Trademark 101: two companies cannot use an identical mark for similar or related products. This is to avoid consumer confusion. The company that owns an earlier federal registration with the U.S. Patent and Trademark Office (“PTO”) generally prevails; the other must change the name of its product (with many nuances and exceptions, of course!).
Now everyone is talking about the Apple iPhone. But have you heard of the Linksys iPhone? Probably not until Cisco (Linksys’ parent company) filed a much publicized lawsuit against Apple over the mark “iPhone” two weeks ago. Cisco claims that it owns senior rights in the mark and that Apple cannot use the name.
Cisco’s complaint is available here
Cisco has owned a PTO registration for “iPhone” since 2000 (when it purchased the company Infogear). Apple owns foreign applications for the mark (in Asia, Europe and Australia). Cisco’s registration is for “computer hardware and software for providing integrated telephone communication with computerized global information networks” (Reg. No. 2,293,011). In December 2006, less than a month before the anticipated launch of the Apple Iphone, Linksys, a division of Cisco, released its iPhone handheld device.
The differences between the devices may play a role in resolving the dispute. Cisco’s iPhone products work with Voice over Internet Protocol (VoIP) services (like Skype), while the Apple iPhone is more like a conventional cell phone that uses internet connections, not to make calls, but to browse the web or check emails. The differences are subtle, but judges and the PTO have been known to allow identical marks to coexist in the telecommunications and software industries if the products have different uses and markets.
Another issue that may come up in the case is Cisco’s use of the mark since 2000. Infogear was using the mark for its line of “phone-plus-internet” products, but did Cisco use the mark in commerce before launching its own iPhone device in 2006? This is important because if a mark has not been in use for 3 consecutive years and the owner has done nothing to try to resume use of the mark, the PTO may presume that the owner has abandoned the mark. Apple may use that argument to try to invalidate Cisco’s registration.
Stay tuned for updates on the dispute…
In the meantime, bloggers are already coming up with alternate names for Apple’s iPhone: MacPhone, iTalk, iCall, iWishIHadABetterName…