Cisco lost rights to iPhone trademark last year, experts say

Cisco lost rights to iPhone trademark last year, experts say

Summary: ZDNet has uncovered new information that shows Cisco may not own the iPhone trademark after all, having abandoned it last spring due to lack of use. If true, this could mean that Apple is free to use the name for its own products.

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TOPICS: Cisco
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[Note: Be sure to check out the followup article. -Ed]

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.

According to Jay Behmke, a partner at CMPR who specializes in trademark law,

The Cisco iPhone trademark was registered 11/16/1999 (Reg. No. 2293011). In order to keep a trademark registration active, you have to file a Declaration of Use on or before the sixth anniversary of the registration date, in which you state, under penalty of perjury, that you have been using the trademark continuously during that period. The sixth anniversary would have been 11/16/2005.

Cisco did not file the Declaration of Use by 11/16/2005, which if they had been using the trademark would seemingly have been easy to do. However, the USPTO gives you an extra six months grace period, if you pay an extra fee. This grace period would have expired 5/16/2006. Cisco filed a Declaration of Use on 5/4/2006 which kept their registration active. Had they not filed, their registration would have been canceled.

With the Declaration, you are required to file a copy of a label or other packaging showing the trademark in use. Cisco filed a picture of the box for the Linksys iPhone.

 CIT200 - iPhone or not?

A cropped version of the picture filed by Cisco is shown above. You can find the full image on the USPTO web site. The picture shows a box for the Linksys CIT200 Cordless Internet Telephony Kit, with a sticker showing the word "iPhone" affixed to the back, outside the shrink wrap. The front of the box is not shown, but it doesn't appear that the word iPhone appears anywhere else on the box.

A search of product reviews of the CIT200 shows no mention of the word iPhone [1]. The first mention appeared in December 2006 when Cisco unveiled a series of new products bearing the iPhone name. It was not until then that the CIT200 was rebranded under the iPhone moniker [2].

Tom Keeting, CTO of TMC Labs writes:

In fact, this seems to be true since the Linksys CIT200 and the Linksys CIT310, (both of which I reviewed) are now called the iPhone and were only recently renamed on December 18th. Specifically, each Linksys/Cisco product is called the Cordless Internet Telephony Kit or iPhone for short. The PDF manuals still reference the old name, such as this manual for the CIT200 and I couldn't find a single reference to the word "iPhone" in the manual even though I see "iPhone®" with the registered trademark throughout their website. I guess they missed that. Time to re-print/convert those PDFs!

This information indicates that Cisco did not actively offer a product named "iPhone" between 1999 and December 2006. But they knew Apple was interested in the name because Apple had approached them and negotiations were ongoing. Jay Behmke writes:

If Cisco didn't launch a product using the iPhone name, their trademark registration would be canceled and they would have no bargaining chips with Apple. So in order to keep the trademark active, they had to file the Declaration of Use, and start selling a product under that trademark.

It is possible that the Declaration of Use is defective, as there was no continuous use, and the sample that Cisco submitted was for a product not released until 7 months later. The fact that the Declaration of Use was submitted only days before the deadline expires gives me the impression that they were scrambling to get a product to market, and had to file the Declaration before the product was ready.

If Apple can prove in federal court that the Declaration of Use contained misstatements of fact, i.e. that there was no continuous use, then Cisco's registration can be canceled. This could clear the way for the next company in line for the iPhone trademark, Ocean Telecom Services LLC (widely regarded as a front company for Apple). It could also explain why Apple decided not to sign the agreement Cisco proposed. Behmke:

Without the registration, Cisco and Apple would still have a trademark dispute to resolve, but Cisco will have a harder time proving that it has valid trademark rights.

Cisco acquired the trademark when it purchased Infogear in 2000. Ironically, Infogear was granted the trademark after it was abandoned by its previous owner, a company called "Cidco".

Notes:

[1] Reviews of the CIT200, which do not mention "iPhone":

[2] The Cisco/Linksys iPhone launch in December 2006:


Related articles:

Topic: Cisco

Ed Burnette

About Ed Burnette

Ed Burnette is a software industry veteran with more than 25 years of experience as a programmer, author, and speaker. He has written numerous technical articles and books, most recently "Hello, Android: Introducing Google's Mobile Development Platform" from the Pragmatic Programmers.

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63 comments
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  • Well now...

    Ain't that special. Maybe the system does work after all. I've always said Patent Hording is no better than domain hording, and should not be allowed.

    "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."
    BitTwiddler
  • Dammit!

    If this is true, then perhaps Steve Jobs isn't the super-evil Satanic genius he's been made out to be. Hate to see his reputation fall off like that.
    tic swayback
    • and I had such high hopes for him...<sigh> (NT)

      (NT)
      Badgered
      • Give it up

        Bill Gates is the anti-christ. We all know that.
        shraven
  • Will all those who used Arrogant Apple, Stupid Apple

    Typical Steve Jobs type comments please report to the spanking machine and assume
    the position.

    Pagan jim
    Laff
    • Trust me...

      It's Apple that is going to take the beating here. Believe it.
      No_Ax_to_Grind
      • Not likely....

        No one trusts your posts. Faced with the explanations in the article, you can still flatly deny, without any counter proof, that the statements are completely false!

        Your out of your league here....TRUST ME!
        linux for me
      • What?

        You've got less credibility than the white house and are more biased than fox news.

        Apple has pulled a few stunts that were not real consumer friendly but I still admire Steve Jobs far more than Bill Gates. Just so you know, I make a living from windows, use Linux at home and futz around with osx from time to time.
        skeptic tank
        • "more biased than Fox news . . ."

          Easy. Six letters. Three at a time:

          N-P-R and C-N-N

          To name a [biased view] few. Oh, and let us not forget "Rathergate" on CBS. Do us all a favor and keep politics out of this, Skeptic, or I'll feel obliged to respond and make you look foolish.
          brian ansorge
          • I wouldnt say MORE bias.....

            Fox bends over backwards and twists itself like trying too seem unbias and yet still
            remain blantantly bias....good work out I guess!

            Pagan jim
            Laff
          • more biased than NPR and CNN CBS and Fox

            Yeez, that no_ax_to_grind is biased, but you really saying hes that biased. I think the no axe to grind thing is actually a lament- he ground it down about a decade back, and hasn't found anything to replace it with.
            hirez
      • Trust you?

        Let's see, you're the one who predicted that Plays-For-Sure would put iTunes out of business in one year. Didn't you also believe Bill Gates when he said he'd eliminate spam in two years (said in 2004)? Trust you?
        tic swayback
        • clearly NA2G works in senior senior possition for

          some-one. I wonder who? Ha ha, get a real job!
          Flogging dead horses is so passe!
          hirez
      • Trust the Baghdad Bob of TalkBacks?

        Is there anyone that gullible?
        Henrik Moller
        • Democrats!

          [i]Is there anyone that gullible?[/i]


          http://www.righttrack.us/2005/08/26/greatest-movie-line-ever/
          Spoon Jabber
          • Spoon...Daddy O

            You're still not all into that Iraq War scene are you? That's so yesterday and today
            I'm afraid but really let's get real man.

            Look at all it's cost us in treasure both human and well the grean scene you cool
            cat. We are not even close too being done and who knows when it might end? So
            let's all take a deap menthal breath and realize that this whole Nation Building
            scene is not our bag. How many of these can we do? Can we even do the one?
            That has yet to be determined my man. Let's say that a "surge" shows some
            effect...does that mean anything really? Are they done or are they just waiting?
            You know playing it cool until they get their chance to do the whole burning man
            thing again. Will they just adjust as they have done in the past...take some time
            learn a new trick or three and come back into the game man. Then what?

            Let's say it does work...what then? We have an Islamic state who's very
            constitution is based in part on the Quran? Not a problem with me...got's nothing
            against that myself but I'm wondering if all this jive effort is worth the end results
            even "IF" we assume the end results are the best possible. Sounds like a drag to
            me.

            Pagan jim
            Laff
    • This makes more sense

      I'm not apple fanboy (when it comes to iPods, I've been nothing but critical, prior to this past fall), but since the lawsuit was announced, I kept wondering WTH was Apple thinking?

      Now we know. I'm no lawyer, so I don't know who will prevail, but it's pretty clear that Apple has a shot.

      I guess the question I have is did apple file for the trademark before Cisco got their product out? For that matter, does the fact taht Cisco got their product out first mean it's their trademark?

      I don't know. I do know that I'd rather have an Apple iPhone than a Cisco iPhone. That said, over the next 2 years, there's no chance I'd get an Apple iPhone, since they're only on AT&T.
      notsofast
    • Well now Jim....

      Is that a proposition? Sorry, but I'll wait for a better offer thank you.
      xuniL_z
    • Apple people stay clear of the spanking

      machine at all times, even though we get to opperate it. All those other os users are already in the submisive pose, spanking themselves into a frenzy. And boy is it ugly! Criscos entry at the machine will only make it more slipry then it is..... oh no, you have sold me, bugger the apple iphone, I just gotta get me one of those great crisco ones instead.

      What was apple thinking, going up against such an inovative giant as crisco!
      hirez
  • Cisco responds: Official comment from Cisco

    In response to the information presented in this blog, John Noh from Cisco Public Relations wrote me to say that Cisco's official comment is:

    "We maintain that Cisco has taken all actions necessary to satisfy all elements to prove the validity of our trademark under trademark law in the United States and elsewhere where we hold the trademark."

    --Ed
    Ed Burnette