Another cease and desist letter from Apple regarding usage of "pod" turns up

Another cease and desist letter from Apple regarding usage of "pod" turns up

Summary: Another small businessperson who is being bullied by Apple's lawyers for the use of the word "pod" in her trademark has come out of the woodwork.Meet 53 year-old self-employed Terry Wilson from New Jersey.

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TOPICS: Apple
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Another small businessperson who is being bullied by Apple's lawyers for the use of the word "pod" in her trademark has come out of the woodwork.

Meet 53 year-old self-employed Terry Wilson from New Jersey. Last year, Wilson, who lives alone and makes a living as an independent Web designer (see www.terryfic.com), was having difficulty protecting her Apple PowerBook.  According to her, it was a problem common to PowerBooks related to a week lid latch and so she decided to come up with her own solution. 

tigertightpod.jpgAfter having success using a spare sock to store her mouse in a way that its wire didn't get all tangled up with the other contents of her bag, she raided her dresser once again, found a vintage pair of spandex pants from the 80's, and recycled them into an ingenious, incredibly lightweight and apparently snug protection sleeve for her notebook. Not only did it solve the problem, passers-by would notice when she removed the PowerBook from her bag and ask where she got the protective cover.  So, last April, she decided to start making them for resale. Aside from figuring out where to find an endless supply of different spandex patters (turns out, the answer is eBay), the only question was what to call it.  Via telephone, Wilson told me:

I tried to think of a name for it and, of course, available domain names is an issue.  I had all kinds of names that were different combinations of words and I'd run them by my friends for their opinion. For example, a merger of "laptop" and "leotard."  But my friends rejected most of them until I realized this was like putting a seed in its pod and that's when I came up with TightPod.  I also realized that pod was a hot buzz word -- a part of the vernacular.  It was turning up everywhere else.  So I went with that.

Wilson has no fancy staff or production facilities. She waits for orders to come in through her Web site (www.tightpod.com) and makes them herself.  To be honest, for $25 and with over 70 patterns to choose from including tiger (above left), snakeskin, and a patch of butterflies (and with Christmas coming up), these would make great stocking stuffers for those geeks who already have everything.

But not if Apple gets its way. After Apple, maker of iPods, found the trademark application in which Wilson mentions covering MP3 players as well, its lawyers sent a threatening letter that was nearly identical to the one that the same law firm sent to Dave and Carolee Ellison, owners of a family run business out of Florida that makes arcade games and a small accounting device called a Profit Pod.  Said Wilson of her application:

Actually, there's really just one small size and it was more for peripherals like mice and cables then it was for anything else and almost all of my sales are for notebooks anyway. 

But, in realizing the smaller size fits MP3-player sized devices, Wilson figured why not mention that too.  And that's apparently what Apple noticed since the letter addressed to her cites that part of her application multiple times.  In the letter (full text) to Wilson, not only does Apple offer her what it says is a "reasonable opportunity" to phase out usage of the TightPod trademark, it notes that Apple has registered a trademark for the word POD in other parts of the world and plans to do so in the US:

Apple recently learned that you filed an application for TIGHTPOD (Serial No. 78/746,044), on November 3, 2005, for "Beeper carrying cases; Camera cases; Carrying cases for radio pagers; Carrying cases specially adapted for pocket calculators and cellphones; Cases for diskettes and compact disks; Cases for electronic diaries; Cases for mobile phones; Cases for pocket calculators; Cases for telephones; CD cases; CD sleeves; Cell phone covers; Compact disk cases; Computer carrying cases; Dust covers for computers; DVD cases; DVD sleeves; Jackets for computer disks; Laptop carrying cases; Phonograph record sleeves; Protective carrying cases for portable music players namely MP3 players" in Class 09. Our subsequent investigation revealed that you are using the TIGHTPOD mark on your websites at www.terryfic.com, www.tightpod.com, and www.tightpods.com. For the reasons below, Apple is concerned that the application for and use of the TIGHTPOD mark infringes Apple's trademark rights and dilutes its famous IPOD brand...

....Apple owns, inter alia, U.S. Trademark Registration Nos. 2,835,698, 2,781,793, and 3,089,360 for its IPOD mark for portable and handled digital electronic devices, as well as several pending U.S. applications for the IPOD mark.....

...Apple also owns registrations for POD in the European Community and elsewhere, as well as a pending application in the U.S. (serial No. 78/459,101) for the POD mark...

...We believe there is confusing similarity between Apple's IPOD and POD marks and the TIGHTPOD mark. TIGHTPOD is a POD-suffixed mark, which incorporates a substantial portion of Apple's IPOD mark and the POD mark in its entirety. The products are indisputably related: TIGHTPOD bags are for direct use with Apple's IPOS device ("Protective carrying cases for portable music players namely MP3 players"). As such, the TIGHTPOD mark will inevitably cause consumer confusion as to the source of the products and dilute Apple's famous IPOD mark.

In response, Wilson has offered Apple two choices.  The first of these is simple: remove the reference to MP3 players in her trademark. The second of these, if Apple can't budge on reference to the word "pod" (as is apparently the case with the Ellisons) is to split the cost of completely removing the word pod from her brands, Web sites, and trademarks and coming up with something entirely different. Wilson estimates the total cost at $20,000. So, this second option would run Apple $10,000 which she estimates is far less money than Apple will spend if it decides to exhaust its legal options.  The third, unmentioned option, of course is to go to court and defend her trademark, which Wilson is prepared to do. 

And so she should be. It's certainly news that Apple has registered the POD mark somewhere in Europe and has an application for it here in the US.  Perhaps those registrations are in countries where there's no such word as "pod." For now however, Apple does not have a trademark on the word "pod" here in the US and this business of shaking down small businesspeople to keep them from using a word that's listed in the dictionary (peas, whales, etc.) is just shameful. 

But perhaps the most interesting subtext to this story is that Wilson doesn't harbor enough ill-will against Apple to stop buying the company's products.  She has owned about 10 Macs over the years and is currently surrounded by four of them and says she'll buy more. In some ways, that's one of the most ironic things about this story.  Not only is Apple bullying people for the use of the word "pod," it's bullying its own customers.

Topic: Apple

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  • Peapod?

    They still deliver around where I live. They predated the iPod by years. Shouldn't they sue Apple?
    slopoke
    • Peas, yet

      Peas on Apple!
      Brownshoe Sailor
  • PODS

    Am I the only one that thought PODS were the big containers that you can have shipped to your house, store goods, and have hauled to a storage unit?? Of course, that PODS means Portable On Demand Storage.
    Wait a minute, isn't that kind of what an Apple is?? lmao
    boilers78
  • There must be an email somewhere ...

    I'm sure some smart lawyer at Apple realized the difficulties that might surface if the company used such a common word as 'pod' within its 'iPod' brand -- and probably wrote an email warning as much in the run-up to the launch, urging the company to find a more defensible name as its trademark.

    How embarrassing it would be for Apple if that email were to turn up in the public domain now ...
    phil wainewright
  • What about those storage units called PODS ?

    Maybe Apple is only after the little, easy one's that won't fight back.
    BitTwiddler
    • ..and desk drawers...

      ..I've worked in many offices where the desk drawers on wheels were called pods - but did anyone think to trademark it?

      Also Apple is following a proud industry tradition... I recall Zilog attempted to trademark the letter "Z" at one point.

      Sigh.
      rafe01
      • Payment On Death (or some time thereabouts)

        I bet Zorro would've been [i]thoroughly[/i] pissed had that gone through. Not to mention Nissan/Datsun.

        I suppose PODcasts will now belong to Apple as well if the trademark app goes through. Groups of whales and birds will now have to wear the Apple logo if they're to be referred to as 'PODS'. Whole genus (genii?) of the animal kingdom will have to change their classifications in response to Apple's fanatical legal division. Good thing Krubrick is gone; editing Dave Bowman's plea to HAL to 'open the POD bay doors' would've been too much for the poor guy to take. Not bad for a company that got their [i]own "original"[/i] identity from the Beatles.

        Apple, WTF are you thinking? Like Disney?

        Oh, yeah...sits on THAT board, too, doesn't he?
        flatliner
    • Not really there stupid enough to try it.

      They probably just never had the idea before or there working on it. POD's would counter sue in the millions or billions of dollars. I would love to see that one.
      IceTheNet9
  • Webster's Beware!

    When speaking of human languages, hey, I am a true believer. Let?s face it, without spoken words we?d be communicating with one another with a series of grunts and stick-poking.

    In today?s highly competitive and hyper-fueled business environment, protecting one?s intellectual property requires vigilance, enforcement, and self-restraint. Businesses also need a brain. Common sense, what happened to ye?

    Apple goes after a small business owner to prove that Apple does indeed ?own? the word ?pod?. Yep, let?s go ahead and mark that word out of our respective dictionary. Take a black permanent marker and scrub that word right out of there. Oops. Take care. Those dictionary pages are quite thin so you?ve probably wiped out the word ?potentiate?. Oh, well. That word sucks anyway, right?

    POD. According to Apple, whose name and trademark resembles a piece of fruit to which farmers must now refer to as ?red, sometimes green crisp, tree-grown fruit?, the word ?POD? belongs to them. Let?s think about that? On the surface, they have a point. A flagship product produced by Apple is called the ?iPod?. It has the letters ?p?, ?o?, and ?d? in its name. Case closed. Yep, they own it now.

    Now let?s take a closer look. The infamous AAC-playing device upon which Apple sells compliant music data files which will only play on non-AAC compliant music-playing devices after tremendous effort, is called ?iPod?. It is not called ?Pod?. It has the letter ?I? at the beginning of its name. ?iPod?. So, Apple does not own the word ?pod? or the combination of those three letters.

    In their defense, sure they want to protect their intellectual property. That?s their right. Consumers and businesses not associated with Apple Computer, Inc., however, have the free right to use whatever letters of the alphabet that they want. Apple can protect the fully registered name ?iPod? but they have no right to force the rest of the world to respect any combination of letters contained within that trademark name. If we were to apply their logic, few words would remain in the English language and we would then be forced to return to a system of grunts and stick-poking. No thanks.

    Apple attorneys have their work cut out for them. If they are true in their concerns for their coveted trademark, then they must be willing to rewrite English and world-wide lexicon to abolish all references to the word ?pod? which fall into current use. Here?s an English lesson for Apple, a listing of definitions for the word ?pod?:

    A school of marine mammals, such as seals, whales, or dolphins. (Sorry, Willy)
    A dehiscent fruit of a leguminous plant such as the pea. (just when kids needed an excuse NOT to eat them)
    A casing or housing forming part of a vehicle. (now to be known as a ?casing? as in ?I am driving my casing?)
    The lengthwise groove in certain boring tools such as augers. (I can foresee massive wood-workers strikes)

    Hey, we use the letters ?pod? to describe things, too like:

    Pseudopod (those poor amebas are gonna need a new way to slime around)
    Prince of Darkness (well, it was always easier to say ?Satan? anyway)
    Payable on Death (yikes! Maybe its better that we know banks call it this)
    P.O.D. (a rock band for you non-rock band types)
    Ping of Death (a computer attack, not the same as ?Pong of death?, to play the video game Pong until you die)

    I came up with a list of nearly 20 uses of the word ?pod? and almost as many definitions of that same word. When one looks at the words with ?pod? used as a suffix, then the hole gets deeper. My point is thus: Apple Computer, Inc., get a clue. A woman?s Spandex wrap called ?pod-whatever? does not play AAC files, doesn?t contain the Apple trademark symbol, and really could be applied to any device inside or outside the computer industry. Here?s a suggestion: why not concentrate on making an iPod battery that doesn?t die after a year?s use and one which doesn?t cost nearly as much as a new iPod? Here?s another suggestion: why not try giving your iTunes customers a choice between AAC and MP3 formats so people who don?t necessarily want your non-FM tuning, battery-chewing music players could actually use their purchases?


    robert turner
    bobhog
  • WELL...... Once again we see.......

    ......... some bigtime corporate carnivores bounding across the landscape to devour some lesser creations attempt to survive. That's the bottom line in this rediculous behavior methinks.....
    Senlac_Hill
  • POD in Mouth Disease

    Why stop at products that are only remotely related to
    computers? )the only connection being, products that require
    electrical power.

    I think to be consistent, Apple should send these letters to
    Northrup, Burpee and all manner seed companies for their PEA
    POD seeds.

    And to every foot doctor in the world who uses the professional
    term PODiatrist

    And to the Chamber of Commerce of PODunk, Iowa.

    IMNSHO, Apple Computers has been contaminated with Apple/
    Yoko Ono's wild and woolly thinking that the Name is the Thing,
    and that people are too dumb to know the difference. The Judge
    in the aforementioned case credited the public with more
    intelligence than Yoko Ono. So there is one awake on the Bench.
    Let's hope there are more.

    My favourite scary movie, Invasion of the Body Snatchers,
    predates all of this brouhaha by nearly 50 years. Methinks Apple
    should rethink their position. They may find themselves
    bedfellows with some peculiar seed-cases.
    MouseCalls
    • Podiatrist is the first thing that

      Came to mind with me too. So I guess that their infringement case is wooooo far out. Sorry Apple but you aren't that big. I have no I-POD and will never get one and never pay 99 cents for song I have not heard at least five times all the way through. Also I have heard and been to a Podiatrist long before that garage get together.
      Your really reaching. Don't break your nose on the sky.
      mrobzo
  • how will they stop PODcasts??

    What is Apple going to do sue everyone that POdcasts?? Doesn't that usage infringe??
    pgccc
    • RE how will they stop PODcasts??

      Of course it "infringes" since Apple computers are more than likely used to produce podcasts, and the IPod is used to play them. I've been an Apple supporter and user for a long time but this nit-picking on their part ranks right up there with the RIAA and is making me rethink.
      robertm2000
  • All in the Game

    Surely is reminiscent of another corpse ["corporation" (from the root corpus)] which stomped others into the ground for using a slightly modified everyday term to describe their operating system.
    If it is good for one corpse to stomp people into the ground, then it is also proper for another corpse to stomp on the "little" people.
    Interesting how worms crawling up out of a cesspool seem to feel obligated to speak of others as "little" people.
    JohnMinn
  • Before iPod there was the POD

    Quite a few years before the iPod came out, Line 6 made a digital effects unit for guitars. It's still quite popular, and it's still called POD.

    See them here: http://www.line6.com/products/pods/

    I don't expect Apple to trademark POD in the United States anytime soon.
    paul.beaudoin9
    • Trademarked in Europe.

      I must be in the non English speaking parts of Europe where POD means od all.
      I would be surprised if it got trademarked in Great Britain or Ireland as of course it is a common word used to discribe a container.
      I sure hope the British do not allow a trademark
      That will really stink.
      clockmendergb9
    • Maybe a business opportunity

      Seems 'Line 6' can sue Apple.

      If Apple pays $10,000 for someone to change their name, seems like a good business opportunity for those creative minds to take advantage of.

      Any contact manufactures out there.. like in 'EyePOD' (Portable Occular Device!).
      kenny_bunk
  • Reminds me...

    Of the PLzip-PKware wars back in the DOS days, albeit not exactly the same issue, but if they'll fight over who's algorithm's better why not...P-erfect O-riginal D-ud.
    john_galt9
    • ?

      Who the heck is John Galt?
      shraven