Cisco/Apple: The dog that did not bark in the night

Cisco/Apple: The dog that did not bark in the night

Summary: In the continuing saga of the Cisco/Apple battle over the "iPhone" name, two trademark lawyers duke it out over whether or not Cisco's ownership of the mark is in question. Did Cisco do what it takes to keep the name?

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TOPICS: Cisco
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Last week's article pointing out questions surrounding Cisco's ownership of the "iPhone"iPhone sticker from eBay trademark generated a huge amount of interest. It was picked up by slashdot, digg, and even inspired an eBay auction of one of the iPhone stickers. As you can imagine I've been inundated with feedback on this issue, including a response from Cisco on the whole thing.

Some of the most interesting comments came from other trademark lawyers who disagreed with parts of Jay Behmke's analysis. The most detailed rebuttal came from Martin Schwimmer, a trademark lawyer and partner in the Schwimmer Mitchell Law Firm, who had objections to three sections in particular:

1. Possible misstatements in Cisco's Declaration of Use.

[Schwimmer] Cisco did not allege continuous use nor did it have to -- its Section 8 alleged merely use at the time of filing, May 06.  In fact it's failure to file a declaration of continuous use, called a Section 15 affidavit, was conspicuous by its absence, but such a filing was not mandatory to preserve the registration.

Jay Behmke responds that indeed, there was a technical mistake in his analysis but it doesn't change his basic point that "Cisco fabricated a non-existent product to use as their specimen of trademark use". He goes on to say:

[Behmke] After a trademark registration has been effective for 5 years, there are two declarations that a registrant can file:

Section 8 -- this is a mandatory declaration: if you fail to make it, your trademark will be canceled. From the USPTO website:

"Between the 5th and 6th year after registration the owner must file a Declaration of Continued Use or Excusable Nonuse (also known as a Section 8 Declaration). Failure to file the Section 8 Declaration results in the cancellation of the registration. (There is a 6-month grace period.)" [more on page 2...]

[Behmke] A Section 8 declaration requires only "a sworn statement filed by the owner of a registration that the mark is in use in commerce."

Section 15 -- this is an optional declaration: you are not required to make it. From the USPTO website:

"After 5 consecutive years of continuous use in commerce following registration the owner may file, but is not required to file, a Declaration of Incontestability under Section 15 of the Trademark Act if, among other things, the mark is registered on the Principal Register."

When a Section 15 declaration is made, and accepted by the USPTO, no person may contest the validity of your trademark registration.

In the Section 8 declaration, you allege use, but not necessarily continuous use. In the Section 15 declaration, you have to allege continuous use. It is also possible to make a combined Section 8 and 15 Declaration at one time. In a combined declaration, you allege continuous use and it covers both points.

A majority of trademark users file the combined declaration. When I wrote my analysis, I was thinking of the combined declaration. I hadn't focused on the fact that Cisco had only filed the Section 8 declaration. Given that they only filed Section 8, my use of the word "continuous" was unnecessary and incorrect.

However, Cisco still has to claim use of the trademark for the Section 8 declaration to be valid, and by filing a picture of an existing product box with an "iPhone" sticker which was not currently for sale in that form, they created some uncertainty about the validity of this declaration. They were not selling iPhones in this box in May 2006, or before.

This lawyer (Schwimmer) also points out the curious incident of what the dog did not do in the night: Cisco did not file the Section 15 declaration of continuous use. It shows that they did not believe that they could truthfully say that they had been using the trademark continuously since it was registered in 1999. If they had filed the Section 15 declaration, they would have made their trademark incontestable, which would have made Apple's task of getting the trademark registration canceled much more difficult. So, despite the obvious advantages of filing this declaration, they didn't do it. I find that telling as to their own understanding of their use of the trademark.

2. Alleged inconsistency between the May 06 specimen and the Dec 06 'roll out.'

[Schwimmer] The box existed in time to submit in May 06 - Cisco was possibly taking steps that would constitute trademark use in May 06, making the May 06 declaration of use correct.  The Dec 06 roll-out suggests that the May 06 declaration, containing the box, was not a sham.

Other posters made the same point - that Cisco was working on a roll-out of an iPhone and that could constitute use. Jay disagrees:

[Behmke] I believe that the only "use" of a trademark that counts is the sale of a product under that name in interstate commerce. The point of a trademark is to distinguish your products from those of others. If you aren't selling products, you have nothing to distinguish. So, in my opinion, the failure of Cisco to have a product in the market in May 2006 indicates weakness in their position.

3. The legal standard - use or abandonment.

[Schwimmer] The legal standard is not whether Cisco was using by May 06, but whether it hadn't abandoned the mark ever, prior to May 06.

Jay agrees: 

[Behmke] That's the issue. Did Cisco abandon their mark prior to May 2006? The answer will depend on an analysis of all of the facts, which we don't have. From what I have seen, Cisco stopped selling iPhones in 2000, but maintained a [static] web page for customer support for iPhones up through 2006.

Does this web page constitute sufficient use of the trademark? That will be for a judge to decide.

Conclusion

So has Cisco essentially lost its trademark rights in the US or not? At this point, Jay "would not be prepared to say that," adding that the answer depends on all the facts including:

  1. What use has Cisco made of the trademark since 2000?
  2. Has Cisco defended its trademark against other users/infringers?
  3. Is a cell phone a different good for trademark purposes than a VoIP phone?

These and other questions would have to be answered in a trial, if it comes to that.

[Behmke] That what litigation is for - to get all the facts. Overall, I would say that it looks like Apple has an uphill battle. Registration of a trademark is not the crucial issue. Trademark rights come from use. Registration only recognizes the rights you have obtained from use. Cisco (and its predecessor Infogear) clearly have first use. The question is whether they abandoned these rights when they stopped selling this product line.

Martin says that Apple's position is not without its weaknesses either:

[Schwimmer] If push comes to shove, I am sure that Cisco will challenge Apple's alleged Ocean Telecom filing.  For reasons that have to do with (1) arcane US intent-to-use provisions and (2) the Paris Convention, which applies to the Trinidad angle here, Apple's Feb 06 priority date is not beyond challenge, either.

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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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10 comments
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  • No conflict - change name - iMOBILE

    too many grey areas in this case - long legal battle - a company from Canada already using iPHONE - just change the name already - go mobile with iMOBILE (but maybe it's not available)Keep the "i" moving
    Techpert
    • Two problems

      The first issue is that Cisco has filed suit for a federal trademark violation. That needs to resolved. As it is beyond doubt that Jobs violated the iPhone trademark, the only resolution from Apples perspective is to prove that Jobs violated a trademark that had been abandoned and therefore didn't exist.

      The second problem is that iMobile is a common misspelling of immobile which doesn't exactly portray a great image for a mobile phone.

      However I think that you are spot on, Apple should change the name and simply reach a limited out of court settlement with Cisco.
      nmh
    • LOL are you serious? immobile???

      nt
      john.murray9
  • Cisco Response on our iPhone Trademark

    We've been following our iPhone trademark issue in the blogosphere closely and it's been interesting to see the commentary from some posters suggesting that somehow Cisco either in the US or Europe didn't meet the requirements to maintain the iPhone trademark. Our response is pretty simple: We have met all elements required by all authorities to maintain our mark. We've been pretty direct about the fact that we've been shipping the iPhone since last spring. This entry at http://blogs.cisco.com
    JohnEarnhardt
    • Questions for Cisco

      Thanks for taking the time to reply here John. There are a few lingering questions that perhaps you help clarify for us:

      (For those who don't know it, John Earnhardt is Senior Manager of Cisco's Global Media Operations).

      1. When the CIT200 first came out, it didn't have an "iPhone" label on it, is that correct? If so, what was the first date in 2006 when a retail customer could go out and buy the CIT200 and see the "iPhone" name on the product?

      2. There are several "iPhone" products on the market not made by Cisco/Linksys. For example, http://www.daydeal.com/product.php?productid=14409 and http://www.telecomwholesalecentral.com/servlet/Detail?no=163 , and then of course there's http://www.iphone.com , a company that offers Voice over IP solutions. Has Cisco taken any trademark action against these products/companies?

      3. If you ask 10 people on the street "Who makes the iPhone", most are going to say "Apple". This was true even before the announcement this month. If you search for "iPhone" on Google, most of the hits are Apple related (*). In your opinion, does this association in people's minds have any bearing on the legal issue of who owns and can use a trademark?

      Thanks,
      --Ed

      * As of this writing, on google
      "-apple +iphone +cisco" returns 1.5 million hits, and
      "+apple +iphone -cisco" returns 88.1 million hits.
      Ed Burnette
      • Reply from Cisco

        Ed:

        As stated previously, we have met all elements required by all authorities to maintain our mark. We will also save the litigating for the court. Apologies for not being able to go into more specifics, but you must understand that we can't litigate this issue on a blog.

        Best,

        John Earnhardt

        P.S. I have enjoyed your posts and comments from your readers...a smart group.
        JohnEarnhardt
  • Slogans that never worked in history

    On the menu of a Swiss restaurant:
    Our wines leave you nothing to hope for.

    In and advertisement by a Hong Kong dentist:
    Teeth extracted by the latest Methodists.


    In a Bangkok temple:
    It is forbidden to enter a woman even a foreigner if dressed as a man.


    Cracking an international market is a goal of most growing corporations. It
    shouldn't be that hard, yet even the big multi-nationals run into trouble
    because of language and cultural differences. For example...

    When Braniff translated a slogan touting its upholstery, "Fly in leather,"
    it came out in Spanish as "Fly naked."

    Coors put its slogan, "Turn it loose," into Spanish, where it was read as
    "Suffer from diarrhea."

    Chicken magnate Frank Perdue's line, "It takes a tough man to make a tender
    chicken," sounds much more interesting in Spanish: "It takes a sexually
    stimulated man to make a chicken affectionate."

    When General Motors introduced the Chevy Nova in South America, it was
    apparently unaware that "no va" means "it won't go." After the company
    figured out why it wasn't selling any cars, it renamed the car in its
    Spanish markets to the Caribe.

    Ford had a similar problem in Brazil when the Pinto flopped. The company
    found out that Pinto was Brazilian slang for "tiny male genitals". Ford
    pried all the nameplates off and substituted Corcel, which means horse.

    When Pepsi started marketing its products in China a few years back, they
    translated their slogan, "Pepsi Brings You Back to Life" pretty literally.
    The slogan in Chinese really meant, "Pepsi Brings Your Ancestors Back from
    the Grave."

    When Coca-Cola first shipped to China, they named the product something that
    when pronounced sounded like "Coca-Cola." The only problem was that the
    characters used meant "Bite the wax tadpole." They later changed to a set
    of characters that mean "Happiness in the mouth."

    A hair products company, Clairol, introduced the "Mist Stick", a curling
    iron, into Germany only to find out that mist is slang for manure. Not
    too many people had use for the manure stick.

    When Gerber first started selling baby food in Africa, they used the same
    packaging as here in the USA - with the cute baby on the label. Later
    they found out that in Africa companies routinely put pictures on the
    label of what's inside since most people can't read.

    In Chinese, the Kentucky Fried Chicken slogan "finger-lickin' good" came out
    as "eat your fingers off."

    The American slogan for Salem cigarettes, "Salem - Feeling Free," got
    translated in the Japanese market into "When smoking Salem, you feel so
    refreshed that your mind seems to be free and empty."

    When Parker Pen marketed a ballpoint pen in Mexico, its ads were supposed to
    say "It won't leak in your pocket and embarrass you." However, the
    company mistakenly thought the spanish word "embarazar" meant embarrass.
    Instead the ads said that "It wont leak in your pocket and make you
    pregnant."

    An American t-shirt maker in Miami printed shirts for the spanish market
    which promoted the Pope's visit. Instead of the desired "I Saw the Pope"
    in Spanish, the shirts proclaimed "I Saw the Potato."

    Chicken-man Frank Perdue's slogan, "It takes a tough man to make a tender
    chicken," got terribly mangled in another Spanish translation. A photo of
    Perdue with one of his birds appeared on billboards all over Mexico with a
    caption that explained "It takes a hard man to make a chicken aroused."

    Hunt-Wesson introduced its Big John products in French Canada as Gros Jos
    before finding out that the phrase, in slang, means "big breasts." In
    this case, however, the name problem did not have a noticeable effect on
    sales.

    Colgate introduced a toothpaste in France called Cue, the name of a
    notorious porno mag.

    In Italy, a campaign for Schweppes Tonic Water translated the name into
    Schweppes Toilet Water.

    Japan's second-largest tourist agency was mystified when it entered
    English-speaking markets and began receiving requests for unusual sex
    tours. Upon finding out why, the owners of Kinki Nippon Tourist Company
    changed its name.
    vbp1
  • iPhone Sticker Reappears

    The eBay auction of the iPhone sticker mentioned previously, which had disappeared, is now back. Now the item number is 250074384171. I don't know why it disappeared but the same seller has it back up again.
    jobalt
  • Cisco/Apple and the iPhone

    Something else to condiser is the court of public opinion. When someone says i<anything> what do you think of? I think of Apple and the iPod. So I would say that iPhone is already a brand for Apple without doing any work. Even Cisco would have had an uphill battle with that brand and it may be why they ended up dropping the product.
    Jim.Adams@...
  • Response from Cisco

    Ed:

    As stated previously, we have met all elements required by all authorities to maintain our mark. We will also save the litigating for the court. Apologies for not being able to go into more specifics, but you must understand that we can't litigate this issue on a blog.

    Best,

    John Earnhardt

    P.S. I have enjoyed your posts and comments from your readers...a smart group.
    JohnEarnhardt