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Cisco Lost Rights to iPhone Trademark Last Year? 162

Posted by CowboyNeal
from the use-it-or-lose-it dept.
An anonymous reader writes "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."
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Cisco Lost Rights to iPhone Trademark Last Year?

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  • Old News (Score:5, Funny)

    by Anonymous Coward on Saturday January 13, 2007 @11:10AM (#17590940)
    iKnow that

    --Steve
  • by dave420 (699308)
    oops!
    • by Anonymous Coward
      I am pretty sure this means jack. Anybody claiming the use of a trademark receives protection with or without registration. Registration just gets you immediate action in the courts preventing apple from selling anything without hearing from apple. It also gives you the right to put TM next to the logo. If they were using it and had obvious intentions to reuse it then they are likely safe in the trademark and the registration, no matter what reason they are reusing it. The Europe one is more interesting
      • by MeanderingMind (884641) on Saturday January 13, 2007 @12:21PM (#17591702) Homepage Journal
        Cisco is registered for the trademark, that much is certain.

        The issue here is whether or not their registration can be revoked due to failure to use the trademark. The article mentions that a registered trademark should be in continual use throughout the registration. As Cisco had no "iPhone" product until late in the grace period there seems to be a good case for the registration to be revoked.

        Now, as you say they may still be protected, but this opens the door still for Apple to register the trademark. I can hardly think that Cisco will be able to defend a trademark that was revoked against someone else who holds the registration.
      • TM vs. R (Score:4, Informative)

        by jpellino (202698) on Saturday January 13, 2007 @01:51PM (#17592776)
        In fact, in the UIS at least you can use "TM" from when you begin the claim, you can use "R" once it's actually registered.

  • ...that trigger-happy lawyers should check their facts before they jump onto something. This is likely why apple was 'too busy' to talk to them. If they started using the trademark asap, then this would come along and make it go away without so much as a press release/quote on apple's part.

    I love happy endings.
    • by nomadic (141991)
      It hasn't ended yet. The "experts" listed in the blog aren't the ones making the ultimate legal decisions.
    • Re: (Score:2, Insightful)

      by Anonymous Coward
      Lawyers are hired guns, but they are not the gunmen, their clients are. When someone walks into a lawyer's office with a complaint (or brings one to the lawyers on staff, if it's a big company), they will look to see if there is ANY amount of legal merit and, if so, begin to work on the case. Their job isn't to filter cases by how ridiculous they are, it's to filter cases without any legal merit. If you were Cisco, wouldn't you at least TRY to save your trademark? I think so.

  • by gEvil (beta) (945888) on Saturday January 13, 2007 @11:16AM (#17590982)
    Cisco should just rebrand their iPhone product line and call them Apple Phones.
    • by Megane (129182) on Saturday January 13, 2007 @11:25AM (#17591072) Homepage
      I like "Cisc-o-Fone" myself. It's got a retro sound to it. "Disco Stu! Loves his Cisc-o-Fone!"
      • by TomHandy (578620) <`tomhandy' `at' `gmail.com'> on Saturday January 13, 2007 @12:07PM (#17591526)
        I have a hard time believing that he would ever make an obvious promotional statement like that. Don't you know that Disco Stu doesn't advertise?
    • by Arwing (951573)
      I am sorry, the word Cisco has been ruined since that no talent hack rapper came out using the same (sounding) name
  • by blueZhift (652272) on Saturday January 13, 2007 @11:17AM (#17590992) Homepage Journal
    Hmmm, this reminds me of those stories that come up from time to time about some big corporation forgetting to renew their domain names. If the outcome of the trademark dispute comes down to this, it will argue strongly for paying attention to the little details. In any case, you can bet corporate lawyers all over the U.S. are going to be checking their trademark papers this weekend!
    • by Skater (41976) on Saturday January 13, 2007 @11:24AM (#17591068) Homepage Journal
      Or, better yet, of Universal's lawsuits over the game "Donkey Kong" when it first came out - I saw someone mention it on /. the other day. If you're not familiar with the story, it's a pretty good read [wikipedia.org]. Briefly, Universal sued on the grounds that Donkey Kong was a rip off of King Kong, and lost in part because they'd argued in another recent case that King Kong was a public domain character.
      • by soft_guy (534437)
        And Coleco was stupid enough to fold their hand which had the effect of killing the Colecovision and handing the home gaming rights to Donkey Kong over to Atari.
    • by kripkenstein (913150) on Saturday January 13, 2007 @11:49AM (#17591350) Homepage
      Hmmm, this reminds me of those stories that come up from time to time about some big corporation forgetting to renew their domain names. If the outcome of the trademark dispute comes down to this, it will argue strongly for paying attention to the little details.

      Not at all. If TFA is right, this has nothing to do with 'little details'. The big details are that Cisco had no product called 'iPhone' for years, and recently just stuck a sticker on a picture of an existing product, rebranding it 'iPhone', when renewing the trademark, when no such branding existed in the real world.
      • by Rob the Bold (788862) on Saturday January 13, 2007 @12:33PM (#17591838)
        Not at all. If TFA is right, this has nothing to do with 'little details'. The big details are that Cisco had no product called 'iPhone' for years, and recently just stuck a sticker on a picture of an existing product, rebranding it 'iPhone', when renewing the trademark, when no such branding existed in the real world.

        I believe that you and TFA are right, Cisco has not used the trademark in marketing their VOIP web/phone system. I'm looking at the box from one (ca. 2002) right now, and it is branded "Cisco IP Phone". Nowhere in the box, on the product or in the manual was it referred to as an "iPhone", "IPhone", "I Phone" or "I-Phone".

        For that matter, I've seen the instruments placed on TV shows (e.g. "West Wing") and never seen any "iPhone" branding you would expect for a product placement on TV. Looks like they registered it and blew it off.

        • by nine-times (778537) <nine.times@gmail.com> on Saturday January 13, 2007 @01:39PM (#17592622) Homepage
          Indeed, it appears less as though Cisco accidently let a valuable trademark lapse, and more like Cisco is attempting to hold onto a trademark they've never used and have no intention of using, for the sole purpose of using it as leverage against Apple. No one has any brand association with the name "iPhone" to any product other than the Apple iPhone anyway.
          • by srw (38421) *
            What people seem to forget is that Apple doesn't have a product called an iPhone, either.

            Oh, really?

            Where can I get one?

            Thought so...

            What I don't understand is why another company would be the "next in line" to use a trademark. I thought it was basically first come first serve. If Cisco had it registered, and now they are the first to actually ship an "iPhone", why does anyone else have a claim to it? I could understand it if Cisco let it lapse, then Apple beat them to releasing an iPhone, but that's not
            • I thought it was basically first come first serve.

              You're thinking of patents. Trademarks exist for the sole purpose of preventing companies from causing confusion to consumers by branding a product in such a way that it misleads consumers into thinking it is from another company. You can lose trademarks in any number of ways including not using them or if the public does not associate that trademark with your product. For example, you invent a new gadget and call it the "grubblepoo." You trademark that n

  • In Europe too! (Score:5, Informative)

    by Megane (129182) on Saturday January 13, 2007 @11:20AM (#17591020) Homepage

    Cisco on brink of losing iPhone name in Europe [theregister.co.uk]

    I had to read TFA twice just to be sure that it was actually about the trademark in the US, not Europe.

    This is definitely turning out to be a crazy situation. I agree with TFA that this is probably why Apple didn't sign the contract with Cisco after all.

    • Re: (Score:2, Insightful)

      by MattPat (852615)

      It's the proverbial "too little, too late." They released the iPhone only a month or so before they knew Apple was planning on announcing their iPhone, and didn't even do a good job about it (ie, stickers reading "iPhone" on existing product packaging).

      The trademark was registered in 1999, and they only just started using it. Anyone with common sense can see it's because they knew Apple wanted it, and they thought they could squeeze a bit of cash out of them. Let's hope (for Apple's sake) that the judge h

  • The existence of the iTimeMachine. Doc Brown's gonna shit.

    This is yet another flagrant incursion into history and unforgivable mussing of the timeline by Steve Jobs, a monster whose rampage will never end until our hard-working scientists develop a weapon that can pierce his infamous Reality Distortion Field. Myself, I suggest realigning the Bussard collectors to emit anti-neutrinos.

  • by tsa (15680)
    That's a pity because I would like to be able to buy an iHandy next year when the Apple moblie phone comes out.
  • USPTO website (Score:2, Interesting)

    by DaveM753 (844913)
    I did a trademark search on uspto.gov, and it appeared to me that Cisco's iPhone trademark is listed as "LIVE", not "DEAD". IANAL, 'tis true. But we are talking about a ZDNet story, so I'm auto-skeptical.
    • Re:USPTO website (Score:5, Informative)

      by wes33 (698200) on Saturday January 13, 2007 @12:00PM (#17591452)
      TFA goes into and explains why it still shows as 'live' - this is a legal issue not a simple "is it in the registry" issue.
    • Re: (Score:2, Informative)

      by Shabbs (11692)
      That's because Cisco did apply in time according to the rules, but the question remains if they were actually actively using the Trademark or not. Apple will try to show that they did not have a single product out called the iPhone and thus, the application should be nullified. If it is, next in line gets it, and it looks to be a front company for Apple. Surprise, surprise.

      Cheers.
  • Yes, I know the news of Cisco versus Apple case has been out for a while now, but what ever happened to reports [engadget.com] that the two corporations were getting along ok?

    From Engadget:

    Apple "iPhone," huh? As we're all aware, that's the name of the new Linksys VoIP phone which Cisco (Linksys' parent company) owns the trademark to. So what's next? Another protracted legal battle for Apple? Oh hells no, son. After Steve dropped their latest i-bomb, Cisco told MarketWatch that they've been in "extensive discussions" wit

  • .... promote "Iphone" which is not really my phone but his phone as not third part apps will be allowed.
  • by BillGatesLoveChild (1046184) on Saturday January 13, 2007 @12:21PM (#17591708) Journal

    If this checks out, Youch! Everyone was wondering what was behind Apple so brazenly using the iPhone trademark. Cringely wrote a whole piece on it http://pbs.org/cringely [pbs.org] but no one guessed something as simple as this!

    Memo to self: Don't play Poker with Steve Jobs.

  • by nblender (741424) on Saturday January 13, 2007 @12:22PM (#17591712)
    I RTFA and thought the commentary looked familiar: http://apple.slashdot.org/comments.pl?sid=216560&c id=17578608 [slashdot.org]
    • when I read your post my immediate digg-like fanboy reaction was to say, "For shame! Who is Jay Behmke that he can steal quotes from the web and use it as his own?!"

      Then I look a look at the /. poster's ID number:

      (Score:5, Informative)
      by jmbehmke1 (1050394) Alter Relationship on Friday January 12, @02:23PM (#17578608)

      oh.

      Then I proceeded to wipe the egg that was on my face. The internet has made me a little too on edge. :-(

  • Maybe (Score:3, Interesting)

    by KidSock (150684) on Saturday January 13, 2007 @12:23PM (#17591732)
    Maybe this is why apple didn't come out with an iPhone before. They were waiting to see if they would let the trademark lapse.
  • by Fahrvergnuugen (700293) on Saturday January 13, 2007 @12:39PM (#17591912) Homepage

    In the words of bugs bunny: How now brown cow?

    The fickle commentaries crack me up. First it was WTF was Apple thinking? Then it was Cisco is in the right, Apple is wrong / evil / brazen. How stupid could they be. They're gonna have to rename it to @Phone. Blah blah blah.

    Did anyone honestly think Apple would name their product the iPhone, full well knowing that Cisco had the trademark unless they were completely confident that it was both A) worth the legal headache and B) that they have a very good case and therefor chance of triumphing in this dispute?

    • by thelost (808451)
      you're forgetting c) the great publicity their jesus phone is getting from this whole debate
    • even if Apple knew they'd lose, the would get the buzz from the obvious "IPhone" for 6 months until the real thing comes out -- with the added lawsuit and "will they lose the name" buzz to keep it on front pages -- then they could rebrand it the Apple Phone or the iTunes Phone or whatever and get even MORE buzz as they get the release publicity plus the "Apple had to rebrand their phone" publicity that would of course also describe the phone.

      Sort of like the old saying, "I don't care what you print about me
  • Featured iPhone (Score:3, Informative)

    by trofer (986393) on Saturday January 13, 2007 @12:50PM (#17592028)

    iPhone is now a featured product [cisco.com] on Cisco's Website. I don't know if it was there before the iPhone was announced or before this trademark non-usage news came out, but surely it's related with Apple's iPhone.

  • by Overzeetop (214511) on Saturday January 13, 2007 @12:56PM (#17592084) Journal
    Cisco regiters trademark.

    Cisco files Delcaration of Use, with "under penalty of perjury" affidavit stating they are using the name.

    Now it sounds like everything will hinge on the following:
    AT a former FA:
    2001 - 2006: Cisco continues servicing and providing technical support for the iPhone

    So internal documentation may/probably shows continuous use of iPhone in regards to the support of an existing product.

    Either

    (A) the trademark is shown to be valid, as internal documents support the continued use of the trademark for support purposes OR
    (B) they don't have the documentation, or it is deemed invalid, in which case whomever signed the extension is clearly guilty of perjury and should be prosecuted to the fullest extent of the law.

    In my opinion, you can't have it both ways - the tradmark is valid and the signer is ok, or the trademark is invalid and the signer goes to jail. There is no middle ground.

    Now, in other thoughts on the matter:

          (1) If the trademark is up for grabs, and Cisco has an iPhone product on the market which pre-dates the Apple cellular product, don't they still have "dibs" on the name? Can't they re-file for the trademark, and presumably be first in line because of an actual shipping product?

          (2) Can Chevy come out with their new "Fairlane" model next year, since Ford clearly is not producing a Fairlane and haven't for more than 7 years? If Ford claims to keep it by offering parts and service for the Fairlane, wouldn't that bolster the case For Cisco, which has supported "their" iPhone product with (at least) service for the last 6 years?
    • Re: (Score:3, Insightful)

      by thefinite (563510)
      (1) If the trademark is up for grabs, and Cisco has an iPhone product on the market which pre-dates the Apple cellular product, don't they still have "dibs" on the name? Can't they re-file for the trademark, and presumably be first in line because of an actual shipping product?

      You are confusing this a bit with Patent and/or Copyright. A registered trademark gives you the assumption that the mark is properly yours and trumps all other marks. Without a registered trademark, you have to *prove* to a c
      • No, I'm not, I'm trying to look at the case without geek prejudice.

        On the surface, it seems pretty simple.

        Company A buys company which produces the RealWidget.
        Company A registers the trademark.
        Company A supports said xWidget and reaffirms trademark, and affirmation is accepted.
        Company B has rumors of a widget coming to market
        Company B has a fantasically popular RealGidget in production
        Company A comes out with new xWidget product last month - they'll call it the updated version of the old RealWidget.
        Company
        • by terrymr (316118)
          Here's a thing - If you hear of a widget named iWidget - who immediately comes to mind as the maker of said iWidget ?

          That's what counts in trademark law.

          Cisco has made no effort to build up any brand around the iPhone trademark. There's a product that came out a couple of weeks ago after the registration was expired. Thats it.

          If they were serious about building a brand image, anybody who referred to an apple iPhone in the press should have received a letter from Cisco's lawyers explaining that iPhone i
    • by Kesh (65890)
      The difference is that Cisco never actually offered an iPhone until just before the trademark was set to expire. And even that was just slapping a sticker on a pre-existing product and claiming it as the iPhone to keep the trademark extension.

      Basically, this trademark has been sitting in a file cabinet gathering dust ever since it was claimed. They've never actually used it on a product until now.

  • The writer makes an excellent case, but I can't help but think about how is all under the authority of the United States Patent and Trademark Office. Anyone of us can see that they just slapped an "iPhone" sticker on another product, but with all of the stories of how incompetent the USPTO is with granting patents without much thought as to its authenticity, who thinks that practice doesn't carry over into their dealing with trademarks? If they handle their handling of trademarks the same way they do pate
    • by thefinite (563510)
      You are right that it was granted by apparent incompetence, but it probably *won't* stand up in court. Courts invalidate decisions by the USPTO all the time, usually on the grounds that they had no business granting or denying whatever was granted or denied.
  • Why aPhone? (Score:5, Funny)

    by Bright Apollo (988736) on Saturday January 13, 2007 @01:12PM (#17592280) Journal
    Y'know, seeing as how it's an Apple product, they can rebrand the whole of their catalog (usher in the new era of Apple Inc). That way you can own aMac and aPhone and aServer with aWirelessLAN. Of course, you could also get aLife...

    -BA

    • dude, i don't have mod points right now, but props for cracking me up so early in the morning...that was fricking hilarious.

  • Did I fall asleep and miss something ?

    Why is Apple, the world's largest DRM company which loves to use it's lawyers to crush and close any blog which mentions it's upcoming product, now suddenly the "good guys" ?

    • by Macthorpe (960048)
      I gave up saying this months ago.

      It still makes me cringe when someone says "Vista is crippled with DRM" when you can't even boot OSX on a computer that Apple didn't make. Not to mention FairPlay, which I was told doesn't count as DRM because "you can remove it easily".
  • by Animats (122034) on Saturday January 13, 2007 @01:37PM (#17592604) Homepage

    This is just some bloggers, not a legal opinion, even if it's from a lawyer.

    Here's a demonstration that Cisco was continuously using the trademark: the support web site for the iPhone [archive.org], as archived at archive.org. "With InfoGear recently being acquired by Cisco Systems, there is currently no change to your iPhone coverage. We hope you continue to enjoy using your iPhone, and we thank you for your business. So, even if Cisco wasn't selling new units, they were still supporting the old ones. That page has been archived every year since 2000, so that's a form of continuous use.

    There's an active user base. The University of Florida went iPhone [ufl.edu]. There's a description of their configuration here. [ufl.edu] They have a VoIP infrastructure with three Cisco CallManagers, two Cisco 6608 VoIP gateways, a Cisco Unity voice mail system, and many Cisco IP telephones, some of which are iPhone units, on desktops. The University of Pennsylvania also went iPhone. [upenn.edu] There are probably corporate installations too, but they tend not to publish their phone instructions on the public web. Those installations have to be supported, which is something Cisco does, and gets paid for. Cisco is in the network infrastructure business, after all.

    As long as there's support, and support-related revenue, the trademark is clearly in use.

    • Re: (Score:2, Insightful)

      by Anonymous Coward
      Supporting a product that is not being sold is not a form of use with trademarks. Use is actually selling (or trading) a product with that mark. Cisco made a conscious decision not to continue using the iPhone trademark it bought by buying InfoGear (who actually used the trademark up until 2000). My guess is Cisco did not want to be associated with the "playfulness" of the "i" prefix. Apple has, after all, generally used it for consumer products (not the serious business market Cisco is after) and its s
    • by palmer64s (1049988) on Saturday January 13, 2007 @02:24PM (#17593194)
      Nope. A trademark by definition indicates source of origin. Support does not count, because no product or service is being originated by the company under the trademark. This is especially true in this case, since the iPhone was actually produced by another company, InfoGear. Cisco has apparently never produced an iPhone during the period in which they registered that trademark.
      • by truesaer (135079)
        Cisco purchased InfoGear, they're the same company. And I highly doubt that Cisco was supporting this stuff for free, in which case its a service is it not?
    • "Here's a demonstration that Cisco was continuously using the trademark:"

      Seems iffy. After all, lots of places offer Linux support, but that does not give them rights to the name Linux. The mere mention of the mark iPhone in describing the service is not the same as using it as the name of a product or service. This is like the difference between an automobile company selling Fords and a garage advertising that they fix Fords.

      When the mark is registered, the product also has to be specified. The orig

    • Re: (Score:2, Informative)

      by Anonymous Coward
      Support is not use, in trademark terms. Existence of a support website (that says InfoGear was recently acquired by Cisco) does not support a claim of use of a trademark. It might support a claim of use of a service mark.

      University of Florida [ufl.edu] refers to an IPhone service (note the capitalization), not an iPhone product. In fact, most of the time Florida refers to its VoIP service as I-Phone (note the capitalization and dash):

      I-Phone is a new solutions-offering presented by OIT-Telecom that takes ad
    • by scdeimos (632778)
      There's an active user base. The University of Florida went iPhone.

      Sorry, not buying this one: the linked Quick Reference Guides for the phones all use "Cisco IP Phone" when describing their products. Not that UoF is an authoritive source but they also use "IPhone" instead of "iPhone" when describing them, with one other reference to "I-Phone".


  • ok, i'm a begrudgingly admitted macboi, and *i'm* tired of hearing about the iphone debate. it's like arguing the existence of god (or something) -- what does it matter?

    mr c
  • This would explain why the "iPhone" by Cisco came out a week before Apple's iPhone. This would also explain why it's such a lame, slapped-together design.

    If it's true, then you can see why trademarks lapse if not used or enforced. Why, otherwise, companies could buy up a bunch of trademarks, or think up obvious ones, and sue in perpetuity. Not that that's what's happening here, of course. Kaff, kaff.

    Cisco has a good reputation for quality on the corporate (premium) market, and they also are worshipped by a
  • Irrelevant. Anyone who thinks that court cases are won because something does or does not satisfy certain conditions laid down in legal statutes is very naive. All that matters is how much each party has to spend on lawyers to convince a judge. Once convinced, the judge will then write up his or her decision with a post hoc rationalization to make it appear that the decision followed from rules. And so it goes.
  • Because it would seem from the whois information that the record for the domain "iphone.org" was created on 16 Dec 1999, and since that time, has pointed directly to the Apple WWW site. Doesn't that qualify as a "continuous usage"? Wouldn't that make Apple, Inc. (nee Computer) next in line for the registration rather than Ocean Telecom? The existance of "iphone.org" was widely reported in the press back when.

    The other question I have is whether or not an invalidity of the trademark registration necessarily
    • Trademark holder cannot show prior OR continuous usage of same. They inherited the mark from a company they purchased; the product was discontinued. The window closed; they filed their paperwork past-due (days before the end of the six-month grace period attached to the end of the window) and renamed an existing product to create a veneer of legitimacy. They didn't even bother to replace the packaging on the shipping units, instead slapping stickers on the outside of the boxes. A few weeks later, Apple
  • Ask yourself: might someone buy an Apple iPhone under the mistaken belief that they are buying a Cisco iPhone, and thereby get fooled, defrauded, and disappointed? Is Apple piggybacking on the reputation and publicity that Cisco built up?
  • A glance at trademark laws makes this appear a simple case if you consider continuous use.

    They did not use the mark continuously. So, no go Cisco.
  • IANAL (Score:2, Interesting)

    by Suriken (922504)
    IANAL but... someone wrote on slashdot (and I'm trying to find it) who was a lawyer concerning this exact case. The facts I remember were that yes Cisco missed out on the trademark re-registration (or whatever it's called) last year, but those who do are given a 6 month grace period past that point in which to submit their application. Cisco did this approximately 2 months later (2 months into the 6 month period)
    Some other thing as well about the use of the trademark where Cisco submitted box art for an up
  • negotiations that took place between Nintendo and MGM, over the use of King Kong. Turns out Nintendo dropped a bomb at the end of that one with by announcing they weren't paying, then or ever, because MGM didn't own the rights to King Kong anyway! Woops.

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