Cisco lost rights to iPhone trademark last year, experts say

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.
Written by Ed Burnette, Contributor

[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".

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

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

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