Cisco sues Apple over iPhone trademark

Cisco sues Apple over iPhone trademark.
Written by Adrian Kingsley-Hughes, Contributing Writer

Looks like things aren't as sorted over the iPhone name as we thought they were - Today Cisco Systems have announced that they are suing Apple over the iPhone trademark.  Cisco have held the iPhone trademark since 2000 when it acquired InfoGear Technology Corp, the company which originally registered the name.

Cisco claim that Apple had on numerous occasions over the past few years asked for permission to use the iPhone trademark.  Cisco had presented Apple with the final terms of an agreement the day before Macworld and the big Apple/iPhone announcement.  It looks like things didn't go well and the deal is a no-go for now.  My guess is that Cisco didn't get the paperwork back from Apple as quickly as it wanted and is filing suit to show that it means business.  I expect that this matter will be resolved before it gets anywhere near a trial.

Copy of the complaint filed by Cisco can be found here.

Here's the press release from Cisco:

SAN JOSE, Calif., January 10, 2007 - Cisco® today announced that it has filed a lawsuit in the United States District Court for the Northern District of California against Apple, Inc., seeking to prevent Apple from infringing upon and deliberately copying and using Cisco's registered iPhone trademark.

Cisco obtained the iPhone trademark in 2000 after completing the acquisition of Infogear, which previously owned the mark and sold iPhone products for several years. Infogear's original filing for the trademark dates to March 20, 1996. Linksys, a division of Cisco, has been shipping a new family of iPhone products since early last year. On Dec. 18, Linksys expanded the iPhone® family with additional products.

"Cisco entered into negotiations with Apple in good faith after Apple repeatedly asked permission to use Cisco's iPhone name," said Mark Chandler, senior vice president and general counsel, Cisco. "There is no doubt that Apple's new phone is very exciting, but they should not be using our trademark without our permission.

"Today's iPhone is not tomorrow's iPhone. The potential for convergence of the home phone, cell phone, work phone and PC is limitless, which is why it is so important for us to protect our brand," Chandler concluded.

With its lawsuit, Cisco is seeking injunctive relief to prevent Apple from copying Cisco's iPhone trademark. For more information on the Cisco iPhone product line, please visit www.linksys.com/iphone.

[Updated: Jan 10, 2007 @ 5.45 pm]  Mark Chandler, Cisco's SVP and General Counsel, offers insight on Apple's infringement of Cisco's iPhone trademark.  Here are some key highlights [emphasis mine]:

Today’s announcement from Cisco regarding our suit with Apple over our iPhone trademark has spurred a lot of interesting questions. Most importantly, this is not a suit against Apple’s innovation, their modern design, or their cool phone. It is not a suit about money or royalties. This is a suit about trademark infringement.


So, I was surprised and disappointed when Apple decided to go ahead and announce their new product with our trademarked name without reaching an agreement. It was essentially the equivalent of “we’re too busy.” Despite being very close to an agreement, we had substantive communications from Apple after 8pm Monday, including after their launch, when we made clear we expected closure. What were the issues at the table that kept us from an agreement? Was it money? No. Was it a royalty on every Apple phone? No. Was it an exchange for Cisco products or services? No.


At MacWorld, Apple discussed the patents pending on their new phone technology. They clearly seem to value intellectual property. If the tables were turned, do you think Apple would allow someone to blatantly infringe on their rights? How would Apple react if someone launched a product called iPod but claimed it was ok to use the name because it used a different video format? Would that be ok? We know the answer – Apple is a very aggressive enforcer of their trademark rights. And that needs to be a two-way street.

This lawsuit is about Cisco's obligation to protect its trademark in the face of a willful violation. Our goal was collaboration. The action we have taken today is about not using people’s property without permission.

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