“An investigation into the ongoing trademark dispute between Cisco and Apple over the name “iPhone” appears to show that Cisco does not own the mark as claimed in their recent lawsuit. This is based on publicly available information from the US Patent and Trademark office, as well as public reviews of Cisco products over the past year. The trademark was apparently abandoned in late 2005/early 2006 because Cisco was not using it,” Ed Burnette blogs for ZDNet.
“If Apple can prove in federal court that the Declaration of Use contained misstatements of fact, i.e. that there was no continuous use, then Cisco’s registration can be canceled. This could clear the way for the next company in line for the iPhone trademark, Ocean Telecom Services LLC (widely regarded as a front company for Apple). It could also explain why Apple decided not to sign the agreement Cisco proposed,” Burnette blogs.
Jay Behmke, a partner at CMPR who specializes in trademark law, and Tom Keeting, CTO of TMC Labs, explain more in Burnette’s full article here.
“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… I also see that Apple filed in Australia using the same Ocean Telecom Services,” Tom Keating blogs for TMCnet.
Full article here.
Related articles:
Surprise, surprise, surprise: Cisco demos Apple TV-like device – January 12, 2007
Analysts: Cisco ‘iPhone’ trademark suit likely to have little impact on Apple, to be quickly settled – January 12, 2007
iPhone more than a trademark for Apple CEO Steve Jobs – January 11, 2007
Jim Cramer: Why Cisco really sued Apple – January 11, 2007
Cisco General Counsel explains ‘iPhone’ lawsuit; Cicso wanted interoperability with Apple iPhone – January 11, 2007
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
iEff’dup.
Let the truth be told.
This conspiracy runs very deep.
Ocean Telecom Services is an anagram for:
“Coerce men so. C’est-la-vie!”
I knew the French were somehow involved.
Ouch! That is one clever move that Apple did not sign and kept his mouth shut. As they say: “We shall prevail”.
See, told you so.
No wonder you stuck to your guns, Apple.
I apologize for -thinking- that this might have been a horrible move, Steve. I won’t doubt you again.
Sounds like Cisco’s case is tenuous at best. Sounds too that they had their own vision of what a phone should include – Cisco’s VOIP products compete with traditional cellular service provided by vendors like Cingular – but that would’ve nixed an agreement with a “regular” carrier like Cingular. The Cisco Kid’s plan was flawed.
Looks like Apple is outsmarting everybody on the marketing front again.
They’ve (as Cisco claims) been negotiating about use of the iPhone trademark, but looking at all the news, I am pretty sure that from the very beginning, Apple knew that it was a non-issue.
To keep their iPhone out of the media and keep Cisco from filing a lawsuit, they’ve been playing nice guy by saying yes, need some more details ironed out, yes etc.
It also protected Apple against negative media building up before even launching the product, while now, after unveiling the product, they are stealing the show in every single way you look at it and leaving Cisco look like a dumb schoolboy tricked out of his lunch money.
There are only two words for this: Wow….brilliant…..
If you look carefully at the photo, the label on the phone is Linksys and not iPhone.
Luc:
“leaving Cisco look like a dumb schoolboy tricked out of his lunch money.”
Brilliant line, simply… brilliant.
They are doing the same thing to Microsoft, only Microsoft doesn’t know it yet..
lol
I doubt very much that Apple would have got into this without knowing what it is doing.
Confucius say, “Use it or lose it.”
There’s a good chance Apple has the iPhone trademark in Europe, from Outlaw via The Register ( http://www.theregister.co.uk/2007/01/12/cisco_apple_iphone_trademark_spat/ )
If CMS filed its revocation application before Cisco launched its product, meaning earlier that day, then Cisco will lose the trade mark rights.
Apple has the oldest application for the mark so would almost certainly then own the trade mark in Europe.
But even if it is found that Cisco launched its product earlier on 18th December than CMS launched its revocation application it could still lose the rights. In that case a special rule comes into play which is designed to stop companies launching products simply to protect their trade marks.
Lots more in the article.
It seems to me that Apple has pretty much tried to do the decent thing throughout whilst Cisco has tried to extort. Judging by Cisco’s profit margins it looks like they do that anyways, they’re not far behind Microsoft’s.
Sounds like Cisco are going to lose rights to iPhone trademark in Europe too
http://www.theregister.co.uk/2007/01/12/cisco_apple_iphone_trademark_spat/
Again due to non-use.
I think Apple is right about this, but never underestimate the capacity of the legal/judicial system to come up with an insane decision.
But there is another question to be answered. Is using the “iPhone” trademark the best strategy? Perhaps not. Would it not be better to use the trademark “ApplePhone” just as Apple changed “iTV” to “AppleTV”. After all, Cisco is also trying to compete directly with the AppleTV. Using a similar family of trademarks approach provides some synergy. Apple should make the switch after it goes to court trying to get an abandonment ruling in order to screw Cisco, warn others about playing submarine trademark lawsuit games and to sully the “iPhone” name as a trademark.
And under no circumstances should Apple give Cisco any access or licenses for its patents. They are competitors, not partners. Screw Cisco.
Wow… what a turn of facts/spin.
Cisco left out that little detail about not using the mark continuously. Worse, it does appear that they lied: putting a sticker on a box to demonstrate “continuous” use.
This is gonna be a fun one for the law school case writers.
Unfortunately, it’s not so clear that this can be settled. I’m sure Apple would be willing to pay serious money to have clear use of the mark, but Cisco is bigger and much more profitable than Apple is… any reasonable valuation wouldn’t even be pocket change to them. No, what they wanted was to crash Apple’s iParty… And let’s be honest… we’re talking massive corporate egos here.
Furthermore, now that it’s evident that Cisco merely revived the name to cash in on the “iPhone” rumors (and it sure got them a lot of publicity), Apple really should be fighting THAT.
At first I thought Apple was just being arrogant as hell (a la Microsoft) but the statement “tenuous at best” about Cisco’s mark now rings true.
Seems like this could be a landmark case. But iPhone is a vital product to Apple, not Cisco, so can Apple wait to see this through?
And personally, I’m with Jobs and not with other commenters. “ApplePhone” just doesn’t ring off the tongue like iPhone. The public wants to call this iPhone, it long before it was announced, and I’m with them.
Also, while Cisco is getting some publicity… am I the only one who notices how 20th century their product looks… how NOT an iPhone it looks… and it can’t be good for their goal of being “the future”, a seamlessly networked world to look like a 20th century phone company, and less advanced than a silly 20th century PC company. My gawd, their phone has the look of a TRS80 (competitor to the Apple II for those of you not yet born), and… BUTTONS! Like the Shatner Enterprise vs. the Picard Enterprise (whichever show you prefer, it’s clear their technologies are a century apart).
Seriously, someone who knows something about marketing should point out to Cisco that seeing the two products side by side does not help their brand!
MW: else
As in, Apple says “I think we’ll take the ‘or else'”.
Don’t forget this (from the whois database):
Registrant:
Domains by Proxy, Inc.
DomainsByProxy.com
15111 N. Hayden Rd., Ste 160, PMB 353
Scottsdale, Arizona 85260
United States
Registered through: GoDaddy.com, Inc. (http://www.godaddy.com)
Domain Name: IPHONE.COM
Created on: 24-Aug-95
Expires on: 22-Aug-08
Last Updated on: 16-Jul-06
Hm…
I dunno… is the iPhone name cool enough to bother fighting over? Even if Cisco’s completely wrong you know their lawyers are gonna twist the language into their favor.
Apple needs something distinct and completely unique, like they did with iPod. Apple could pay a branding team very nicely for what it’ll cost to secure the iPhone name.
I think the reason apple is calling it the iphone is because people have always called it that and it makes sense to use the name taht people are familiar with. Since that is going to be what people are going to be calling it and asking for it in stores, online etc.
after all, tt’s not easy to stop using a familiar name – my brother 12 years ago decided as someone almost 30 he wanted to be called Ken and not kenny. Well, people do call him Ken – except the ones who knew him before the name change.
Hi, R2. How’s it hanging?
Oceans 11.
Ok. This makes sense. Apple is calling it the iPhone to force the issue with Cisco (whom they do not believe own the tm at this point)
If they can invalidate the claim of Cisco without claiming iPhone is a generic name that any company could use–
They will become the defacto owner of the mark through their shell company). Not just getting to use the name but also preventing anybody else from using it.
I’m not sure why they didn’t make this claim publicly sooner. The only thing I can think of is that Apple wanted it a secret before the launch so they kept Cisco close enough to keep their secret and waited for the inevitable discovery to occur. This way Cisco thinks Apple is unaware of the situation and they only ask for some Apple love and they get Apple f****d instead.
It would make a great scene in a movie if it weren’t so inconsequentially insignificant.
One more thing…
Apple is on the record as decrying Cisco’s claim as silly because there are any number of iPhones out there. Maybe a charge of non-defense is forthcoming?
Anyone noticed that Apple’s iPhone page has now been changed from just iPhone to (Apple logo) iPhone?
I’m pretty sure it had been just iPhone on tuesday…!
@ ccap1
See my post earlier today….
Luc
—————–
Looks like Apple is outsmarting everybody on the marketing front again.
They’ve (as Cisco claims) been negotiating about use of the iPhone trademark, but looking at all the news, I am pretty sure that from the very beginning, Apple knew that it was a non-issue.
To keep their iPhone out of the media and keep Cisco from filing a lawsuit, they’ve been playing nice guy by saying yes, need some more details ironed out, yes etc.
It also protected Apple against negative media building up before even launching the product, while now, after unveiling the product, they are stealing the show in every single way you look at it and leaving Cisco look like a dumb schoolboy tricked out of his lunch money.
There are only two words for this: Wow….brilliant…..
Apple is outsmarting everyone but The Register. We’ve got its number. And it’s zero.