Apple / Cisco iPhone litigation primer, part 1 - what's in a trademark?
Legal analysis by Sarah Calvert, Jason McInnes, and Scott McMillan, and edited by Trevor Adler and Jonathan Coronel, law student members of the Columbia Science & Technology Law Review.
We know there's a lot of Cisco-said-Jobs-said going on right now with iPhone vs. iPhone, so we turned the mic over to our wonderful crew at The Columbia Science & Technology Law Review to spell it out for us. Part one might be of interest to you entrepreneurial types out there -- we're gonna get down and dirty with trademark law, and how a trademark functions in the US. In part two we'll get into the legal issues facing Apple, possible consequences and outcomes, and whether or not "iPhone" really even is defensible. -Ed.
We're all pretty well familiar with the term trademark, and what it represents: a unique "mark" used to identify a product's source, and to distinguish the product from goods made by others. But before we can get into iPhone vs. iPhone (in part 2), we have to dot our Is and cross our Ts, so to speak, when it comes to the finer points of trademark law. More specifically, a trademark can range from something simple, like a word or symbol, to something more abstract, like a sound, fragrance, or color1; trademarkable products can include material goods (like Coca-Cola), services (like Engadget), and their corresponding images and appearances.2 Read on.
Like a copyright, a trademark owner does not need to register a mark to receive some legal protection. However, registering the marks can have several advantages, which we'll further discuss below. If a company decides to register their mark, it must submit an application, which includes demonstrating either that the trademark is currently in use, or that the company has a "bona fide intention" to use it.3 Once the United States Patent and Trademark Office receives the application and any required accompanying materials (and, of course, the requisite fees), an examining attorney will analyze it to and determine whether or not it is registerable.4
Maintaining trademark protection
Following the USPTO's approval and the owner's implementation of a trademark, there are continuing responsibilities placed upon an owner who wishes to maintain their trademark protection. If the mark is federally registered, the owner must periodically renew their registration by filing the appropriate paperwork (and paying the associated fee). This can be done by sending in the appropriate forms by mail or online at the USPTO's website. Once registered, an owner is entitled to use the "®" symbol to designate his federal trademark. This alerts potential infringers to the fact that the mark is federally registered and can improve the owner's chances of collecting infringement damages in court. If a mark is not federally registered, the owner may use the symbol "TM" (for a trademark) or "SM" (for a service mark); while an unregistered mark does not enjoy the same legal benefits as a federally registered trademark, it does remind potential infringers that the owner intends to enforce their legal rights.
In addition to registration and renewal, there are a number of other requirements for maintenance of a trademark. First, the mark must be in continuous commercial use. If the mark ceases to be used continuously, it is said to be "abandoned," and protection of the mark is lost. (This point could be key for Cisco.) Second, the owner of the mark must maintain tight control over its use -- this means that the owner must not allow others to use the mark. If the owner fails to take action against infringers, then the trademark can no longer serve as a reliable indicator that the product or service comes from a particular source, thus the mark is consequently considered abandoned. Accordingly, a trademark owner is expected to "police" the mark by monitoring publications such as the USPTO's Official Gazette (a publication that lists newly applied-for trademarks and provides an opportunity for individuals to challenge the proposed registration) or periodically running full trademark searches.
If the owner of a mark discovers that someone else is using it, they should take immediate action to stop the infringement (e.g., writing a letter to the infringer or contacting a lawyer). Finally, a trademark can also be lost if the mark becomes "generic" through common usage. For example, the term Kleenex is often used to refer to facial tissue, and therefore, the branding of facial tissues as "Kleenex" is no longer trademark infringement. This "genericide" can be avoided by taking precautions such as accompanying the mark with the type of product or service (e.g., Kleenex tissues), capitalizing the mark, and/or avoiding use of the mark as a general noun for a type of product.
Rights and benefits conferred by registration
As noted above, registration of a trademark with the USPTO has several benefits. First, the territorial reach of a registered trademark is national, whereas an unregistered trademark is limited to the territory in which the mark is actually used5. Thus, the owner of a registered mark can prevent anyone from subsequently using a confusingly similar mark anywhere in the United States, even in those parts of the country in which the registrant does not use its mark. The owner of an unregistered mark, however, cannot prevent future use of even an identical mark in parts of the United States where the owner does not do business. Furthermore, a successful registration serves as constructive notice of the mark and its ownership to all future users of confusingly similar marks.6 Consequently, future users of confusingly similar marks cannot claim ignorance of the mark or its ownership in trademark infringement claims.
Second, the owner of a registered mark can prevent an existing user of a confusingly similar unregistered mark from expanding use of the unregistered mark beyond the territory in which it is already used. This can happen when two companies are using similar unregistered marks in two separate regions of the United States. Should neither party register, both companies can expand the territories in which they use their marks as long as there is no overlap. Once territories overlap, the first user in the overlapping territory has priority and can bring an infringement action. However, if one company registers its mark, it can prevent any further expansion by its rival, even into parts of the United States where neither company does business. This has the effect of freezing the territory of the unregistered rival at the moment of registration while preserving expansion opportunities for the registrant.
Third, a successful registration establishes a rebuttable presumption of a mark's validity as a registered trademark.7 Basically this means that a court will assume, until proven otherwise, that the trademark registration is valid and enforceable. A common claim made against registered trademark owners is that their marks do not deserve the protections of registration because they are generic or descriptive and lack secondary meaning. A successful registration establishes a rebuttable presumption that the mark is neither generic nor merely descriptive and instead has secondary meaning, or is suggestive, arbitrary or fanciful. Thus, the burden is on the challenger to prove that the registration is invalid, rather than on the registrant to prove that the registration is valid.
Remedies available under the Lanham Act
The owner of a trademark, registered or not, has access to several different avenues of federal relief for infringement that may not be available when suing under state unfair competition laws. For example, federal law allows an owner to seek injunctive relief to prevent a competitor from using a confusingly similar mark on a similar product.8 See where we're going?
Injunctive relief is often sought in cases, like the Apple / Cisco iPhone litigation, whereby one company announces its intentions to use a mark registered to someone else. The owner may seek a court order preventing the would-be infringer from going forward with its plans. Additionally, owners may seek monetary relief.9 Monetary relief can be in the form of an award of the infringer's profits from using the registered mark, monetary damages (e.g., lost profits due to consumer confusion), and / or the cost of bringing the infringement action (e.g., attorneys' fees). In addition, an owner may seek destruction of all materials in the infringer's possession bearing the infringing mark.10 This would include all marketing materials and packaging.
Conclusion
We hope you've found our introduction to trademarks informative – and perhaps even interesting. Now that you have a little bit of background into trademark law, you'll be ready to read our next STLR Engadget installment, which will focus squarely on the Apple/Cisco iPhone litigation. See you then!
Footnotes
1 For general definitions, see 15 U.S.C. § 1127 here. The US Supreme Court suggested that a symbol could be "almost anything at all that is capable of carrying meaning." Qualitex v. Jacobson Products, 514 U.S. 159, 162 (1995).
2 See 15 U.S.C. §§ 1127 & 1053 here. The Supreme Court case Two Pesos v. Taco Cabana, 505 U.S. 763 (1992), discusses appearance, or "trade dress."
3 See 15 U.S.C. § 1051 here. An intent-to-use application does not make the mark protected. A company may only enforce protections on their mark if it is actually used.
4 The application process can have several outcomes. If an application is refused, the applicant may amend, abandon, or appeal. The mark may also be subject to opposition or cancellation proceedings; see 15 U.S.C. §§1063-64 here.
5 See 15 U.S.C. § 1057(c) here.
6 See 15 U.S.C. § 1072 here.
7 See 15 U.S.C. § 1057(b) here.
8 See 15 U.S.C. § 1116 here.
9 See 15 U.S.C. § 1117 here.
10 See 15 U.S.C. § 1118 here.
We know there's a lot of Cisco-said-Jobs-said going on right now with iPhone vs. iPhone, so we turned the mic over to our wonderful crew at The Columbia Science & Technology Law Review to spell it out for us. Part one might be of interest to you entrepreneurial types out there -- we're gonna get down and dirty with trademark law, and how a trademark functions in the US. In part two we'll get into the legal issues facing Apple, possible consequences and outcomes, and whether or not "iPhone" really even is defensible. -Ed.
We're all pretty well familiar with the term trademark, and what it represents: a unique "mark" used to identify a product's source, and to distinguish the product from goods made by others. But before we can get into iPhone vs. iPhone (in part 2), we have to dot our Is and cross our Ts, so to speak, when it comes to the finer points of trademark law. More specifically, a trademark can range from something simple, like a word or symbol, to something more abstract, like a sound, fragrance, or color1; trademarkable products can include material goods (like Coca-Cola), services (like Engadget), and their corresponding images and appearances.2 Read on.
Like a copyright, a trademark owner does not need to register a mark to receive some legal protection. However, registering the marks can have several advantages, which we'll further discuss below. If a company decides to register their mark, it must submit an application, which includes demonstrating either that the trademark is currently in use, or that the company has a "bona fide intention" to use it.3 Once the United States Patent and Trademark Office receives the application and any required accompanying materials (and, of course, the requisite fees), an examining attorney will analyze it to and determine whether or not it is registerable.4
Maintaining trademark protection
Following the USPTO's approval and the owner's implementation of a trademark, there are continuing responsibilities placed upon an owner who wishes to maintain their trademark protection. If the mark is federally registered, the owner must periodically renew their registration by filing the appropriate paperwork (and paying the associated fee). This can be done by sending in the appropriate forms by mail or online at the USPTO's website. Once registered, an owner is entitled to use the "®" symbol to designate his federal trademark. This alerts potential infringers to the fact that the mark is federally registered and can improve the owner's chances of collecting infringement damages in court. If a mark is not federally registered, the owner may use the symbol "TM" (for a trademark) or "SM" (for a service mark); while an unregistered mark does not enjoy the same legal benefits as a federally registered trademark, it does remind potential infringers that the owner intends to enforce their legal rights.
In addition to registration and renewal, there are a number of other requirements for maintenance of a trademark. First, the mark must be in continuous commercial use. If the mark ceases to be used continuously, it is said to be "abandoned," and protection of the mark is lost. (This point could be key for Cisco.) Second, the owner of the mark must maintain tight control over its use -- this means that the owner must not allow others to use the mark. If the owner fails to take action against infringers, then the trademark can no longer serve as a reliable indicator that the product or service comes from a particular source, thus the mark is consequently considered abandoned. Accordingly, a trademark owner is expected to "police" the mark by monitoring publications such as the USPTO's Official Gazette (a publication that lists newly applied-for trademarks and provides an opportunity for individuals to challenge the proposed registration) or periodically running full trademark searches.
If the owner of a mark discovers that someone else is using it, they should take immediate action to stop the infringement (e.g., writing a letter to the infringer or contacting a lawyer). Finally, a trademark can also be lost if the mark becomes "generic" through common usage. For example, the term Kleenex is often used to refer to facial tissue, and therefore, the branding of facial tissues as "Kleenex" is no longer trademark infringement. This "genericide" can be avoided by taking precautions such as accompanying the mark with the type of product or service (e.g., Kleenex tissues), capitalizing the mark, and/or avoiding use of the mark as a general noun for a type of product.
Rights and benefits conferred by registration
As noted above, registration of a trademark with the USPTO has several benefits. First, the territorial reach of a registered trademark is national, whereas an unregistered trademark is limited to the territory in which the mark is actually used5. Thus, the owner of a registered mark can prevent anyone from subsequently using a confusingly similar mark anywhere in the United States, even in those parts of the country in which the registrant does not use its mark. The owner of an unregistered mark, however, cannot prevent future use of even an identical mark in parts of the United States where the owner does not do business. Furthermore, a successful registration serves as constructive notice of the mark and its ownership to all future users of confusingly similar marks.6 Consequently, future users of confusingly similar marks cannot claim ignorance of the mark or its ownership in trademark infringement claims.
Second, the owner of a registered mark can prevent an existing user of a confusingly similar unregistered mark from expanding use of the unregistered mark beyond the territory in which it is already used. This can happen when two companies are using similar unregistered marks in two separate regions of the United States. Should neither party register, both companies can expand the territories in which they use their marks as long as there is no overlap. Once territories overlap, the first user in the overlapping territory has priority and can bring an infringement action. However, if one company registers its mark, it can prevent any further expansion by its rival, even into parts of the United States where neither company does business. This has the effect of freezing the territory of the unregistered rival at the moment of registration while preserving expansion opportunities for the registrant.
Third, a successful registration establishes a rebuttable presumption of a mark's validity as a registered trademark.7 Basically this means that a court will assume, until proven otherwise, that the trademark registration is valid and enforceable. A common claim made against registered trademark owners is that their marks do not deserve the protections of registration because they are generic or descriptive and lack secondary meaning. A successful registration establishes a rebuttable presumption that the mark is neither generic nor merely descriptive and instead has secondary meaning, or is suggestive, arbitrary or fanciful. Thus, the burden is on the challenger to prove that the registration is invalid, rather than on the registrant to prove that the registration is valid.
Remedies available under the Lanham Act
The owner of a trademark, registered or not, has access to several different avenues of federal relief for infringement that may not be available when suing under state unfair competition laws. For example, federal law allows an owner to seek injunctive relief to prevent a competitor from using a confusingly similar mark on a similar product.8 See where we're going?
Injunctive relief is often sought in cases, like the Apple / Cisco iPhone litigation, whereby one company announces its intentions to use a mark registered to someone else. The owner may seek a court order preventing the would-be infringer from going forward with its plans. Additionally, owners may seek monetary relief.9 Monetary relief can be in the form of an award of the infringer's profits from using the registered mark, monetary damages (e.g., lost profits due to consumer confusion), and / or the cost of bringing the infringement action (e.g., attorneys' fees). In addition, an owner may seek destruction of all materials in the infringer's possession bearing the infringing mark.10 This would include all marketing materials and packaging.
Conclusion
We hope you've found our introduction to trademarks informative – and perhaps even interesting. Now that you have a little bit of background into trademark law, you'll be ready to read our next STLR Engadget installment, which will focus squarely on the Apple/Cisco iPhone litigation. See you then!
Footnotes
1 For general definitions, see 15 U.S.C. § 1127 here. The US Supreme Court suggested that a symbol could be "almost anything at all that is capable of carrying meaning." Qualitex v. Jacobson Products, 514 U.S. 159, 162 (1995).
2 See 15 U.S.C. §§ 1127 & 1053 here. The Supreme Court case Two Pesos v. Taco Cabana, 505 U.S. 763 (1992), discusses appearance, or "trade dress."
3 See 15 U.S.C. § 1051 here. An intent-to-use application does not make the mark protected. A company may only enforce protections on their mark if it is actually used.
4 The application process can have several outcomes. If an application is refused, the applicant may amend, abandon, or appeal. The mark may also be subject to opposition or cancellation proceedings; see 15 U.S.C. §§1063-64 here.
5 See 15 U.S.C. § 1057(c) here.
6 See 15 U.S.C. § 1072 here.
7 See 15 U.S.C. § 1057(b) here.
8 See 15 U.S.C. § 1116 here.
9 See 15 U.S.C. § 1117 here.
10 See 15 U.S.C. § 1118 here.
Reader Comments (Page 1 of 1)
Andrew @ Feb 8th 2007 4:04PM
Adding to the interest in this story, SkypeJournal has a great post basically claiming Cisco is calling the kettle black so to speak.
http://www.skypejournal.com/blog/2007/02/a_tale_of_two_logos_one_monike.html
wung @ Feb 8th 2007 4:08PM
great article/blog. i now know why Google doesn't want their name in the dictionary.
blaQ @ Feb 8th 2007 4:13PM
had he turned off his iPod when talking to you?
Scott @ Feb 8th 2007 7:15PM
After reading the largely wrong-headed comments (or, for that matter, the misleading original posting) when the litigation first hit, I can't tell you how glad I am you asked people who know what they are talking about to provide this primer.
@wung--exactly. Once you hit the dictionary, you're probably generic.
IP @ Feb 8th 2007 8:42PM
"If the mark ceases to be used continuously, it is said to be "abandoned," and protection of the mark is lost. (This point could be key for Cisco.)"
Since you are likely to return to this as a "key for Cisco", I think several caveats are in order. Failure to use the trademark "continuously" will not lead to abandonment. Indeed, the TMEP provides up to 3 years of non-use before the mark is considered presumptively abandoned. Moreover, the non-use can be excused for various reasons.
See, http://tess2.uspto.gov/tmdb/tmep/1600.htm#_T160411
The picture you paint here is that immediate cessation of use leads to immediate abandonment.
JustZisGuy @ Feb 9th 2007 1:26AM
Actually, Kimberly-Clark still owns "Kleenex" brand facial tissues according to the USPTO's website. The mark is still "live".
Tim Chandler @ Feb 9th 2007 2:36AM
Unfortunately, this article presents several inaccuracies and misstatements.
First, "continuous use" is not as stringent as you seem to imply. Companies can go years without using a trademark and not have legally abandoned it.
Second, it is extremely inaccurate to say that you have to exercise "tight" control over the trademark name. Courts have held that you merely have to exercise reasonable control. For example, if an individual is infringing your copyright on a small scale and you do nothing about it, this will not likely lead to a problem. You only need to police those infringing actions that rise to a certain substantive level - not every infringement.
Third, the precautions you list to avoid genericide are worth nothing more than what they are attempting to prevent. Doing any of them in an of themselves does nothing for you. The key is whether or not the public thinks that it is a generic term. So, if you do every precaution imaginable but the public still considers it generic, your actions were in vain.
There are several other misstatements. I encourage you to consult with a trademark expert / professor rather than students on a law journal. I was in a prominent position on an international law journal at a highly-ranked law school, but that certainly didn't make me an expert.
Trevor Adler @ Feb 9th 2007 1:32PM
The law student members of the Columbia Science & Technology Law Review do not purport to be experts in any legal field. We're not attorneys; we're law students who research and post analysis pieces on Engadget as a service to the Engadget readership and other interested persons. To that end, we appreciate constructive criticism and welcome comments regarding the issues we raise and the points that we make.
Trevor Adler
Executive Editor
Columbia Science & Technology Law Review
D-man @ Feb 9th 2007 8:28AM
What About IRobot? Apple gonna claim trade mark infringments on that one too? Oh well, Igotta take a dump anyways.
aaron @ Feb 9th 2007 12:42PM
interesting... so my question is how do trademarks apply to items sold online? There is no boundry and its obviously international.
Gruff @ Feb 9th 2007 2:35PM
One would think that in all of the past four years where the Apple iPhone was referenced by rumor and news sites and publications specifically as the "iPhone" and clearly indicating that it was an Apple product in development that Cisco, or Linksys before it, would have sent letters of notification to at least some reminding them that Cisco (or Linksys) owned the iPhone trademark and to please stop using their trademark to refer to a product -- even just a rumored one -- from another company. Even once the Linksys iPhone had been announced, Cisco still took no action despite continued use of the name iPhone to refer to the rumored Apple product.
I am wondering how this would play in the dispute.
Ben @ Feb 11th 2007 11:32PM
Surely I would be completely wrong having not read the law bit at all.
But in my view, doesnt cisco have far more right over the name. Whether abandoned or not on the basis that the company who had the trademark released a product before apple even got its product throught the FCC.
Thats whats most important in my opinion. Cisco has a product out and Apple does not. Surely that has to count for something???????