Commentary from Mark Chandler, Cisco’s SVP and General Counsel, on Apple’s infringement of Cisco’s iPhone trademark:
Today’s announcement from Cisco regarding our suit with Apple over our iPhone trademark has spurred a lot of interesting questions. Most importantly, this is not a suit against Apple’s innovation, their modern design, or their cool phone. It is not a suit about money or royalties. This is a suit about trademark infringement.
Cisco owns the iPhone trademark. We have since 2000, when we bought a company called Infogear Technology, which had developed a product that combined web access and telephone. Infogear’s registrations for the mark date to 1996, before iMacs and iPods were even glimmers in Apple’s eye. We shipped and/or supported that iPhone product for years. We have been shipping new, updated iPhone products since last spring, and had a formal launch late last year. Apple knows this; they approached us about the iPhone trademark as far back as 2001, and have approached us several times over the past year.
For the last few weeks, we have been in serious discussions with Apple over how the two companies could work together and share the iPhone trademark. We genuinely believed that we were going to be able to reach an agreement and Apple’s communications with us suggested they supported that goal. We negotiated in good faith with every intention to reach a reasonable agreement with Apple by which we would share the iPhone brand.
So, I was surprised and disappointed when Apple decided to go ahead and announce their new product with our trademarked name without reaching an agreement. It was essentially the equivalent of “we’re too busy.” Despite being very close to an agreement, we had no substantive communication from Apple after 8pm Monday, including after their launch, when we made clear we expected closure. What were the issues at the table that kept us from an agreement? Was it money? No. Was it a royalty on every Apple phone? No. Was it an exchange for Cisco products or services? No.
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.
At MacWorld, 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.
This lawsuit is about Cisco’s obligation to protect its trademark in the face of a willful violation. Our goal was collaboration. The action we have taken today is about not using people’s property without permission.
Cisco’s Press Release on this issue is here: http://newsroom.cisco.com/dlls/2007/corp_011007.html
So Cisco tried to leverage their way into a Very Good Thing™ and got spurned. That’s their side of the story, at least. If so, Cisco is having a silly hissy fit in public. Whatever.
Related articles:
Apple calls Cisco’s ‘iPhone’ trademark lawsuit ‘silly,’ says ‘very confident we’ll prevail’ – January 11, 2007
Cisco sues Apple for ‘iPhone’ trademark infringement – January 10, 2007
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
Either Apple’s lawyers have found a previous trademark infringement case that supports their position, or they are just going to use “iphone” until June. Everyone is going to call it that anyway. No biggy if they change it to “Apple Phone” at the last minute.
But, it doesn’t paint a good light on Apple’s image. This is something I’d expect out of Ballmer’s office.
I hope Apple changes the name of their phone to “iCisco”.
“MDN is one-sided” – OF COURSE IT IS!!! It’s called MACDailyNews for cryin’ out loud!! Go to another site if you don’t want to be bothered by bias. We love our Apple products here. You want fair and balanced, go watch Fox News, erm, wait, bad example…
I posted it at Business Week, so I’ll post it here too ..
My suspicion is that the whole thing is a ruse. Apple will lose the lawsuit (intentionally) and accept a mandated compatibility with Netgear’s Skype phone as the penalty. This is how the iPhone will acquire Skype compatibility without chasing off Cingular.
* or Linksys or who-ever-the-heck it is that has that Cisco Skype phone.
It’s an intuitive phone…call it “eyePhone”.
No, wait…the “SysGo”!
Think you’re smart? <karate chopping at the screen> What’cha you gonna do now Cisco?!
@ gwm
I think you nailed it.
I love the suggestion that the phone go retro and be called ‘AppleTalk’, just like when the Apple II program name ‘AppleWorks’ was resurrected to replace ClarisWorks.
No MDN, it was pretty arrogant of Apple (Steve Jobs) to use the iPhone name without permission when someone else owned that trademark and had for quite some time.
At the very least, they could have said that iPhone is currently a code name and the actual name will be confirmed at launch, when this naming dispute would have been settled one way or the other.
Didn’t Apple hire the chief counsel from IBM a few monthh’s ago? I believe they were positioning themselves for addressing legal issues such as this one as well as options backdating and other pending patent litigations.
“MyPhone” would do the trick on several levels….
>Or, they should call it what it really is, badassPhone.
…OK how ’bout BlingRing?
This seemed to me to be a rather straight-foward matter of Cisco being in the right. But then I read the link in an earlier post regarding the technical aspects of trademark law and am now thinking that Apple may win this battle. The fact that Cisco failed to enforce trademark priveleges against other iPhones would seem to suggest that they have allowed the word to fall into generic usage. More importantly, however, is the question of whether or not simply adding the letter “i” to the generic descriptive “phone” consitues a trademark in the light of the fact that the device actually is a phone. I’m no lawyer, but it seems to me that this is substantially different than, say, “iPod” of ‘iMac”. The term “Pod” in no way describes the function of an MP3 player while the word “Mac” is itself a trademarked moniker. On the other hand, the case of the iTV name change was necessitated because Apple’s product is not actually a TV.
Aside from this, I think in court Apple could haul out a ton of pre-announcement articles and web pages in which the term “iPhone” was used in specific reference to an Apple product. It could be very farily argued that public usage had already caused the term to fail to live up to the function of a trademark, namely “a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another.”
As others have noted, I’m sure that Apple’s legions of lawyers have already covered this ground thoroughly and are confident of their position.
<still karate chopping>
Cisco only holds the iPhone trademark in the US. Apple actually holds several iPhone trademarks internationally. Cisco has not enforced their trademark in the US until now, and then only against Apple, who has yet to use it on a shipping product.
Apple is correct: Cisco’s trademark is tenuous at best.
It’s a brilliantly written press release by Cisco. But, here’s the thing . . . .
It is extraordinarily unlikely that Cisco was willing to see Apple use the name iPhone, with no form of compensation, if only Apple had just been willing to return their calls and otherwise build up Cisco’s self-esteem.
It is far more likely that Cisco was willing to see Apple use the name iPhone, with no form of compensation, because Cisco was and is profoundly uncertain about whether or not its trademark claim will hold up under litigation. Which makes it likely that at the end of all this Apple will have prevailed.
As Apple said on the eve of the (unsuccessful) suit against it by Apple Corps (paraphrasing): the two parties disagree, and now they’re going to have to ask a court to resolve their differences. And the very tentative nature of the claims that Cisco seems to have been making makes me doubt they’re going to end up with the exclusive rights to this name.