Apple vs. Cisco over iPhone

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Randy Savicky
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Apple vs. Cisco over iPhone

I was just on the phone with Garvin Thomas, a reporter from NBC11 News who wanted my take on the iPhone lawsuit between Apple and Cisco and to discuss what he learned. First, when you search the US Patent and Trademark Office database for iPhone you will see 4 separate trademark applications for the term "iPhone". One is by Cisco, another by Teledex, another by Xtreme Mobile, and lastly a trademark application owned by "Ocean Telecom Services LLC" based out of Delaware. Apple is noticeably absent from this list, so perhaps one of these companies is a shell company acting on behalf of Apple. Sure enough when I checked the patent descriptions for all of them, the only one that resembled the Apple iPhone was the application from Ocean Telecom Services. The application appears to have been filed on September 26, 2006, though I also see an earlier date called "foreign filing date" of March 27, 2006 from Trinidad and Tobago. The trademark application states:

C 009. US 021 023 026 036 038. G & S: handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data; MP3 and other digital format audio players; handheld computers, personal digital assistants, electronic organizers, electronic notepads; magnetic data carriers; telephones, mobile phones, computer gaming machines, videophones, cameras; prerecorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, database synchronization software, computer programs for accessing, browsing and searching online databases, computer software and firmware, namely operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; electronic handheld units for the wireless receipt and/or transmission of data that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; and software for the synchronization of data between a remote station or device and a fixed or remote station or device; computer hardware and software for providing integrated telephone communication with computerized global information networks

C 028. US 022 023 038 050. G & S: hand-held unit for playing electronic games


So this must be the Apple iPhone since it describes it to a tee. Take a look at the last description which states the iPhone will be a hand-held unit for playing electronic games. Guess Sony PSP and Nintendo GameBoy have some competition on their hands. Perhaps the device will be compatible with the arcade games recently introduced for download on iTunes which works with Apple's fifth-generation video iPods. Though at least the iPods have a 4-direction thumbpad/wheel. The Apple iPhone has only a touch screen for input, so I'm guessing only simple games that don't require a lot of finger dexterity. Though I suppose using finger gestures you could play games, but it would be more difficult. The attorney of record for Ocean Telecom Services (Apple) is James Johnston and he can be reached at jjohnstonoctelecom-at-sign-gmail.com. I plan to follow-up with him soon to get his take on all of this.

I also see that Apple filed in Australia using the same Ocean Telecom Services. So there are two questions in all of this.

1) What was in the agreement that Apple didn't want to abide by?

Answer: That is something that unfortunately I don't think we'll get an answer to, since there was probably non-disclosure agreements in place during the negotiation phase.

2) What is Apple thinking if it is so clear that Cisco has the trademark? Why launch with this name if you haven't inked a deal?

Answer: Obviously, Apple must think they have a legal case in fighting Cisco on this. So what are the possible legal issues that would give Apple a strong case? The NBC News reporter told me he spoke with some patent and trademark attorney experts and they believe that Apple thinks there are other companies out there with goods or services called iPhone, not just Cisco. in effect, Cisco has not been protecting the trademark. The other possibility is that Cisco had abandoned the trademark and not used it for a period of time. In fact, this seems to be true since the Linksys CIT200 and the Linksys CIT310, (both of which I reviewed) are now called the iPhone and were only recently renamed on December 18th.. Specifically, each Linksys/Cisco product is called the Cordless Internet Telephony Kit or iPhone for short. Although they're keeping the CIT### for customers to determine the exact model within the iPhone "family". I guess you would call it the CIT200 iPhone and the CIT310 iPhone. The PDF manuals still reference the old name, such as this manual for the CIT200 and I couldn't find a single reference to the word "iPhone" in the manual even though I see "iPhone®" with the registered trademark throughout their website. I guess they missed that. Time to re-print/convert those PDFs!

In fact, there are a bunch of other iPhones in the Linksys family of iPhone products. Here's the complete list:
The most compelling or likely attack on Cisco's trademark is on "a family of marks". The best analogy to use is McDonalds. Say you decide to start selling McTofu burgets - even if there is no trademark on McTofu burgers, McDonalds can go to court and state they have a "family of marks". In fact, the court has ruled in the past in favor of McDonalds against a mattress company that tried to trademark McSleep. They ruled it belongs to McDonalds. So what Apple could do is say "we put 'i' in front of something is what we do, with iPod, iMac, iTunes, etc.". Of course what shoots that down is the fact that Cisco trademarked this term in 1996 BEFORE Apple launched the iMac or the iPod.

Another argument that trademark experts are saying is that Cisco in effect let their trademark expire and only brought it back later AFTER Apple had already brought to market a family of marks and products with the letter "i". Most experts expect that Cisco and Apple will settle this dispute before it goes to court, but knowing Steve Jobs, I wouldn't be surprised if he battles big, mighty Cisco. It's not like Steve Jobs ever tried to take on any other big heavyweights... like say Microsoft? :)

Another strong case for Apple would be to point out that if you went on the street and asked anyone on the street who do you think makes the iPhone, 90% of the people would guess Apple, even if the iPhone didn't exist. This kind of evidence is actually admissible in court and used in these cases. Apple could argue that the family of marks using the letter "i" is more part of Apple than it is part of Cisco. In which case, if Apple win the case, Cisco could be forced to change their product-line name. Of course the CIT-series didn't have the name iPhone until very recently.

What's interesting is that Cisco was looking to "share" the trademark with Apple. Perhaps Cisco was looking to get some of the technology used in the Apple iPhone for their own products which would be a boom to Cisco. Technically, Linksys, since Cisco is focused on business and Linksys on the home/consumer-side. Unless Cisco or Apple divulges the terms of the tentative agreement I guess we'll never know.

Finally, the products are so different, nobody could confuse the two. If you just read the descriptions on the trademark applications you can see how different they are. Delta Dental, Delta Airline, Delta Faucet. Yes the Cisco iPhone is a VoIP phone, but the Apple iPhone is a portable computing device that is a mobile phone, Internet browser, data device, mp3 player, and more. Though, the experts state this is perhaps the weakest argument since both products are still phones.

It will be interesting to see how this all pans out and who gets to keep the "i" in iPhone. Kinda reminds me of my "Grinch Who Stole the 'I' in CTI" blog post. Maybe I should re-do that blog post only with Cisco and Apple as the main characters. B)


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