by making the iPhone, Apple itself is in a world of hurt for taking the "i" from iAudio, iRiver & I-JAM.

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A guest said: (hide)

Fri Jan 12, 2007 4:20 pm

Cisco is defending it's TM, which any company (including Apple) would do. They have to file the suit or loose their rights.

Having said that, Cisco and Apple will continue discussions on an agreement, just as they were doing last week. I don't think Cisco has a chance of interpretability - the best they can hope for is the rights to use the name in countries where Apple holds the TM. Maybe a bit of cash, but not a whole lot. The real value of the iPhone name is lost if Apple changes the name to Apple phone or iPod mobile so an agreement needs to be made fairly soon in order for Cisco to benefit.

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JonGl said:

member since 12 Jan 2006 with 113 posts, unranked, send him a message or view his profile

Fri Jan 12, 2007 5:33 pm

I have to say that my perspective was initially with Cisco on this, but then, as I argued it out somewhere--here on TMO, maybe--I said something that struck me... Cisco _may_ have bought a company that has had this thing trademarked for umpteen years (10 actually), and they _may_ have come to market _first_ with their own iPhone--but think of this....

When they came to market, it was already known for years that Apple had a phone in the works, and that Apple, were they to actually release said phone, would, in all likelyhood, want to use the iPhone name--they've been taking steps--publicly known--for years along these lines. Cisco, or whoever actually named this thing, _could_ have used any other name, knowing that a storm would be brewing if they tried to actually use this--and why court trouble when you don't have to? So, that begs the question--

Why _did_ they name this product like they did? You can't tell me they were ignorant of Apple's intentions! They will tell you they were aware--and why was it only released just a short time _before_ MacWorld? Sorry, but the more that I think about it, the more fishy it becomes to me.... Cisco was fishing for something--what? building publicity off the iPhone name from Apple? Quick word association name. What do you think when I say "iPhone" Cisco??? Apple??? Honestly.... Apple, of course! Of course, now, we mostly know about Cisco's product, but that's _not_ the first thing anybody will or would think...

Now, if I had asked you this _same_ question six months ago, would you have ever even been able to associate Cisco with iPhone? Not in the least at all!!! There has been only one company associated with the term "iPhone" from the very beginning--Apple--but wait! There's more! Not only that--but who gave that name to the phone? Nope! NOT Apple! It's been what people have been calling it from the first day the rumors appeared! And it wasn't called that by Apple! Say what you will, Apple _does_ for all intents and purposes, _own_ the "i" brand. That's the whole point of brands. Just like golden arches signify McDonalds, and the swoosh Nike, "i" means Apple--and yes, there was the iRiver, and other products--but, sadly, none of them stuck. It is Apple's continues, persistent use of the "i" that has branded it. Which leads me to my conclusion--I don't think it was an accident that Cisco chose "iPhone" for their product, nor was it simply the desire to protect an age-old trademark. They could have made an _awful_ lot of money selling the trademark to Apple--and I bet Apple would have paid it... but like Cisco said, it's not about money--at least, not directly.... it's publicity, and we all know, there's no such thing as bad publicity.

-Jon

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A guest said: (hide)

Fri Jan 12, 2007 6:08 pm

Hahahahahaha, Jon, that's worst argument for Apple's side I've ever read. The fact that there were rumor's that Apple wanted to make a phone should prevent a trademark that was registered before Apple ever used an iName should mean that Apple gets it? Talk about nuts! Nobody gave the name to the Apple phone but Steve Jobs himself. He did it when he used the name on stage. Just because Apple spends more money on marketing to brainwash you into believing they own the letter "i" does not make it so. If anything, they owe everyone else for its use. As previous posters have pointed out, iMac came after other people's use of iName. iPod came after LOTS of mp3 players with an iName. Apple just spends so much money on marketing, you actually believe that they own every iName that could ever exist. And THAT is what they want, to steal from other people through aggressive marketing. Face folks, Apple is ripping other companies off by brainwashing you.

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Bosco said:

member since 03 Jun 2002 with 1001 posts, unranked, send him a message or view his profile

Fri Jan 12, 2007 6:56 pm

Geez Jon. The problem with arguing that Apple is McDonalds is that McDonalds actually did its legal work over the years to carve out its rights to the "Mc" prefix. Apple hasn't asserted or done that until now. I think the most interesting part of this case is how Apple passive aggressively tried to take the name through the rumor mill. Looking back on the past few months, Apple did not attempt to manage expectations, which got everyone talking about the iPhone. If that strategy ends up being a fact in the case, this will go clear to the Supremes and be a huge precedent one way or the other. I still suspect this name will cost Apple $250 million if it settles and $1 gigabuck if it goes to trial. And I'm not so sure it gets to use the name in either case.

Think how much easier this would have been if they called it the "Apple phone" and spelled it out like the "apple tv". Steve Jobs was stuck on stupid when he insisted on iPhone.

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Tiger said:

member since 17 Jun 2003 with 1011 posts, unranked, send him a message or view his profile

Fri Jan 12, 2007 7:06 pm

In agreement that Apple hasn't asserted its use of the "i" name, you're right. And they're not doing it here, yet. They've been "sued". Well guess what? Cisco may have bitten off way more than they could chew. Apple partnered exclusively with Cingular. Not bold, not gutsy. Not even original. But they MUST have known that AT&T was about to drop the Cingular name and now Apple is partnered with the largest phone and networking company in North America.

BAM. Talk about an ally in the lawsuit. Cisco is no longer David talking on Goliath. It's Ahab and his white whale.

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A guest said: (hide)

Fri Jan 12, 2007 7:18 pm

Did Cisco ever try to defend its iPhone trademark against other companies that used iPhone? That may yet come into play...

Google iPhone and then check other websites (just be sure that they are not related to Apple or Mac - rumors, that's why) and see if iPhone is actively used by this or that firm... if so, why did Cisco not defend that trademark?

If I remember, no trademark defense = no trademark. Or something like that...

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A guest said: (hide)

Fri Jan 12, 2007 7:34 pm

Bosco wrote:
Wrong actual reality. The company Cisco purchased that gave them the iPhone registered trademark registered it before Apple registered "iMac". By your logic, if Apple decides to call its digital hub "iHome", it could just rip it from the company that makes a super popular clock radio (which sells in Apple's stores).

What Apple is doing is often called "reverse confusion". This is where you steal a trademark by overwhelming public opinion that you own it. So the public thinks iPhone is an Apple thing, when in fact, the trademark is registered and used by Cisco, in however small and insignificant a phone product it's used in.

Apple has had documents on the trademark "ipod" and "imac" as far back as 1994... MUCH earlier than most of these companies (the article states that the company has had the mark since 2000)

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=8&f=G&l=50&co1=AND&d=PTXT&s1=ipod&OS=ipod&RS=ipod

Cisco even PUBLICLY ADMITTED to wanting to collaborate with apple on the iphone... In the article it says that Cisco, during negotiations, wanted to make their phone interoperable with apple's iphone... not until these negotiations broke down did they sue... sounds almost like extortion to me. Cisco has a guaranteed failure on their hands without apple. the "iphone" name is worthless without apple. Cisco knows this, and now, this is the only way Cisco is going to get any money out of that patent.

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A guest said: (hide)

Sat Jan 13, 2007 12:13 am

Of course Cisco didn't sue until negotiations ended. They were in negotiations until the day before Jobs went on stage and just used the name iPhone. Then Apple just said, it's ours. Suing is not the only way Cisco will get money out of this. I suggest reading sites like the NYTimes, WashPost and cNet to understand just how much leverage Cisco has in this case. Stop being an Apple fanatic.

Also, the person who posted the link to the patent office is clueless. First of all, patents aren't trademarks, and trademarks do not need to be patented. Secondly, the patents that go back to 1994 have nothing to do with the iMac or the iPod. The iMac didn't even exist until 1998, and the iPod didn't even get released until Q4 2001. So before you go and post a link to the US Patent office and claim that Apple gets to have iBrand, read the damn patents.

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A guest said: (hide)

Sat Jan 13, 2007 12:19 am

PS - let me clarify. When I wrote they had nothing to with the iMac or the iPod, I do not mean the products. It is quite possible, even likely, that the products use the technologies that were patented. But these methods for doing various tasks (such as perhaps a dynamic addition of a bus to a computer system) while they might be used inside an Apple iProduct, they have nothing to do with any iName. It's about methods and techniques, not branding. Because as I pointed out, trademarks and patents are different things. But that's the type of argument you get from a machead!

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Rainy Day said:

member since 07 Jun 2005 with 607 posts, unranked, send him a message or view his profile

Sat Jan 13, 2007 12:36 am

Cisco may have lost their iPhone trademark.

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Actual Reality said:

member since 16 Aug 2005 with 44 posts, unranked, send him a message or view his profile

Sat Jan 13, 2007 2:42 am

Guest wrote:
Of course Cisco didn't sue until negotiations ended. They were in negotiations until the day before Jobs went on stage and just used the name iPhone. Then Apple just said, it's ours. Suing is not the only way Cisco will get money out of this. I suggest reading sites like the NYTimes, WashPost and cNet to understand just how much leverage Cisco has in this case. Stop being an Apple fanatic.

Also, the person who posted the link to the patent office is clueless. First of all, patents aren't trademarks, and trademarks do not need to be patented. Secondly, the patents that go back to 1994 have nothing to do with the iMac or the iPod. The iMac didn't even exist until 1998, and the iPod didn't even get released until Q4 2001. So before you go and post a link to the US Patent office and claim that Apple gets to have iBrand, read the damn patents.

...prior art is more than enough reason to defend your name. therefore the patent IS important. as long as it said it somewhere on the original patented device, the trademark can be defended all the way back until then. so.... that means that apple can defend against it all they want. since the patent was under the name "ipod" they have grounds. don't dismiss a claim unless you're thoroughly familiar with the subject matter.

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Bosco said:

member since 03 Jun 2002 with 1001 posts, unranked, send him a message or view his profile

Sat Jan 13, 2007 4:29 am

Actual Reality wrote:
...prior art is more than enough reason to defend your name. therefore the patent IS important. as long as it said it somewhere on the original patented device, the trademark can be defended all the way back until then. so.... that means that apple can defend against it all they want. since the patent was under the name "ipod" they have grounds. don't dismiss a claim unless you're thoroughly familiar with the subject matter.

Actual, you are having a really bad day. That is total nonsense. Patents have nothing to do with trademarks. Technology has nothing to do with trademarks. Trademarks are about products having names that identify them and differentiate them from competitors. If your high school has a law class, you might sign up for it next semester.

The whole 1994 discussion comes from a reference in a recently granted patent for an iPod feature referencing prior art granted as a patent in 1994. The actual name "iPod" was coined by contract copyrighter for Apple in 2000. He saw the iPod/Mac connection as a pod-hub thing, and jumped off with the "i" because of the popularity of the iMac. "iPod" was an especially nice potential trademark because it was unique for the space (MP3 players) and not in any way generic. On that test alone, iPhone is a hugely bad trademark, with countless companies mining the iName space for trademarks, not just Apple.

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gslusher said:

member since 13 Nov 2002 with 2088 posts, unranked, send him a message or view his profile

Sun Jan 14, 2007 7:02 am

[quote="Bosco"]

Actual Reality wrote:
Actual, you are having a really bad day. That is total nonsense. Patents have nothing to do with trademarks. Technology has nothing to do with trademarks. Trademarks are about products having names that identify them and differentiate them from competitors. If your high school has a law class, you might sign up for it next semester.

The whole 1994 discussion comes from a reference in a recently granted patent for an iPod feature referencing prior art granted as a patent in 1994. The actual name "iPod" was coined by contract copyrighter for Apple in 2000. He saw the iPod/Mac connection as a pod-hub thing, and jumped off with the "i" because of the popularity of the iMac. "iPod" was an especially nice potential trademark because it was unique for the space (MP3 players) and not in any way generic. On that test alone, iPhone is a hugely bad trademark, with countless companies mining the iName space for trademarks, not just Apple.

Apple filed for the iMac trademark March 8, 1993. Apple filed for the iPod trademark October 18, 2001.

Infogear filed for the "iPhone" trademark on March 28, 2996. However, Cisco is not the only registrant for an "iPhone" trademark. There are several listed, including at least one that is a sort of VOIP device. That one was filed March 7, 2005. There's another, filed in September, 2006, that is VERY broad and could easily include VOIP.

The earliest filing for "iPhone" that I could find was from 1994, but it was abandoned in 1998, AFTER InfoGear filed, so there was a "live" iPhone trademark when InfoGear filed.

Then, there's "iphone.com," the Internet Phone Company (hard to find any information on them in a simple search), which uses a mark with the i above phone. Other companies (including VOIP companies) are using "iphone" in their metadata so that they show up in a Google search, even though they don't use "iPhone" in the visible text.

I'm not an attorney, much less an expert on intellectual property law, so I don't know if 1) Cisco filed suit against other users, nor the status of the other registrations. Perhaps, instead of amateurs arguing about stuff most of us know little about (even a lot of attorneys know rather little about this complex field--it's an area for specialists), we should find some good intellectual property attorney to explain the situation.

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gslusher said:

member since 13 Nov 2002 with 2088 posts, unranked, send him a message or view his profile

Sun Jan 14, 2007 7:06 am

Bosco wrote:
Actual, you are having a really bad day. That is total nonsense. Patents have nothing to do with trademarks. Technology has nothing to do with trademarks. Trademarks are about products having names that identify them and differentiate them from competitors. If your high school has a law class, you might sign up for it next semester.

The whole 1994 discussion comes from a reference in a recently granted patent for an iPod feature referencing prior art granted as a patent in 1994. The actual name "iPod" was coined by contract copyrighter for Apple in 2000. He saw the iPod/Mac connection as a pod-hub thing, and jumped off with the "i" because of the popularity of the iMac. "iPod" was an especially nice potential trademark because it was unique for the space (MP3 players) and not in any way generic. On that test alone, iPhone is a hugely bad trademark, with countless companies mining the iName space for trademarks, not just Apple.

Apple filed for the iMac trademark March 8, 1993. Apple filed for the iPod trademark October 18, 2001.

Infogear filed for the "iPhone" trademark on March 28, 1996.

However, Cisco is not the only registrant for an "iPhone" trademark. There are several listed, including at least one that is a sort of VOIP device. That one was filed March 7, 2005. There's another, filed in September, 2006, that is VERY broad and could easily include VOIP.

The earliest filing for "iPhone" that I could find was from 1994, but it was abandoned in 1998, AFTER InfoGear filed, so there was a "live" iPhone trademark registration application when InfoGear filed.

Then, there's "iphone.com," the Internet Phone Company (hard to find any information on them in a simple search), which uses a mark with the i above phone. Other companies (including VOIP companies) are using "iphone" in their websites metadata so that they show up in a Google search, even though they don't use "iPhone" visibly on the site.

I'm not an attorney, much less an expert on intellectual property law, so I don't know if 1) Cisco filed suit against other users, nor the status of the other registrations. Perhaps, instead of amateurs arguing about stuff most of us know little about (even a lot of attorneys know rather little about this complex field--it's an area for specialists), we should find some good intellectual property attorney to explain the situation.

Edited: Here's a major complication that we hadn't considered: there are at least two devices called "iPhone" that are currently being sold that PREDATE the announcement of Cisco/Linksys's iPhone. Has Cisco gone after them? One is by Teledex, who had the 2005 trademark filing I mentioned. the other is by Comwave.

As for why Jobs went ahead with the name, it may have been already fixed into the marketing materials and plans. I've read that they were in negotiations with Cisco right up to the night before Jobs' keynote address. When the negotiations stalled, Jobs (almost surely consulting his attorneys) may have made the decision to go ahead and use the name. He could always change it later, as they did with "iTV." (A difference: Jobs made it clear earlier that "iTV" was Apple's internal codename for the product and that it would be changed. For one thing, iTV is a network in the UK.)

Apple's attorneys aren't stupid. They certainly know about the other "iPhone" products and what, if anything, Cisco had done about them. They may be able to throw Teledex's and Comwave's products in Cisco's face to show that they allowed a potential infringing product to be sold for months, perhaps over a year.

Apple probably negotiated with Cisco (starting in 2001, apparently) because that would avoid legal hassles. "We'll pay you $XX for you to roll over and play dead." The fact that they had approached Cisco so long ago says, to me, that Cisco/Linksys called it's handset "iPhone" very deliberately. It's a fairly lame product: it must be used with a computer, though it can call out through a phone line connected to the computer. See the comments on the Amazon page for the iPhone.

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A guest said: (hide)

Sun Jan 14, 2007 1:04 pm

None of those links work, but I did do some searching on that site myself.

There is a 1993 Apple iMac filing, but it wasn't registered until August of 1995. Filings for iMac go back to 1951. The oldest LIVE filing for iMac is from 1993, but is a footwear company. The iMac logo and design that they used when they actually released the well known iMac was registered in 1998.

The iPOD name was first trademarked in 1991 by the CHRYSALIS INCORPORATED CORPORATION as a design mark. This trademark is still live. It wasn't until October 2001 (as you point out) that Apple used the iPod name. This is after other iDevices had already been brought to market in the digital audio player market (iAudio, iRiver, I-JAM).

THERE IS NO FILING BY APPLE FOR THE NAME IPHONE! That's it, they just plain never even filed for it. Any one of these companies that has a registered trademark has a greater claim to the name iPhone than Apple does. Apple has no special claim to the iBrand just because they show countless commercials on television. Brainwashing the populous to buy your products does not produce a legal standing.

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gslusher said:

member since 13 Nov 2002 with 2088 posts, unranked, send him a message or view his profile

Sun Jan 14, 2007 6:00 pm

Anonymous wrote:
None of those links work, but I did do some searching on that site myself.

There is a 1993 Apple iMac filing, but it wasn't registered until August of 1995. Filings for iMac go back to 1951. The oldest LIVE filing for iMac is from 1993, but is a footwear company. The iMac logo and design that they used when they actually released the well known iMac was registered in 1998.

The iPOD name was first trademarked in 1991 by the CHRYSALIS INCORPORATED CORPORATION as a design mark. This trademark is still live. It wasn't until October 2001 (as you point out) that Apple used the iPod name. This is after other iDevices had already been brought to market in the digital audio player market (iAudio, iRiver, I-JAM).

THERE IS NO FILING BY APPLE FOR THE NAME IPHONE! That's it, they just plain never even filed for it. Any one of these companies that has a registered trademark has a greater claim to the name iPhone than Apple does. Apple has no special claim to the iBrand just because they show countless commercials on television. Brainwashing the populous to buy your products does not produce a legal standing.

1. Sorry about the links--I didn't realize that the TESS server would "time out." One has to initiate a search.

2. As for the other filings for imac, ipod, etc., so? You might not understand that trademarks are limited to particular types of products. (There are lots of companies with "Apple" in their names and trademarks.) Thus, a trademark for shoes has nothing to do with a trademark for computers. The Chrysallis IPOD trademark is for office furniture. That probably has zero effect on Apple's use of the same letters for a music player. Otherwise, Apple would not have been granted the trademark.

3. I never made any statement about "i-devices." That was other people.

4. Who said that Apple HAD filed for the trademark (not name--a name is not a trademark) "iphone"? That's a strawman argument. For what it's worth, Comwave apparently didn't file for a trademark, either, yet, they sell an "iphone."

5. As for "legal standing," are you an attorney or other legal expert who can make such a comment? I'm not, of course. It does sound like several folks making comments must be, though, given the air of certitude they put on.

FWIW, the 1993 IMAC filing was not by Apple. It was by Digi International for "computer interfaces using hardware and software for remote communications and data transmission with a local area network." Apple NOW owns that trademark (which applied to a narrow range of computer-like systems) by assignment. IOW, they bought that trademark. Their own iMac trademark (different from the Digi International) was filed in 1998 along with the first iMacs. I would guess that they bought the Digi International trademark around the same time--that's not clearly shown in the TESS and TARR listings.

We'll see how this plays out in the courts. Cisco may well have difficulty proving their case if they haven't already gone after Comwave and Teledex, among others, whose products are on the market and may (I can't easily tell) predate the Linksys product. Of course, Cisco could now sue Comwave, Teledex, and others, but that might be a bit late. Any attorneys like to chime in and correct us?

Another scenario, of course, is that Apple changes the name well before the product is sold. Notice that the name "iPhone" is NOT on the product, itself. It would probably then be up to Cisco to prove that they had been damaged. (From what little I understand of civil lawsuits in the US, damage is not assumed but must be proved by the complaintant. )

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A guest said: (hide)

Mon Jan 15, 2007 2:21 am

Looks like Cisco had a working functional product named iphone before apple even considered it.

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gslusher said:

member since 13 Nov 2002 with 2088 posts, unranked, send him a message or view his profile

Mon Jan 15, 2007 5:43 am

Anonymous wrote:
Looks like Cisco had a working functional product named iphone before apple even considered it.

How do you figure that? Apple has been talking with Cisco about the iPhone trademark for several 5 years. Cisco/Linksys came out with their iPhone only recently.

It would help if you'd provide some reference that explains just what you mean.

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gslusher said:

member since 13 Nov 2002 with 2088 posts, unranked, send him a message or view his profile

Fri Jan 19, 2007 12:01 am

Update: See this comment by a REAL trademark attorney. It's not as simple as some of our anonymous Guests seem to think.

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A guest said: (hide)

Fri Jan 19, 2007 12:38 pm

Nice link, looks like according to all that, Cisco is in still holding all the chips.

If Apple can argue that Cisco failed to defend the trademark until it launched the new iPhones in 2006, it could possibly convince a judge that Cisco abandoned the trademark, Stanton said. Cisco has said that it used the iPhone trademark on VoIP phones sold in early 2006, and maintains that is has actively defended its trademark. "We have taken all actions necessary to satisfy all elements to prove the validity of our trademark under trademark law," a Cisco spokesman said.

However, settlement is the most likely outcome of this dispute, given the burden of proof on Apple needed to overcome Cisco's trademark registration, the lawyers said. "Even big companies get legal fatigue," Radack said.

Now some quotes from your link...

"[T]he USPTO gives you an extra six months grace period, if you pay an extra fee. This grace period would have expired 5/16/2006. Cisco filed a Declaration of Use on 5/4/2006 which kept their registration active."

What Apple has to do is try to argue this point ...

"It is possible that the Declaration of Use is defective, as there was no continuous use, and the sample that Cisco submitted was for a product not released until 7 months later."

Again, the burden of proof is all on Apple's shoulders, not Cisco's. Hence the previous analysis which said this is likely to end in a settlement. Cisco has the trademark and filed a Declaration of Use within the proper time limits. It's a very high bar for Apple to clear. Even assuming that the Declaration of Use is defective, that STILL does not put Apple in the clear.

"Without the registration, Cisco and Apple would still have a trademark dispute to resolve, but Cisco will have a harder time proving that it has valid trademark rights."

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gslusher said:

member since 13 Nov 2002 with 2088 posts, unranked, send him a message or view his profile

Fri Jan 19, 2007 5:07 pm

Anonymous wrote:
Nice link, looks like according to all that, Cisco is in still holding all the chips.

...

Again, the burden of proof is all on Apple's shoulders, not Cisco's. Hence the previous analysis which said this is likely to end in a settlement. Cisco has the trademark and filed a Declaration of Use within the proper time limits. It's a very high bar for Apple to clear. Even assuming that the Declaration of Use is defective, that STILL does not put Apple in the clear.

"Without the registration, Cisco and Apple would still have a trademark dispute to resolve, but Cisco will have a harder time proving that it has valid trademark rights."

A duplicate post to one on another discussion. See my question there. For here, note that the attorney in the link says, "Cisco will have a harder time proving that it has valid trademark rights." (Emphasis mine.) I am not an attorney (perhaps our guest is). Doesn't the complainant have some burden of proof in a civil lawsuit?

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A guest said: (hide)

Sat Jan 20, 2007 1:05 am

Sometimes, when people are losing an argument, they like to quote just one sentence out of context and ignore the rest of what was written.

Cisco doesn't have to prove its declaration was not defective, the declaration is on file and was already accepted by the USPTO. Apple needs to prove that the declaration was defective. That's what is meant by the burden of proof being on Apple's shoulders.

Cisco does not have to show that its trademark is valid, that's what the documents already do. Cisco needs to show that Apple's use of the term iPhone is infringing upon that trademark. Apple is the one must either show, a) that its use of iPhone is not an infringment upon Cisco's rights as the holder of that trademark (just as it was not an infringment upon the shoe company's trademark when Apple used iMac), or b) that Cisco's trademark which is on record and up-to-date is not valid (they can try do that by arguing the declaration was defective).

Am I an attorney? No, not yet. Give me 6 months and ask me that again though. Snide remakrs or not, your still missing the point that Cisco has already done it's due diligence. It's papers are on file and accepted. Apple has to show Cisco and the USPTO were wrong when they accepted either the trademark or the declaration. Cisco holds the cards right now.

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gslusher said:

member since 13 Nov 2002 with 2088 posts, unranked, send him a message or view his profile

Sat Jan 20, 2007 1:18 am

Anonymous wrote:
Sometimes, when people are losing an argument, they like to quote just one sentence out of context and ignore the rest of what was written.

Read my response in the other discussion. It doesn't quote just one sentence. The attorney in the message I linked to said this:

"Now this is my personal opinion based on the information I have seen so far (your mileage may vary): Cisco may have a problem with its trademark registration because it has not been continuously offering a product under the iPhone trademark since 1999. They knew that Apple was interested in the name (since Apple had approached them and negotiations were ongoing). If Cisco didn't launch a product using the iPhone name, their trademark registration would be canceled and they would have no bargaining chips with Apple. So in order to keep the trademark active, they had to file the Declaration of Use, and start selling a product under that trademark.

It is possible that the Declaration of Use is defective, as there was no continuous use, and the sample that Cisco submitted was for a product not released until 7 months later.

The fact that the Declaration of Use was submitted only days before the deadline expires gives me the impression that they were scrambling to get a product to market, and had to file the Declaration before the product was ready."

That should put his last statement in context. You should be able to make more of this than I can.

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