Will Apple face trademark infringement with Creative over the iPod nano?

Well, you knew this was only a matter of time. The speculations have begun regarding whether Creative will stake a claim on the "nano" trademark, as they popped out the Zen Nano several months in advance of Apple's birthing of the iPod nano in the market (which, in the end, does seem just a tad bit cruel). As such legal mumbo jumbo goes, it's never a cut and dry case — merely because the words in the devices are identical does not an infringement case make. Apple could argue that the term "nano" is a commonly used term (much like, say, tiger) that shouldn't be afforded copyright protection. They could also appeal to the fact that "iPod" and "Zen" are the more salient terms in the product names of the respective devices than "nano." Whatever happens, you gotta know Sim Wong Hoo is stewing in his boots right now.

[Thanks, Gabe]

[everrette powell @ Dec 19th 2005 1:25AM]

written by another
and its the truth
Posted Sep 7, 2005, 5:00 PM ET by Will
Just to clarify on my previous statement...

Nano is the SI (Syst? International d'Unit? perfix for 10^(-9) or 0.000 000 001, known as a billionth in short scale and a milliardth in long scale.

In common terms, it is often used to refer to something that is very small. (For instance, what people generally refer to as nanomachines are not generally the size of a nanometre.)

Thus said... in both Creative and Apple's cases, terms such as Micro [1x10^(-6th)] and Mini arn't actually names themselves but descripters inside longer names. It isn't the Creative Nano or the Apple Nano, its the Creative ZEN MUVO NANO and the Apple IPOD NANO. Any kind of lawsuit over the use of Nano would be as stupid as lil Kim sueing lil Bow Wow for "little". And its hard to be as stupid as rap mogul lawsuits.

[Hassan @ Dec 19th 2005 1:25AM]

Out of millions of names apple choose Nano inorder to tease Creative into a legal dispute.

[Ben @ Dec 19th 2005 1:25AM]

on a kind of related note, are you Engadget guys going to get your hands on a nano and give us a hands on?
Also, a Nano would be a great contest prize...*hint*hint* ;)

And they have no basis for a lawsuit, whatsoever.

[christine @ Dec 19th 2005 1:25AM]

hello. i'm not sure if this information is correct, but it looks like apple trademarked 'nano' before creative did; so there shouldn't be a trademark infringement issue. right?

here are two screenshots:

creative:
http://img193.imageshack.us/img193/8263/picture14ph.png

apple:
http://img193.imageshack.us/img193/3982/picture21ad.png

[christine @ Dec 19th 2005 1:25AM]

p.s. i did a search for 'creative nano' and then 'ipod nano' respectively.

[hafa @ Dec 19th 2005 1:25AM]

vista this, microsoft

[Tasneem @ Dec 19th 2005 1:25AM]

I agree with #2

Apple could have easily chosen aomething else not related to their mp3 rivals. Along with the scientific theme, how about ipod pico? even ipod �? ipod milli?

I don't know whether this was all intentional but Apple is surely gonna get a bit of publicity (as if they need it(!)) concerning all this hassle with Creative.

I don't see Creative winning considering, as the article has explained, nano is a commonly used scientific measurement unit.

[Hitesh Sawlani @ Dec 19th 2005 1:25AM]

Couldn't agree more with #1

[Moonshine @ Dec 19th 2005 1:25AM]

Oh, there is a creative nano?! Didn't even notice...

[SL @ Dec 19th 2005 1:25AM]

Well, on the one hand, Apple could use the argument they used for Tiger when Tigerdirect.com filed the suit against them, and based on that case Apple should prevail.

on the other hand, didn't Apple have to settle the suit against Apple the Music Label (the one Beatles took a part of...I think). The only difference would be that Apple the Music Label case might have been under UK jurisdiction whereas this nano case would be clearly under US jurisdiction. Does anyone know how that Apple vs. Apple was settled?

[Roopesh Sheth @ Dec 19th 2005 1:25AM]

I hope Creative sues Apple's ass. Not over the name - that's not a fun lawsuit. The real fun will be over the interface. This will be the first product with navigation Apple is introducing since Creative got their patent.

I, personally, hope Apple has to stop producing their iShit devices, realizes that without their iMoney devices they have no business model, and decide to kill off their entire line of crappy products.

But that's just dreamin'.

[freshsci @ Dec 19th 2005 1:25AM]

I think apple considered micro but didnt want nano to sound better in the case of the Zen. Also nano is a big bzz word this the nanotechnology revolution going on. Ipod Planck Unit just doesnt have the name ring to it and most people dont know about femto.

[Ricardo Chavarria @ Dec 19th 2005 1:25AM]

Hey #11, take your troll-ass other place man, we are trying to discuss something seriously.

I just hope Apple and Creative don't go head-on about this. First cause Creative's Nano kinda sucks and Apple's nano is a very nice product. A fight would only proove Creative is scared...

[p-ddidy @ Dec 19th 2005 1:25AM]

>>�nano� is a commonly used term (much like, say, tiger)
>>that shouldn�t be afforded copyright protection.

Yikes. Copyright != trademark.

Here's the issue: does Creative have a trademark on "nano" or "Zen nano?" I believe, and I may be completely wrong here, that you can use a generic term as part of your mark if you give up rights in advance to that word. In other words, to get "Zen nano" as a trademark, Creative could have foregone rights to just the word "nano." As for using generic words in general, the test is "does it preclude competitors from describing their product." Example: Apple. Would giving a generic word like Apple trademark protection for computers prevent HP, Gateway, etc from describing their products? No. Therefore Apple is an "arbitrary or fanciful" word in the category of computers. You could not however trademark Apple if you were a fruit stand owner. Otherwise, anytime someone else wanted to describe that they sold apples, you would have a case for trademark infringement. So, the question is "does trademarking "nano" prevent others from describing their products in the realm of portable music players?" I personally don't think so and thus "nano" is a somewhat descriptive term that may have secondary meaning (which is the sort of in between of "generic" and "arbitrary or fanciful").

I'm not a trademark lawyer, I just play one on TV.

-p-

[REY2K7 @ Dec 19th 2005 1:25AM]

I've never seen an Zen Nano...

But I bet is not as cool as the iPod nano!

[killverine @ Dec 19th 2005 1:25AM]

in urdu nano means grandmother :P

[jorge @ Dec 19th 2005 1:25AM]

Who cares... by the time this is settled a gazillion iPod nanos will have been sold, and Apple will be rich rich rich I tell you. Its not like you can change the name after that. Any settlement money will be chump change for Apple. Sucks for Creative... but then again they generally DO suck.

[Paulo Sacramento @ Dec 19th 2005 1:25AM]

I want an iPod!

[p-ddidy @ Dec 19th 2005 1:25AM]

>>hello. i'm not sure if this information is correct,
>>but it looks like apple trademarked 'nano' before creative did; so there shouldn't
>> be a trademark infringement issue. right?

With all due respect (but hey, GREAT effort on actually doing some research before posting), those are for marks "Creative Arts Machines" and "Made for iPod," not "nano"

Interesting. But to get a trademark, you have to show use the mark in interstate commerce (or a plan to use it in interstate commerce, the plan allowing you a limited amount of tuime to get your product to market). I searched for Apple as an owner and nano as the mark and got no results. I searched for Creatiove and nano and also got nothing (but got "zen" and "zen vision" when searching for Zen).

-p-

[jorge @ Dec 19th 2005 1:25AM]

Ohh... and I love how Apple is dicking around their competitors and partners... first taking advantage of HP's weakness to their own advantage before kicking IBM in the nuts and the with the Intel switch and then laying it into Motorola and Cingular with the stillborn iTunes phone... and now this all in one fell swoop. Brilliant...ruthless. Apple is one BAAAAD company; in the good sense of the word. Its about time for Apple and Stevee Jay, especially after having taken it up the ass by so many others over the many years. Hehe.. its so fun to watch.

[Joseph T. @ Dec 19th 2005 1:25AM]

"A quick search of the USPTO database reveals that Creative has trademarks on 'Zen' (78437344) and 'Zen Vision' (78436884), but not the Zen Nano." [Macintouch.com]

[Michael @ Dec 19th 2005 1:25AM]

Naming it Nano is disrespect and bad business overall. I guarantee you fanboys would ne all over Creative if they came out with a "Zen Mini" They could easily come out with a different name that didn't already exist in the DAP world. Lawsuit or not, Apple will have to be paying Creative money for each nano that sells since Creative has the patent on Apple's menu system.

[Jesse Quijano @ Dec 19th 2005 1:25AM]

Id like to point out the additional benefit this give apple in the search engine/hotlink department. go search google for "nano" and amoung all the nanotechnology sites is the apple ipod nano official site as the third hit. all the adsense and stock market info is about apple and the nano. they have effectively erased an entire creative product of the face of search engines and the web within days.

[Anonymous @ Dec 19th 2005 1:25AM]

Any descriptive term in a products name shouldn't be copyrighted. It's like saying Apple copyrighted the use of a lowercase 'i' in front of product name. Then nothing could use it. We all have rights to descriptive terms. Let's say some company copyrighted using the letters 'a, b, c, d, e ...' in a product. That would be just plain crazy, insane, idiotic, and stupid.

[Anonymous @ Dec 19th 2005 1:25AM]

Any descriptive term in a products name shouldn't be copyrighted. It's like saying Apple copyrighted the use of a lowercase 'i' in front of product name. Then nothing could use it. We all have rights to descriptive terms. Let's say some company copyrighted using the letters 'a, b, c, d, e ...' in a product. That would be just plain crazy, insane, idiotic, and stupid.

[Kroc Camen @ Dec 19th 2005 1:25AM]

and Creative would *still* complain that the nano didn't feature a radio, recording, GPS and indecipherable menus and thus was no better than the cheapest asian knock off player.

Accept it Creative, you got 0wned.
Copy-pasting sync-hell is not how to win marketshare. No other DAP mabufacturer understands that it's the Software + Player that makes a real product.

[egloskerry @ Dec 19th 2005 1:25AM]

All you apple boys who are saying you hope creative doesn't sue apple, weren't you the same ones saying any company that uses white is obviously trying to copy apple and infringing on their copyright on the color white?

[Me! @ Dec 19th 2005 1:25AM]

I hope Creative does sue Apple. Stop being such a bunch of fanboys and rationalizing the use of the exact same name for the exact same type of product is acceptable. It's not. Look how Apple threw a shit-fit over that Korean made Super Shuffle, or whatever the hell it was. And as for it being a 'common scientific term' because it's an SI unit prefix, that doesn't matter at all. Look at all the shit that has a common word as a name. I dunno. Like maybe a Macintosh. Hell, Creative should just introduce the Creative Zen iPod just so I could watch you little bitches whine. I hope Apple sells a million iPod Nanos. That way they can pay the licensing fees, legal fees, and damages to Creative. Nothing better than free money.

[da slob @ Dec 19th 2005 1:25AM]

Apple is a fruit. Creative is an adjective. SO what? New electronic companies sure aren't going to name their company either...

Apple's marketing and R&D dept. is getting lazy... but who cares... you guys would probably buy it even if they slapped a $500 price on it

[Tetra @ Dec 19th 2005 1:25AM]

Let's take this out of the DAP market and apply the same conflict to, say, cookies. Nabisco sells a Yummy Mini single-serving pack of its popular Yummy brand of cookies. Keebler later sells a Superfudge Mini single-serving pack of its popular Superfudge brand of cookies. Now, Mini is being used a descriptor to augment a trademarked line of products.

If we apply the same logic that some people here are using, then any kind of "Mini", "Micro", "Nano" or "Giga" descriptor is up for dispute. Can you imagine the kind of clusterfcuk that would happen across industries if something like the iPod Nano and Zen Nano dispute created a precedent for this? Now, your trademark isn't safe is you use a common descriptor.

Hopefully, Creative realizes this would be a terrible idea. Then again, patenting an overly broad and obvious interface patent wasn't beyond them, so who knows?

[Will @ Dec 19th 2005 1:25AM]

Current patent law is ridiculous. Besides, the Creative Patent does not truely describe the Apple iPod OS.

http://patft.uspto.gov/netacgi/nph-Parser?u=/netahtml/srchnum.htm&Sect1=PTO1&Sect2=HITOFF&p=1&r=1&l=50&f=G&d=PALL&s1=6928433.WKU.&OS=PN/6928433&RS=PN/6928433

Not only is its touted sorting method been used by other companies on computers long before the 2001 patent date, but the iPod interface differs in very small, but significant areas. Firstly, Apple impliments a governing category outside of Creative's main catagory, changing Creative's Main Catagory into a sub catagory, making 4 display screens instead of three. The Creative patent also doesn't describe the 5th display screen, that being the song-info screen which actually displays the ID3 tags and allows, on the ipod and newer creatives (the original nomads and zens had a seperate volume wheel) volume change and, on the ipod, rating selection and inner-track seeking, none of which as described in the Creative patent. The Creative patent also covers external interface with the software, which is drastically different then the ipod in both the function of the play button. Besides, if you go the next layer down, both the Zen and the iPod are under AAD's 2000 MP3 player patent... And arguably the shells of the iPod are under the iTunes patent... and everything is under someone else's pattent...

Thats the problem. Patents can be ridiculously inclusive to the point as to cover common sense. There are only so many ways for sensible organization. Should I patent organizing cd's by Artist-->Release Date descending before someone else does? At what point do we stop giving people rights over things that arn't really inventions? What happened to the marketplace deciding who does what better? Personally, I find the Zen interface to be amazingly cluttered compared to the iPod interface. Their general purpose "submenu" button just serves to add confusion. Its not like their organization was a new idea. It's been patented at different levels on computer systems for over a decade. They just applied it to a different medium.

Going back to Nano...

As I said before, Nano is merely a scientific term and a descripter within the title. It isn't the Creative NANO vs the Apple NANO, its the Creative ZEN MUVO NANO and the Apple IPOD NANO. Furthermore, since the electrical engineering field generally uses SI measurements, nano is an industry term, not a trademarkable oddity. When Apple releases the Apple Zen, then we'll talk trademark infringement.

[Will @ Dec 19th 2005 1:25AM]

Current patent law is ridiculous. Besides, the Creative Patent does not truely describe the Apple iPod OS.

http://patft.uspto.gov/netacgi/nph-Parser?u=/netahtml/srchnum.htm&Sect1=PTO1&Sect2=HITOFF&p=1&r=1&l=50&f=G&d=PALL&s1=6928433.WKU.&OS=PN/6928433&RS=PN/6928433

Not only is its touted sorting method been used by other companies on computers long before the 2001 patent date, but the iPod interface differs in very small, but significant areas. Firstly, Apple impliments a governing category outside of Creative's main catagory, changing Creative's Main Catagory into a sub catagory, making 4 display screens instead of three. The Creative patent also doesn't describe the 5th display screen, that being the song-info screen which actually displays the ID3 tags and allows, on the ipod and newer creatives (the original nomads and zens had a seperate volume wheel) volume change and, on the ipod, rating selection and inner-track seeking, none of which as described in the Creative patent. The Creative patent also covers external interface with the software, which is drastically different then the ipod in both the function of the play button. Besides, if you go the next layer down, both the Zen and the iPod are under AAD's 2000 MP3 player patent... And arguably the shells of the iPod are under the iTunes patent... and everything is under someone else's pattent...

Thats the problem. Patents can be ridiculously inclusive to the point as to cover common sense. There are only so many ways for sensible organization. Should I patent organizing cd's by Artist-->Release Date descending before someone else does? At what point do we stop giving people rights over things that arn't really inventions? What happened to the marketplace deciding who does what better? Personally, I find the Zen interface to be amazingly cluttered compared to the iPod interface. Their general purpose "submenu" button just serves to add confusion. Its not like their organization was a new idea. It's been patented at different levels on computer systems for over a decade. They just applied it to a different medium.

Going back to Nano...

As I said before, Nano is merely a scientific term and a descripter within the title. It isn't the Creative NANO vs the Apple NANO, its the Creative ZEN MUVO NANO and the Apple IPOD NANO. Furthermore, since the electrical engineering field generally uses SI measurements, nano is an industry term, not a trademarkable oddity. When Apple releases the Apple Zen, then we'll talk trademark infringement.

[Mike @ Dec 19th 2005 1:25AM]

Apple wouldn't have used that name without clearing it with their army of lawyers first.. you can bank on that.

I'm also betting that it's a bit of an "Up Yours" from Steve to Sim due to Creative getting the patent for the interface that has been the staple of both Creative and Apple's DAP's for years.

[Jeff @ Dec 19th 2005 1:25AM]

"As I said before, Nano is merely a scientific term and a descripter within the title."

That doesn't mean you can't trademark the wordmark Nano. In fact, do a search for Nano on the USPTO trademark page - several companies do own a wordmark on this word for specific uses. That's the thing about trademarks - they cover SPECIFIC uses, and logos. That's why you can trademark common words like this - you have to be very specific about your uses, and you have to define how it's going to look, so that other people can continue to use it in other cases.

(The two specific examples I found for trademarks of the word Nano alone - and I didn't go through the entire list - was for golf clubs and some sort of medical supply thing.)

From what I could find, neither Creative *nor* Apple own any sort of trademark on Nano, either alone or as part of the product name. (I doubt Apple has trademarked the words "shuffle" or "mini" either.) This is pretty common - "nano" is not the name of the product, "iPod" is the name of the product (and "Zen" is the name of Creative's product). "Nano" is a descriptor. You don't need to trademark nano because a) you'd have to then defend that trademark, which would be costly, and b) it doesn't matter because you've trademarked "iPod", meaning nobody could come out with a product called "iPod nano" whether or not you trademarked "nano" or the more specific "iPod nano".

So it seems to me there is no issue here, and we're all just talking about nothing. Neither company appears to hold any trademark on this word.

[bufu @ Dec 19th 2005 1:25AM]

i knew this would happen and Creative should definitly sue apples ass into the ground, its pretty obvious apples been asking for it for a long time. seems to me like apples trying to pull sales off the Zen Nano, I think its worth the fight.

[Anon @ Dec 19th 2005 1:25AM]

Creative should sue Apple for the menu and the name. Apple deserves it, what with their crappy players that haven't changed since the first ipod. Either way, Apple has to pay Creative for each nano sold, so they lose money period. As for the people who think that the nano is so great, it isn't. It's a bit smaller, and it can display photos. It can't even hold more than 4 gigs, and even then it's $149. What a -.

[everrette powell @ Dec 19th 2005 1:25AM]

# 11 seriousely stop the hate obviouly u can't affored the so call crap so now u hating on those that could

[Jada @ Dec 19th 2005 1:25AM]

#35, you should stop drinking the Haterade and accept the fact that Apple is the king of digital music players

[Elliott @ Dec 19th 2005 1:25AM]

"seems to me like apples trying to pull sales off the Zen Nano, I think its worth the fight. "

#34 ; are you serious ? pull sales OFF Zen nano ?

Anyway, guess this makes me an apple-fanboy...and why not ?

[Ash @ Dec 19th 2005 1:25AM]

If the term NANO is deemed descriptive of portable audio players, it still can obtain trademark protection if the first user can establish that the term has acquired distinctiveness as a trademark. If the term is generic for portable audio players (which is unlikely here) then it cannot obtain trademark protection. Even if Creative hasn't registered the mark yet, Creative would still have superior rights in the term (if they can show that it operates as a trademark) if they can prove that they have used it in commerce first. Technically there is no need for them to have _registered_ it first, though it certainly helps. If the term is determined to be suggestive, not descriptive, then there is no need for Creative to prove the term has acquired distinctiveness.

Keep in mind that the registerability of a term as a trademark cannot be viewing in a vacuum, but must be determined in the context of the goods or services that it is being registered in connection with.

On a side note, Creative has yet to obtain a successful registration of ZEN because of possible confusion with at least one other registered mark.

IIAL

[Tetra @ Dec 19th 2005 1:25AM]

"Either way, Apple has to pay Creative for each nano sold, so they lose money period."

You better forward this to Wall Street.

"Didja hear what this kid said in the Engadget comments? SELL! SELL! SELL!"

[stingraze @ Dec 19th 2005 1:25AM]

I think nano is just a name that's popular now because of the so called "nanotechnology" and so on.

PLUS nano is a SI unit like #1 says.

[Decee @ Dec 19th 2005 1:25AM]

Most people who posted here are just fagotting either of the companies, which is not ACTUALLY what this blog is about right? Patenting the word nano? A word from the SI system? So now it can't be used as a product name, so if instead of "iPod nano - 1,000 Songs, incredibly small" it woulda said "iPod incredibly small - 1,000 Songs and yet nano" The second one would have been legal? Bullshit. I seldom use profanity, but this deserves it. You can't just patent some word. It would have been possible for Creative to patent "Muvo Nano" (or whatever it is). But seeing as most of the people here said they didn't, apparently; they didn't. I couldn't aggree more with #33, Mike. OF COURSE APPLE WHENT THROUGH THIS 100+1 TIMES TO SEE IF ITS LEGAL. Apples marketing is great, they THINK about stuff like that, they wouldn't be stupid enough to mess up with this small of a mistake. But like I said, they didn't REALLY have to, but they definetly HAVE. Apple's not stupid.

In Fact, their marketing is SO good I'm gonna order one o' these in the next 40-50 secnods.

Sleep With The Fish, brainless entries,
Decee

[jbrez @ Dec 19th 2005 1:25AM]

What kills me is all the people here who can't accept that Apple's products are, in fact, better than their competition's. The people who say that everything in Creative's line is better than the iPod is incredibly blind. The user interface on the iPod is better than anything that Creative has ever designed, period.

Creative, where it could be actually trying to innovate something, has decided instead to attempt to get money through litigation. This seems to be the modus operandi of several tech companies nowadays, it seems.

Oh, and for everyone saying that Apple is going to have to pay Creative for every iPod sold, don't bet on it. Apple will fight Creative's undeserved patent to the ends of the earth before that happens.

[Will @ Dec 19th 2005 1:25AM]

#36:

Whats the big deal with the nano? BTW, the price is #249, not $149... might want to get the facts that support your point right...

Anyway... the big deal with the nano IS that it is a little smaller. Frankly I don't care about the color screen, though the higher resolution is nice. The iPod Nano is a portable media player, emphasis on portable. This really gets Apple into the exercise market as, until now, avid MP3-for-exercise users have been turned away from Apple because of the subpar Shuffle. Now, with a flash player of VERY high capacity (Korean companies are mad at Samsung for providing their new 2-4 gig flash memory to Apple for the unmatchable price they did) and VERY low weight, they've made the iPod a viable workout option. I've tried jogging with my 20 and my 60photo... it doesn't work well. Even my iRiver flash player is slightly bulky (though I love iRiver's work)once you really get moving. To be able to have 4 gigs of selection with only 1.4oz of added weight is a godsend. This is also going to sell big in the hiking community. I know people who spend hundreds of dollars to save an ounce of weight on an iceaxe. This market has had trouble justifying 5.6-6.4oz in the past, either going for low capacity flash players or going without. However, 1.4oz is a lot easier to justify.

So the deal *is* that its "a bit smaller".

[Marian @ Dec 19th 2005 1:25AM]

There is one simple fact that proves that iPod is better than any Creative crap: how many units were sold.

The volume of sales for a product doesn't reflect the quality [+ marketing] of that product only in one situation: network effect. But network effect doesn't apply to DAPs.

Therefore any stupid coment that Apple deserves to be kicked in the butt or something similar denotes only hate. And who hates iPod most? Those that want one and don't have one.

[MS @ Dec 19th 2005 1:25AM]

It is an infringement because they are both MP3 players. There is no implied confusion between Tiger OS and TigerDirect electronics sales, so that is a bad example.

Apple will lose this fight, I'd put a big stack of cash on it if anyone is willing to put their money where their mouth is.

[Ash @ Dec 19th 2005 1:25AM]

Decee,

You are absolutely correct in stating that you can't just _patent_ some word. However you certainly can _trademark_ some word. It's done all the time.

Also, Apple has got in trouble with using another trademark even with their legal department apparently looking at the issue. Remember when they changed Rendezvous to Bonjour?

[MS @ Dec 19th 2005 1:25AM]

>>And who hates iPod most? Those that want one and don't have one.

Actually, I disagree, I can think of other people:

Those who had a Diamond Rio 7 years ago and resent people saying iPod is "the latest thing" or the first MP3 player.

Those who have an Archos PMA430 that does everything the iPod does and more, including recording video, and having to listen to everyone talk about how great the iPod is.

Those who think a white box with a circle on it does not constitute beautiful design or should be called "sexy".

Those who like to *record* high quality audio.

Those that think Mac users are idiots rivaled in rhetoric only be the liberal leaders they worship.

[andrew @ Dec 19th 2005 1:25AM]

#50, you said what i was thinking.
- the owner of 5 mp3 players, one of them the true original (rio pmp300) and none of them the iPoser.