Cisco/Apple: The dog that did not bark in the night
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:
- What use has Cisco made of the trademark since 2000?
- Has Cisco defended its trademark against other users/infringers?
- 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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