Maybe Apple CEO Steve Jobs should practice his new iPhone to call a good trademark attorney .
That ’s the advice of several attorney and IT analysts regarding Apple ’s conclusion to call its new combination wandering headphone , iPod and Internet communication gadget an “ iPhone”—even though that name is a registered trademark held by Cisco Systems .
For about two years , Apple negotiated with Cisco to use the iPhone name , which would dovetail with its live iPod , iMac and iTunes ware - naming convention . Those negotiation continue right until Tuesday , when Jobs stood on the leg at San Francisco ’s yearly Macworld Expo and announced the June release of Apple ’s iPhone .
Cisco subsidiary Linksys has its own iPhone . But instead of sign a offer contract submitted Monday nighttime by Cisco , Apple made the iPhone announcement without a great deal in place . Cisco ’s response : a 24 - Thomas Nelson Page trademark misdemeanour lawsuit against Apple .
“ It front like Cisco and Apple were negociate for quite a while , and at the last mo Apple pulled away and start on with Steve Jobs ’ display , ” say Ken Dort , an lawyer at McGuireWoods LLP in Chicago .
The legal fight could offer challenges for both side , he tell . “ Apple contends that the product are materially unlike , so there would be no confusion ” in the marketplace , Dort said . While a judge would apply a series of effectual mental test to make such a determination , Dort said he would probably disagree with Apple ’s contention . “ They ’re close enough and have a fair chance of convergency over clip . ”
While the iPhone is a cell phone , iPod and cyberspace gadget in one , Cisco has been deal a agate line of iPhone mobile phone products under its Linksys brand since too soon last year , according to the company .
On the other hand , Apple has had so much commercial-grade success with its “ i ” series of products — everything from the iBook , iPod , iTunes to the iSight and iMac — that the party may have some strength in court using such an argument , Dort said .
Cisco has owned the iPhone stylemark since 2000 , but it had n’t really used the name until last year , he say . Cisco said it incur the iPhone trademark after acquiring InfoGear Technology , which sold stand - alone twist to reach the Internet without a computer . The original iPhone trademark filing by InfoGear dates back to March 20 , 1996 , agree to Cisco .
One other legal issue stands in the direction for both companies , according to Dort . Under U.S. stylemark practice of law , a stylemark must be renewed every five class . But Cisco did n’t file a renewal for the iPhone name within the prescribed five - year time frame . Instead , Cisco filed its renewal program last May , only 12 days before a six - calendar month grace point would have drop dead .
“ The outcome of all that is that Apple … may be get up a defense that Cisco effectively abandoned the [ trade]mark years ago , ” and that the enrollment should be cancel , Dort said .
Another engineering attorney , Diana McKenzie at Neal , Gerber & Eisenberg LLC in Chicago , said Apple has “ made their talks a million times worse for themselves ” for any succeeding talk with Cisco . “ It ’s the classic mistake ; lawyer are invariably saying ‘ do n’t put yourself in a spot where you have no leverage . ’ The only matter good here is that this reward the mathematical product name [ in the market place ] if they can end up start out it .
“ Somebody was really not thinking , ” McKenzie said . “ It ’s such a big mistake ” to use a name that you do n’t already have legal right to use . “ Any lawyer would differentiate you : Do n’t do it . ”
Behnam Dayanim , an lawyer at Paul , Hastings , Janofsky & Walker LLP in Los Angeles , say it was “ reckless of Apple … to publicly foretell a name under that kind of linguistic context . Even if Apple thinks Cisco has forfeited its rights to the [ trade]mark in some way , it evince questionable judgement . My impression is that Apple has been highly aggressive in promoting its i - brands . This could be another example of trying to bowl through [ the position ] no matter what . ”
Henry Sneath , an lawyer at Picadio Sneath Miller & Norton PC in Pittsburgh , Pa. , said that hallmark law is a “ very murky , complicated , very fact - specific law ” that gives great discretion to judges , based upon such factors as whether hallmark issues create confusion in the marketplace for consumers . “ Cisco will have to prove likelihood of confusion , ” Sneath said .
Apple probably has legal defenses that will make its actions seem more reasonable , Sneath said , such as claims against the hardiness of the original earmark . But for Apple , a large penalty looms if the lawcourt finally rule against it — penalty for willfully infringing on a trademark can be treble , and the motor lodge can order payment of full legal fees for the plaintiff , he read .
“ It will be a great , expensive lawsuit , ” Sneath said .
Jack Gold , an analyst at J. Gold Associates in Northboro , Mass. , said he believes Cisco will prevail because it has clearly been selling Cartesian product with the iPhone name for a long time . “ Cisco has a VoIP product that they have sold for several year , and one is the iPhone , a VoIP - found sound system , ” he pronounce . “ Cisco was trying to accomplish an agreement with Apple for some time over the name and imagine they had an agreement , but apparently [ they ] did not . ”
Apple ’s decision to habituate the name anyway “ is a sign of arrogance on Apple ’s part , since they acknowledge about ” Cisco ’s use of the name , Gold state . “ Apple just thinks that because they are Apple they can do anything they want . ”
“ Of course , Cisco is going to defend itself , ” he sound out . “ Cisco has as many , if not more , lawyers than Apple does . I would bet when push button comes to shove , with Cisco ’s establish steel , they are going to win . I ca n’t see them lose . I ca n’t see how Apple could persevere . ”
Rob Enderle , an analyst at the Enderle Group in San Jose , say Cisco “ clearly owned ” the iPhone name . “ Any name hunting would have showed that . Cisco is monied and unregenerate , Apple is monied and stubborn , ” Enderle said . “ I think there ’s a pretty good chance Cisco could prevail here . It looks like someone is just saying , ‘ Hey , we do n’t want to trace the rules . ’ ”
In a courtroom , that may not be the beneficial attitude to have , he say . “ There ’s a practiced prospect the judge will have a Cisco - based earphone session on his desk . It ’s one of those casing where it could get ugly fast . ”
The Cisco causa alleges that Apple infringed on its iPhone hallmark and that with its Tuesday announcement Apple is below the belt competing with Cisco . The lawsuit is seeking a jury test and unspecified pecuniary damages .
Cisco spokesman John Noh said Thursday that Cisco believed that line ’ declaration of the Apple iPhone at Expo meant that the company agreed to the terms set out in their negotiation and had sign and approved the contract bridge . “ At that time , we were still expecting them to institutionalize over an sanction agreement , ” Noh aver . or else , Cisco learned that Apple did n’t sign the deal and made the promulgation anyway , he state .
Apple spokesman Steve Dowling did not repay several earpiece substance Thursday .
