Cisco sues Apple for ‘iPhone’ trademark infringement

Cisco today announced that it has filed a lawsuit in the United States District Court for the Northern District of California against Apple, Inc., 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, in the press release. “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.

MacDailyNews Note: Yesterday, Cisco issued official comments on the Apple iPhone announcement: “Given Apple’s numerous requests for permission to use Cisco’s iPhone trademark over the past several years and our extensive discussions with them recently, it is our belief that with their announcement today, Apple intends to agree to the final document and public statement that were distributed to them last night and that addressed a few remaining items. We expect to receive a signed agreement today.”
Either Apple doesn’t really to use the name “iPhone” upon release (it is much more than just a phone, after all) and they’re just using it for the built-in free publicity or this is just part of a tough negotiation process. It isn’t really much of a worry either way. Remember, Apple’s “iPhone” isn’t available for pre-order, much less being sold, yet. This naming issue will be worked out by June – probably much sooner.

Related articles:
The only thing really wrong with Apple’s iPhone is its name – January 09, 2007
Briefly: Apple changes corporate name; Cisco expects agreement on ‘iPhone’ trademark today – January 09, 2007
Apple debuts iPhone: touchscreen mobile phone + widescreen iPod + Internet communicator – January 09, 2007

133 Comments

  1. The silly thing about all this is Apple knew full well that the iPhone name was already taken. Apple’s lawyers must have some very profound information up their sleeves to allow Steve to get on stage and publicly name their new device iPhone.

    I wonder what Apple has cooking?

  2. AAPL took a $1.15 hit after this news broke. Then recovered by 65 cents.

    This is a non-issue for AAPL. The name of the phone could be changed, e.g. Apple Phone (to match Apple TV), and that would be the end of the matter.

    Cisco would be in a very bad legal position if someone infringes its trademark – and Cisco knows about it – and does nothing about it. Hence, Cisco HAD to file the lawsuit to protect its trademark, and negotiating position, in the face of such a public announcement by Apple.

    So I wouldn’t put much weight on this lawsuit. It is just begging to be settled out of court. Probably some last minute haggling or wrangling over some details, and then the problem will go away.

    If AAPL dips tomorrow morning as a result of this non-issue, it would be a screaming buy.

  3. Look, I respect Cisco and all, I even have a friend who works for them, but come on, who is really going to benefit from the name ‘iPhone’ more? Who wants the Cisco/Linksys iPhone???….-crickets- NOBODY. they should just sell it or at the worse, demand a royalty, even thou Mr. Jobs probably wouldn’t accept that. It sucks after seeing all the local collaboration between these companies and one of the locals left out has to ruin the party.

  4. Apple has been the registrant of the ‘iPhone.org’ domain name for years, and Cisco has failed to do anything about it.

    —————

    Because there is nothing that Cisco CAN do about it.. If Apple registered the domain, then the domain is theirs, but if Cisco has registered the name iPhone for a phone, then Apple can’t use it for a phone.

  5. Umm yeah, Willie G., I can say “free publicity,” there, I said it..

    Now what’s your point?

    Are you saying Apple would’ve had less publicity for the iPhone if they used a different name? I don’t think so. Apple could’ve called the iPhone “turd phone” and it still would’ve been in every headline.

  6. Famous, outrageous Steve Jobs and Apple arrogance has resulted in casting a shadow over yesterday’s brilliance.

    Now, Steve pays through the nose for the name he wants (translation: higher phone price) or he finds another name.

    But, you know, something really catchy like Apple Computer Phone is available now that Steve is getting out of the computer business.

  7. First, I’m sick of CISCO.
    Crappy company.
    Used to be great.
    Apple should watch CISCO closely. Apple could become a mere shadow of its once self also.

    Second…

    Call it

    iDevice
    or
    iCom
    or
    MyPhone

    Then buy the Cisco Kid tv show and sue CISCO for copyright infringement.

  8. If you look closly, nowhere on that phone doe sit actually say “iPhone.” As we all know, Apple has always put the name on the product… with the exception of the Powermac G5 and servers.

    This is key. They don’t actually plan on calling it iPhone in my estimation.

  9. Attn: iDave

    I disagree. A trademark owner can take an infringing domain name from a registrant, and there are legal processes to do that. Cisco should have sued Apple over the domain name – or gone to WIPO for arbitration – and won.

    As the owner of the iPhone trademark, Cisco is required to defend their rights. But they have neglected to do so for years.

  10. “Now, Steve pays through the nose for the name he wants (translation: higher phone price) or he finds another name.”

    You’re comically wrong. Any settlement they get will be peanut crumbs compared to how much they’ll make.

  11. To me this seems obvious…

    Apple was in negotiations for years (admittedly, from the facts from both companies) to use iPhone from Cisco… The fact that the negotiations took years obviously point to some enormous disagreement on value of the name. (I’d even wager that as the iPod has exploded so much over the past two years, Cisco’s named price was changed multiple times).

    I’d bet a few duckets that Apple took Cisco’s siege/negotiation tactics personally, and INTENTIONALLY chose to use the name yesterday with NO INTENTION AT ALL of using iPhone permanently… just to piss off Cisco.

    On the other hand, something else might be obvious too…

    Apple knows that iPod is a temporary naming phenomenon because soon all cell phones will have music players built in and will be to some degree “smart,” and “iPhone” is the stronger name for the future of the industry… And Cisco knew the value of their name and is still trying to stick it to Apple for as much as they possibly can.

    So,
    Call me obviously confused.

    Have a Nice Day.

  12. I from what I understand the Cisco patent for “iPhone” deals with integrated telephone communication with computerized global information networks. They released their VOIP phone recently, this may be part of the reason why Apple has not responded yet.

  13. Call it MacMobile, CrackPod, Newton – pick anything other than iPhone and get on with it. Why risk being confused with Cisco’s iPhone products in the future?

    It was noted that the device was not physically marked as an “iPhone.” Injunctive relief just means that Apple can’t use the name. Even if they don’t come to an agreement, I can’t see any damages over this.

  14. I know this one:

    “I’d bet a few duckets that Apple took Cisco’s siege/negotiation tactics personally, and INTENTIONALLY chose to use the name yesterday with NO INTENTION AT ALL of using iPhone permanently… just to piss off Cisco.”

    Those were my thoughts exactly!

  15. Apple had better do it right this time.

    The process of change from “Rendezvous” to “Bonjour” was horrible, and no matter how many Suave French Twists you apply, you’ll never get a name as great as Rendezvous for that technology. I miss “Rendezvous” as a name.

    Let’s hope Apple does not lose as much in the change from “iPhone” to whatever (assuming it changes; and how could it not with Cisco already producing their device of the same name. Are they going to change? No way.)

  16. Nothing to do with Cisco, but 2 random questions:

    To what extent did Apple “ditch the clickwheel” (virtual or otherwise) as a result of the Creative lawsuit settlement?

    Clearly the UI is redesigned, could it be that or that a virtual click wheel turned out to be a bitch to program in reality?

  17. First off, can you all stop talking about ‘patenting’ iPhone. It’s called a trademark, damnit.
    Second, if Apple owns the iPhone.org domain, all that Cisco can do is offer them money for it – UNLESS Apple are passing themselves off as Cisco, which they weren’t.
    Finally, even if this is some cunning stunt and it’ll eventually be called the podPhone or whatever, I can still see myself getting a half-dozen or so emails from my Windoze weenie mates tomorrow having a laugh at we Mac fans’ expense.
    🙁

  18. Attn: big jerk

    If I file the first trademark registration for your domain name, and you fail to challenge it within the statutory time period, I can probably take your domain name.

    You should check uspto.gov and make sure noone has registered a trademark for your name. If no prior registration exists, you should consider registering the trademark yourself.

  19. Phil Schiller, Apple’s head of worldwide product marketing, said yesterday that this was the first use of the name as a cell phone, whereas Cisco’s device is a cordless phone.

    This might be the crux of Apple’s arguement that the products are in different categories. It doesn’t seem reasonable since it can been seen to cause confusion in the marketplace and a dilution of Cisco’s trademark.

    Apple might have been betting on iPhone trademark abandonment. If they hadn’t reintroduce an iPhone recently, then the trademark could have been considered abandoned (after 3 years of non-use).

    Perhaps Apple will argue that Cisco only held onto the name and introduced a product line simply to get money from Apple, knowing full well that both the media and public associate the iPhone moniker with Apple. If Apple hadn’t planned to release a phone with that name, Cisco would have not released phones under that name.

  20. I agree with qantas in calling it ‘iPod Phone’.

    It is legally safe, launches on the back of the iPod and then WE will shorten it to iPhone when talking about it. How hard was it to call it something else after Cisco launched their iPhone. This is just a fight for more money. Apple will give in because their have already increased in value more than any name might cost.

  21. why would apple ditch the clickwheel that it invented? I am really missing something here.
    Personnally, I think the phone was great, but since cisco came out with its iphone, I would rather it had a different name. You’ve got to wonde what was going thru their mind at apple to use a name they didn’t have the rights to. (esp. since a phone was alreayd released with that name)
    But Cisco is stupid they should sell the trademark to apple and be done with – get a butt load of money and rename their phone — which no one would buy unless they thought it was apple’s iphone.

  22. Apple will win this case and will pay a great deal for it. Steve Job is too stubborn to pass the name back to CISCO. The phone was supposed to surprise us by the end of April instead of the promised June release but now it seems that the delay was an actual time-cushion to take care of legal issues that may come up. Oh well… back to the estimate release time!

  23. It’s an iPod. The name iPod is generic enough that you can use it as a brand..

    Just call it the iPod+Phone or simply iPod Phone…
    We all know that a stripped down version with no phone capability is coming. What’s that one going to be called? iPhone Lite?

    iPod: widescreen music and video player with internet capability
    iPod+Phone: widescreen music and video player with phone and internet capability

    I never liked the name iPhone and still don’t!!!

  24. Nothing like pissing in CISCO’s lemonade by calling it the ‘iPhone’ all day yesterday. CISCO was probably wanting too much for the name, and Apple was just taunting them on the issue since this product doesn’t reside on the market yet. In court, Apple can just say that the name has yet to be resolved. In the meantime, Apple will argue that CISCO has benefitted by the publicity.

    Apple doesn’t care because they will make billions on this product — regardless of the name.

  25. If the folk’s at Cisco are smart they will lease the name to Apple, Inc. for some fee for each “iphone” sold. Allow Apple to build a brand name they own and profit in doing so.

    Personally I think the Apple phone is very nice, the smudge factor will be annoying but what’s worse is Cingular, that is the reason I won’t be purchasing it no matter what they call it.

  26. As far as I can tell from the photos I’ve seen of it, nowhere on the device does it say “iPhone”. So there is room for Apple to maneuver. Perhaps it will be called ApplePhone, but with the apple icon rather than the word? I’d like that; this “i” stuff is getting old with me (iRetch).

  27. According to uspto.gov, Infogear filed their iPhone trademark registration on March 20, 1996

    According to pir.org whois, Apple registered iphone.org on December 16, 1999.

    According to wipo.int, noone has challenged Apple’s registration of iphone.org seven years ago.

  28. I never heard of iPhone until recently, and every time I heard of it it was with something to do with Apple. Yesterday it was solidified as an Apple product. I’m sure not very many knew Cisco had a trademark on it. If a company trademarks a name or whatever, then does nothing with it, then tough luck I say.

    But anyway does anyone else think it kinda cool that Apple is getting sued left right and center? They are obviously a powerful force that must be toppled at all costs.

  29. The new name is obvious: Apple Talk (or Talk). ” width=”19″ height=”19″ alt=”smile” style=”border:0;” />

    Or we could really go back and call it the AppleCAT (or CAT, from the legendary early BBS modem). Invent something for CAT to stand for, and ship it.

  30. We expect to receive a signed agreement today.”

    Sooo….. WTF is the issue? Why would you sue (and buy your lawyer another new Mercedes) if things are in “good faith” and expected to settle shortly?

    Maybe a form of pressuring Apple, just to make sure? Maybe Apple didn’t sign the agreement after all? Maybe it ended up being a big f-you from Jobs?

    Whatever Apple decides to call it, it’ll get attention.

  31. Have you all forgotten the name of the company? APPLE.
    The Beatles sued Apple for how many years… and what did Apple do? They just said “Er, okay, you can go ahead and sue us all you like, but we’re going to remain Apple Computer. AND we’re going to get into the music business whether you like it or not.”

    And they did, and in the end they won.

    I think Cisco was pretty transparent in marketing the name at this particular moment. We all know that it’s going to be called iPhone, ad Apple is going to do whatever they have to do to keep calling it thusly. However much they may have to pay in settlements will pale in comparison to what they’re going to make on it. They know this better than Cisco does, so they’ll win either way.

  32. perhaps  is now pronounced “a-i” as in Apple Incorporated…

    tv = ‘a-i tv’
    phone = ‘a-i phone’
    pod = ‘a-i pod’
    mac = ‘a-i mac’

    what do you know… the 4 new divisions…
    since no one is going to say “apple pod”…
    the  symbol becomes “i” by default

  33. But anyway does anyone else think it kinda cool that Apple is getting sued left right and center?

    Um, no.

    In this case, in an attempt to satisfy Wall Street and stupefy Microsoft, Apple has put itself directly in the sights of most of the telecom industry. Cisco included.

    It’s a given the big names will race 24/7 to beat the iPhone to launch. They’re not MS: they have their shit together, and they’re not going to be beaten at their own game.

    I hope the iPhone is a blockbuster. But we’d better enjoy the iPhone party while it’s good: the big kids want in too.

  34. This is so simple. There are two ways to go.

    1) Trademark the work iCisco and when Cisco objects, agree to exchange hostages. This would be the least expensive way to secure the iPhone name.

    2) Since the name iPhone is totally insufficient to accurately describe the device, Apple should just rename it something more meaningful. Hey, I know, since it is three things in one, and this one device does three things, why not call it iGod ? It makes sense since the iGod will reign down holy terror on all the other cellphone makers ” width=”19″ height=”19″ alt=”raspberry” style=”border:0;” />

  35. It’s Steve just being the Pirate of Silicon Valley once again.

    Cisco probably wanted billions for the name.

    Jobs says Fuck You.

    Heads towards a legal showdown (all that outlaw publicity for Apple).

    Cisco gets the ring jitters realising they could lose the name for nothing.

    Cisco caves in and sells to Apple for peanuts (and a Made For iPod licence thrown in!).

    Everyone happy again and Apple never out of the news.

  36. @everyone who keeps saying “patent” in the comments, please place your cursor on the word, and do CMD-CTRL-D. The little dictionary will give you a definition. Now do the same with “trademark.” Cool, huh?

    @podster: the Creative lawsuit was over the menu system on the iPod, not the clickwheel. Could it be that has some bearing on the different style of the menus on the iPhone?

    @piece of the pie: yeah, there’s no doubt the other guys aren’t sitting still. But any phone they come out with has to go thru the same FCC approval as Apple, and they will be way behind Apple in the approval queue. I don’t see how they can beat the iPhone launch, other than glomming some crappy software on an existing crappy phone. At any rate, it should be interesting to watch. Like watching RIM and Palm stock yesterday during the keynote. Heh.

    @macaholic: “I vote for CrackPod! It out cracks the crackBerry, making it a dingleberry.” Thank god I hadn’t yet taken that sip of tea. You win the comments.

    MW: “Movement”, like how zunes keep your movements regular, but there’s a risk of dingleberries.

  37. Apple could call it the thingamajig or talkamajob or convergaphone or whatever. Folks, are still gonna want the “iPhone” and pay Apple Inc money for it even if it comes in a box without a label or a brand name or with a sticker saying “Not a Cisco iPhone inside, really!”.

  38. Cisco is merely trying to take advantage of the “i” prefix that Apple has already successfully exploited on many of its other innovative products. Apple is the comapany that has given that prefix its cache. Cisco doesn’t have a product that is even close to Apple’s iPhone. It seems as if every time Apple introduces another innovative product (which it has done over and over) some AH out there wants to rain on its parade. Is this the kind of competition we need in this industry. Follow Apple’s lead and strive for excellence.

  39. I knew it. Apple is using the name recognition of “iPhone” from all the pre-announcement rumors. Once everyone is aware of iPhone, Apple will make a big deal about being force to change the name (for more free media coverage) and give it a more appropriate name. I’m sure Apple has one picked out already.

  40. On the name of the company… there’s been litigation over the years, and Apple Computer did pay money to Apple Corps at one point in time. They won the most recent suit based on an agreement which specified how each could use the name and included Apple Computer paying millions to the Beatles.

    I believe that originally Apple agreed to stay out of music, and when they added a MIDI device settled (paying millions). In the latest suit, they won because, essentially, they’d already paid.

    In this case it’s hard to see anything wrong with Cisco’s mark (it predates the iMac, and has been used.) Cisco says it’s not about money and they’re willing to share. But there’s gotta be some reason Apple didn’t sign.

    In the end, this is a negotiation, and Apple is playing hardball. Cisco really had no choice but to file after the announcement.

    It’s also interesting to read some of Cisco’s comments. They know this will be a very popular product and don’t want to get bad PR by looking like they’re trying to stop it.

    The funny thing is, EVERYONE knows that iPhone means “iPod phone” whether Apple calls it that or not. I haven’t seen a reasonable legal argument spun on that yet.. but it’s an unusual wrinkle. Really, society has diluted Cisco’s mark… but I’m not sure if it’s dilution in a legal sense.

    (By dilution I mean when a trademark becomes a generic word in the language and thus no longer trademarkable.)

  41. It does seem odd that Apple –who has been rather belligerent in their trademark protection lately (all references to “pod” being taboo and going after poor “iBuzz”)– would make a rather dicey decision to challenge a fully registered trademark.

    Whether Apple will prevail is less than certain. Even if they win, Apple’s argument against all things “pod” or anything starting with a small “i” becomes weakened.

    I can’t help but think this is an iffy strategy.

    Cisco must be getting inundated by intellectual property lawyers faxing their resumes.

  42. Name suggestion:

    podiphone™

    “podiphone” is a trademark of the i Wiseass Corporation. All rights reserved.

    The iWiseass Corporation will license “podiphone” or “podiphile” to Apple Inc. for $.01 per unit sold.

    Serious inquiries (no actual podiphiles or pedophiles) to the above email. Contract lawyers are standing by.

  43. Cisco are holding out for as much as they can get but I’ll bet the stubborn Mr Jobs wants it.

    That said, the name is largely irrelevent as argued by Dan Eran as he dismisses all the other inane arguments against the iPhone here:

    http://www.roughlydrafted.com/RD/RDM.Tech.Q1.07/4DD0941D-9097-4FAE-A3BB-29DA5CA07199.html

    Looks to me like it’s iPod revisited from 2001. It will be the same story, soon crowned, probably never successfully copied or bettered…

    For another name I’d live with “ApplePhone”, I have several “Apple Macs”, and an “Apple iPod” and shortly no doubt an “AppleTV” too.

    “phone” is fun but impractical, and it sure doesn’t live up to a maxim of ‘easy to use’. What were the key strokes again? And what are they on a “Ex-OS XcopyVista”?

  44. Everyone is putting WAY TOO MUCH emphasis on the phone aspect of this device. It is the entirety of the “package” as a whole that makes it revolutionary, and it is the entirety of the “package” as a whole that will reflect its eventual name.

    mw; there, as in, there, I’ve had my say!

  45. Cisco have a lot of lawsuits to file.

    http://www.comwave.net/CDN/iPhone/index.htm

    http://linkstochina.com/RingChina/iPhone.html

    https://iphone.nuvio.com/html/

    http://founderna.com/iphone/

    http://www.teledex.com/index.cfm?page=LP_3&crid=13

    And I’m sure there are more out there.

    The fact that Cisco hasn’t sued any of these guys means that Apple is pretty much safe.

    Cisco can’t suddenly claim to be defending their trademark if all the above can happily produce iphones in one form or another.

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