iPhone: does Cisco miss out due to prior art?

Apple's argument that Cisco's claim to the name iPhone is "silly" is about to get a whole lot more cogent. Although they hold the trademark, it's still seemingly debatable whether Cisco has rights to the name. Eagle-eyed reader mrsalty points out the fact that Cisco's patent filings for the "Internet telephone" (and at least two others) reference the iphone name and attribute it to the Cidco (a company now owned by Earthlink); the fact that the filing reads with the following language is even less encouraging. "Also known [to Cisco at the time of filing the patent] is a dedicated 'Web phone,' such as the iphone, manufactured by Cidco..." Yikes. It's difficult to tell whether this iphone predates Cisco's acquisition of the patent holdings originally filed by Infogear in 1997, but prior art is prior art, and they admitted as much right in their own patent filing. What's more, the The Internet Phone Company has owned and operated iphone.com since 1995, and we don't see Cisco suing them, either. So basically we really hope this whole thing will be quick and painless since we don't think anyone really wants another RIM vs NTP saga on their hands. Things will get very interesting, however, if it works out such that the iPhone name is released to the commons and everyone and their mother can make an iPhone. (Sony Ericsson aiPhone or Motorola IFON, anyone?) Our advice to the people Behind the Human Network: focus on that human network of yours and let the iPhone go, kid.

Update: As some readers have pointed out, yes, a trademark is different from a patent. Our intention is to address Cisco's irregular legal activity that favors other companies using the name iphone, but not Apple. Does Cisco hold the trademark? Yes, it would appear that way. Will Cisco's lack of protection of this trademark hold up in court? We'll have to wait and see, but something tells us Stevie J. wouldn't have gotten up on stage with "iPhone" if he wasn't damned sure they'd be able to use and keep this name.

[kuhndog @ Jan 12th 2007 12:12PM]

beginning to think their agreement was to argue about this until the iphone release.. keep it fresh in everyones mind and blogging about the event..and allowing cisco's iphone product to ride the wave of attention.. apple is the king of marketing.. don't forget

[rj @ Jan 12th 2007 12:20PM]

g@d almighty! just rename the thing to ApplePhone and be done with it already!!

[TriZz @ Jan 12th 2007 3:12PM]

It will never be the "applePhone". Never. Even if they brand it as the "applePhone", it will never be called that.

...kinda like here in DC, we have an airport called Reagan National Airport. It used to be called Washington National Airport, but they changed the name a few years back. It has never been called (by anyone locally) Reagan National...because it will alway be Washington National in our hearts.

Same with the iPhone.

[jimimac @ Jan 12th 2007 9:25PM]

I would vote for MacPhone

[apple/bmw enthusiast @ Feb 2nd 2007 2:06PM]

I don't think that if Apple were to just rename to Apple phone that this would solve the problem. Apple has been using the "i-line" for a long time.(They basically own the trademark:iMac,iPod,iTV,ect.,ect.)
I think that Cisco should back out and admit defeat.

[joshua conti @ Jan 12th 2007 12:21PM]

yay for everyone! as im actually about to file a class action law suit against all three companies for infringing on my invention named the iPhone: its the first cell phone designed for spacewalks and it uses an eye scan device to decipher what the user is going to think and translates that input into spoken word. i originally was going to call it the eyePhone but alot of my friends thought it looked gay- so i shortened it to iPhone. now, thanks to steve jobs, an internet site and cisco- im screwed.

[Rob @ Jan 12th 2007 12:26PM]

Lin is absolutely right.

Next thing you know, Steve Jobs will get into a car accident with a Cisco employee and people will argue Apple has the right to use the "iPhone" name because the Cisco dude negligently ran a red light!!!

;)

[joshua conti @ Jan 12th 2007 12:24PM]

exactly! why be so wierd and cryptic by using the apple tv monniker and then go and use iPhone? if anything call it the applePhone and keep using the apple thing- steve went a long way to correct himself on calling it the iTV during his keynote that i thought he'd have a hernia- it seemed so akward of him to use that name but heck if youre going to use it why not use apple phone?

[bbydon @ Jan 12th 2007 1:02PM]

yeah just rename the stupid thing. ( stupid in reference to the situation)
macphone
iphod
appletalk
italk
god anything.....iphone isnt that great anyway. imac good name , ipod good name, ilife good name. iphone :/

[J.Ho @ Jan 12th 2007 1:15PM]

AppleTalk has already been used. Maybe Apple can call their new phone AppleTalk since AppleTalk is a dead technology anyway.

[barrett @ Jan 15th 2007 6:17PM]

i personally am so sick of all this stupid "i" stuff. i would rather the apple phone be called something not so contrived and monotonous. i hope apple loses the name...

anything but iphone please...i already call my "ipod" my "bitch" instead. "honey have you seen my bitch?"

besides i see myself saying "i cant wait to get an apple phone" not "i can't wait to get an iphone"

drop the "i" apple, it's getting old

[glacia @ Jan 12th 2007 12:43PM]

2 points

1. Isn't it the name they are fighting about and NOT patents? And the name is trademarked.

2. You do not lose a trademark for prior art or for not 'defending' it. You only lose it if the name becomes common usage. Xerox being the most notable case. This is why Google is fight the usage of Google as a verb so that they don't lose their mark.

Sorry the assumptions are good fanboyism but off the mark legally.

[TheFinite @ Jan 12th 2007 12:50PM]

You *can* lose a trademark for not defending it, which appears to also be a problem for Cisco since others have been using the iPhone name without Cisco doing anything about it. (But you are right that all of this patent analysis is totally irrelevant.)

[CharlieX @ Jan 12th 2007 12:43PM]

Frankly, I'm barfing tired of all the iProduct names. iHateIt.

[tf @ Jan 12th 2007 12:46PM]

I wouldn't call at least 5 other products using the same name or similar names de minimus use though... as it relates to defense of trademark.

[Dave @ Jan 12th 2007 12:45PM]

So can Microsoft or Sony brand a phone as the iPhone as well? Trademarks either matter, or they don't. You can't just pick and choose enforcement of the trademarks that suit your favorite manufacturer.

[tf @ Jan 12th 2007 12:46PM]

glacia, now you are confusing trademark and patent. You do lose trademarks for not defending them, not patents.

[Jeff Lewis @ Jan 12th 2007 11:30PM]

"btw, like he said, you can have rights to a mark, but if someone was using it in a locality (even in the same line of business), then you keep the rights you have, but they get to keep the right to use that mark in that locality, even spread its use within some limits."

Not true. Trademarks are not 'natural ownership' items. You don't acquire a trademark just by having a distinct identity or logo - it has to be registered. It IS, however, possible to have trademark that's registered in a local domain. That happened up here in Canada because the name "Burger King" was a registered trademark in Alberta and when the US Burger King chain moved into Canada, they found that they could register trademarks everywhere BUT in Alberta.

That being said, there is no such a concept as 'prior art' for trademarks. Whomever registers first (and defends their trademark adequtely) wins. It's just that simple.

[jason @ Jan 12th 2007 1:07PM]

what "others" are using the iphone name? you mean the blogosphere? do you mean the companies that have developed a phone called iphone they never took to market? i don't think that counts. i can develop a product called an ipod, i just can't take it to market with that name.

and cisco is defending their trademark. they are suing apple.

[J.Ho @ Jan 12th 2007 1:11PM]

The other firms are using the iPhone with Cisco's blessings. There are agreements in place. Apple chose to go on without an agreement. Apple will get sued and it will it settled since they have no leg to stand on in court.

[andy @ Jan 12th 2007 12:51PM]

RE: UPDATE


That's a joke right?

I posted the federal registration yesterday in the other article.

go to: www.uspto.gov
Link: trademarks
link: basic search
type in "iphone" and press enter


Word Mark IPHONE
Goods and Services IC 009. US 021 023 026 036 038. G & S: computer hardware and software for providing integrated telephone communication with computerized global information networks. FIRST USE: 19970606. FIRST USE IN COMMERCE: 19970606
Mark Drawing Code (1) TYPED DRAWING
Design Search Code
Serial Number 75076573
Filing Date March 20, 1996
Current Filing Basis 1A
Original Filing Basis 1B
Published for Opposition December 29, 1998
Registration Number 2293011
Registration Date November 16, 1999
Owner (REGISTRANT) INFOGEAR TECHNOLOGY CORPORATION CORPORATION CALIFORNIA 1775 WOODSIDE ROAD REDWOOD CITY CALIFORNIA 94061
(LAST LISTED OWNER) CISCO TECNOLOGY, INC. CORPORATION CALIFORNIA 170 WEST TASMAN SAN JOSE CALIFORNIA 95134
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record KAREN MARIE KITTERMAN
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 8 (6-YR).
Live/Dead Indicator LIVE

[steve @ Jan 12th 2007 12:55PM]

Give the engadget guys a break. Sure they messed up their terminology, but the "prior art" argument isn't a complete loser. A court could find that iPhone has been used so often to describe a multitude of internet telephony products that it has been the subject of "genericide" and become public domain - a la thermos, aspirin, murphy bed, shredded wheat etc. The usage probably hasn't been widespread enough, but it may be enough of an argument to get Apple past summary judgment - and that would proably mean a de facto win for Apple as settlement would likely follow.

[Matthew @ Jan 12th 2007 1:00PM]

"prior art"
"You keep using that word. I do not think it means what you think it means."

Prior art is a patent doctrine. Whereas the trademark issues and respective rights of the parties in this case will be a complicated matter, it only makes it worse to conflate patent and trademark doctrines.

A few things come to mind in light of this post.
--Trademarks, even unregistered common law trademarks, are freely transferrable if done correctly.
--Multiple companies can acquire limited rights in the same mark.
--Trademark rights are acquired by virtue of actual use in commerce. That some filing in the patent office might reference the term iPhone in itself would have no real bearing on the validity of the mark (i.e., there is no "prior art" issue in the same way you would think about for a patent). Of course a prior use by others might prevent registration or validity of the mark; but it is not so simple as to say, because another company used the mark, Apple is free to do so also.

I have no idea who will win this based upon what little we know now, but I doubt it will be a simple answer. Nothing yet makes me think that Cisco's trademark would not still cause Apple a lot of trouble.

[Tim Marman @ Jan 12th 2007 3:07PM]

Please read Matthew's post again. "You keep using that word. I do not think it means what you think it means."

Excellent post and points, Matthew. (And great movie, by the way).

As I've said before, patents, trademarks and copyrights are not the same thing. (http://slashstar.com/blogs/tim/archive/2006/01/02/2286.aspx).

Some may be confused because it's the "US Patent and Trademark Office", but I assure you they are different things. The process for acquiring and protecting them are different, they operate differently, and the rights conferred are different. Other than that, they're the same :)

The important thing to remember is that patents give you the right to exclude absolutely, while trademarks may or may not give you the right to exclude. With trademarks, there is a concept of confusion - there are a number of factors used to determine whether a particular use is likely to confuse the consumer. Trademarks will die if they are no longer used in commerce, and can be limited by region, type of product (e.g., Apple Computer and Apple Windowwashers are ok, because no one would confuse the two).

By contrast, a valid patent can be used to prevent others from using the invention, even if you are not using it yourself.

And, most importantly, "prior art" has no relevance in a likelihood of confusion act (unless used in the genericide analysis as discussed above). Prior art is relevant in the patent world because it destroys the novelty and non-obviousness required to issue a patent in the first place.

On a related note, I also feel a bit uneasy about the idea of licensing trademarks and having multiple suppliers are using the same mark. To me, this flies in the face of the principle of trademark - the designation of source. That's the whole reason we have genericide - you can't exclude someone else from using aspirin because it has become descriptive and not an indication of who makes it. I'm squarely in the campe that believes that trademark doctrine should not create property rights. As you might imagine, I'm against dilution for the same reason.

[Bloobie @ Jan 12th 2007 5:36PM]

Quite a number of products have been released already under the iPhone name. A simple search on Amazon brings up a few.

[DM @ Jan 12th 2007 1:07PM]

Ok, if Apple wins this one, i just hope all cellphone companies should just name all their phones iPhone so we can all live happily ever after. Let's see if Steve Jobs can live with that.

[ryan @ Jan 12th 2007 1:55PM]

yeah, i kinda think iPhone isn't the "coolest" name they could've come up with. i mean ... how long was that meeting?
i think bbydon's onto something there though. "iTalk" ... not bad ... but they probably want something that says it does more than just allow users to "talk" (iPhone doesn't really say this either)
iCell? kinda goes with iPod nicely no?

[Lisa Rodgers @ Jan 13th 2007 4:45AM]

OMG is it just me??? ..... itunes, imac, iphone! makes sence too me, Apples iphone.

[Javaflash @ Jan 12th 2007 1:11PM]

bbydon, MacPhone sounds like a good idea, but Apple has more hit products when name starts with "i."

So, let's brainstorm more i-something.

Anyone else?

[jam @ Jan 12th 2007 2:43PM]

iTelly

[ABCguy @ Jan 12th 2007 1:36PM]

Engadget: You really don't know the rules of IP law ... Even your update is wrong. In the US, you don't need to register a trademark with the PTO to have trademark rights in a mark. You can obtain "common law" rights in a trademark through use, and that's clearly why Cisco thinks it has prior trademark rights in the term "iPhone" for certain fields of use, and why it thinks it can enforce them against Apple. In short, the lack of a federal trademark registration or application doesn't matter. Please stop speculating about the legal rules - you're 0 for 2 now. The issues in this case (if it gets resolved on the merits on not resolved by settlement) are whethere there is a "likelihood of confusion" as to source arising from Apple's use, which will involve a multi-factored analysis including but not limited to the strength of the iPhone mark and its use by other players. Stop trying to find "smoking guns" in the PTO's online databases!!!!

[tf @ Jan 12th 2007 1:32PM]

Even your update needs updating. Cisco has the trademark. Maybe your searches are failing because it transfered to them via Linksys via Infogear.

Jason, are you kidding?

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

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

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

Cidco http://www.iph.net.nz/

And check out Jeff Pulver's blog. He invented the term and thought it was generic... His company at the time VocalTec was using it and Intel used it for a while as well.

http://pulverblog.pulver.com/archives/006225.html

I bet there are several more examples. And I'm not even't citing the iFon and other combinations of similar marks.

[BK @ Jan 12th 2007 1:20PM]

Wow, I haven't seen Cisco get this much publicity since the "The Thong Song". Maybe that's it's plan--to bring exposure to it's brand.

[David.Carrick @ Jan 12th 2007 3:13PM]

Cisco acquired Infogear Technology which I am assuming means they also acquire all intellectual properties owned by IT. Wouldn't this mean they own Infogears filing for iPhone?

[Bob @ Jan 12th 2007 1:20PM]

You keep talking about the 'prior art' (wrong term by the way) but I'm pretty sure that "Pod" was around before the iPod. And that did do much to stop Apple from suing anyone who had just pod in the name.

[Charles Thomas @ Jan 12th 2007 2:13PM]

You're getting you intellectual property concepts mixed up. "Prior art" is a patent term, i.e., all the prior inventions that an inventor is building on top of. Trademark is about protecting one's marketing rights in a name, which is why I can't produce my own beer and call in Budweiser.

The Cisco trademark specifically applies to VOIP. Apple, obviously, is marketing a cell phone, so there is no direct overlap. Even if not directly infringing, a trademark for an unrelated product cannot be "confusingly similar" to an existing mark (i.e., I would probably not be allowed to market a brand of herb tea called Budweiser- consumers would likely conclude that Anheuser is expanding into that field, and I would be trading on their name and goodwill).

Here's where it gets real innarestin'.... The use of "iAnything" has become deeply associated with Apple. The Cisco trademark has no consumer associations whatsoever- hell, nobody heard of Cisco's iPhone before last December. This is why Apple feels emboldened enough to tell Cisco to kiss its ass.

[tf @ Jan 12th 2007 1:31PM]

These aren't real products?

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

Nuvio http://iphone.com/

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

Check out Jeff Pulver's blog. He coined the term and his company at the time (VocalTec) had a product. Intel had a product. He thinks its a generic term.

(I can only enter 3 urls? I'll post Jeff's blog link in a second.)

[DM @ Jan 12th 2007 1:31PM]

"Our advice to the people Behind the Human Network: focus on that human network of yours and let the iPhone go, kid."

kid?? lol. I think someone is confused who's the kid here. Spare us the childish behavior please.

[Mike @ Jan 12th 2007 1:32PM]

MacPhone FTW!!

[ryan @ Jan 12th 2007 1:56PM]

... actually, "mac phone" ... hmm, maybe this does enter into the higher end products ... $600 a pop for a phone is comparable to $2500 for a laptop. maybe mac [something] is a way to go. mac cell? ... mac mobile? iMobile? mac pod? it is kinda a 'hi-end' iPod to some degree ... mmm ... okay .. i stopped caring

[Adam the Great @ Jan 12th 2007 1:36PM]

Well arguments regarding the propriety of calling it 'prior art' aside, what really cooks my noodle is how ANY company ANYWHERE in ANY STRETCH of hemisphere has the balls to sue Apple over infringing the trademark they own, when said trademark is the slapping of a lowercase 'i' onto a relatively benign noun.

This is Apple's 'thing.' Now, granted, the way trademark laws work, it gets a bit sticky regarding enforcement and legitimacy, but in a normative (how they should be, not how they are) mechanism, trademark laws are designed to prevent any company from piggybacking the market dollars and ideas from another companys promotions. Isn't ANY company that slaps an 'i' and a colorful candy shell on product X attempt to violate the intentions of trademark law (if not the actual letter of the law itself)?

How Cisco has the BALLS to sue Apple over a trademark issue that Apple was in talks with them to acquire, when in fact, the 'iPhone' name is in DIRECT relationship to the same 'i' moniker that Apple has spent billions popularizing. Ooooh, don't forget my favorite part, the Cisco people are *ahem* 'surprised' that Apple released it for public viewing before the talks were concluded... Seriously. Macworld. It happens every year. Steve keynotes it every year. He's expected to turn water into wine EVERY YEAR. I'd be seriously concerned if I were a Cisco investor if the managment at Cisco was 'shocked' that Jobs demoed the iPhone at the ONE MAJOR TRADESHOW THEY HOST AND ATTEND EVERY YEAR. Of course, if that's the case, then Cisco is a bunch of liars. They are just completely lying at this point. And that's sad.

[tf @ Jan 12th 2007 1:39PM]

As to the comment that Cisco worked out deals with the others, this isn't proven and seems a little absurd. Many of these products existed before Cisco owned the trademark. Did Linksys enforce it you mean? Or Infogear before that?

But let's assume that Cisco did do a deal to allow more than 4 companies to use the name... That doesn't seem like defense of trademark to me? That seems like dilution of trademark.

[Matthew @ Jan 12th 2007 1:46PM]

"But let's assume that Cisco did do a deal to allow more than 4 companies to use the name... That doesn't seem like defense of trademark to me? That seems like dilution of trademark."

Why? As an example, TI lets several companies use the mark DLP.

[J.Ho @ Jan 12th 2007 4:41PM]

"As to the comment that Cisco worked out deals with the others, this isn't proven"

What "proof" do you require? Teledex is a Cisco AVVID partner. Partnerships are cool. Look up the Cisco relationships with the other firms yourself.

"That doesn't seem like defense of trademark to me"

Well, what can I say? What "seems like" to you doesn't necessarily map with current U.S. Trademark Law.

[jjohncorbett @ Jan 12th 2007 2:40PM]

Here's "The Simpsons" commentary on Cisco...

http://www.youtube.com/watch?v=VV9NxtRJKkY

[tim @ Jan 12th 2007 1:44PM]

http://blogs.cisco.com/news/2007/01/update_on_ciscos_iphone_tradem.html

Sheds some light on Cisco's side of things. Cisco tried to get Apple to collaborate on development in a broad sense, Apple refused, Cisco sued. High five to Cisco, Apple is going to get tooled.

[wizzle @ Jan 12th 2007 1:50PM]

cringely speaks
http://www.pbs.org/cringely/pulpit/2007/pulpit_20070111_001476.html

[Josh @ Jan 12th 2007 1:52PM]

If lots of people using a name takes away the trademark - like hoover, etc - then do the millions of people on the blogosphere using the moniker 'iPhone' to describe a mobile phone/ipod/whatever for the past goodness knows how long not count as lots of people using the name? Just because Apple hasn't used it doesn't stop people associating it with an actual product.
'Tank' was a codename for the fighting vehicle (to confuse the Germans who would have thought the Brits were producing water/oil/whatver tanks, not armoured vehicles), but has stuck as its real name.

[Matthew @ Jan 12th 2007 2:36PM]

Josh,

Yes, even use by the general public can cause a problem with the term becoming generic. It creates a fine line for a company who wants its name to become as well known as possible while avoiding the mark becoming a generic term. Which is why companies are sometimes careful in their marketing, (e.g., "Kleenex brand tissues" vs. "Kleenex"). A recent example is TiVo sending a letter to various news and media companies requesting they not use the expression "to TiVo something" as opposed to "record something" out of fear for TiVo becoming a generic term for DVR.

[Chadd Nelson @ Jan 12th 2007 2:45PM]

The name isn't important to me...the device is. Call it yankee-doodle-dandy-phone, I don't care, I just want one!