Cisco Lost Rights to iPhone Trademark Last Year?

An anonymous reader writes "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."

Old News

iKnow that

--Steve

Re:Old News

RTFA, a front company for Apple is next in line.

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.

umm

oops!

He's not a fan boy, but not a lawyer either

I am pretty sure this means jack. Anybody claiming the use of a trademark receives protection with or without registration. Registration just gets you immediate action in the courts preventing apple from selling anything without hearing from apple. It a

Re:He's not a fan boy, but not a lawyer either

Cisco is registered for the trademark, that much is certain.

The issue here is whether or not their registration can be revoked due to failure to use the trademark. The article mentions that a registered trademark should be in continual use throughout the registration. As Cisco had no "iPhone" product until late in the grace period there seems to be a good case for the registration to be revoked.

Now, as you say they may still be protected, but this opens the door still for Apple to register the trademark. I can hardly think that Cisco will be able to defend a trademark that was revoked against someone else who holds the registration.

TM vs. R

In fact, in the UIS at least you can use "TM" from when you begin the claim, you can use "R" once it's actually registered.

simple solution

Cisco should just rebrand their iPhone product line and call them Apple Phones.

Re:simple solution

I like "Cisc-o-Fone" myself. It's got a retro sound to it. "Disco Stu! Loves his Cisc-o-Fone!"

Re:simple solution

I have a hard time believing that he would ever make an obvious promotional statement like that. Don't you know that Disco Stu doesn't advertise?

Re:

THE SEVENTIES MUST NOT BE ALLOWED TO HAPPEN AGAIN!

I'm afraid that you're pretty much doomed unless you take the cyanide-coated exit. Only 63 more years to go.

Too Late Buddy

1. Unclear, unjustified war in a sovereign nation - Check.
2. National obsession with dance at the expense of expanded consciousness - Check.
3. Horrific fashion - Check.
4. Youth culture co-opted by advertising - Check.
5. Government stomping all over personal liberty - Check.

Sorry, dude, you're too late. The Seventies are back in force.

Those Little Details

Hmmm, this reminds me of those stories that come up from time to time about some big corporation forgetting to renew their domain names. If the outcome of the trademark dispute comes down to this, it will argue strongly for paying attention to the little details. In any case, you can bet corporate lawyers all over the U.S. are going to be checking their trademark papers this weekend!

Re:Those Little Details

Or, better yet, of Universal's lawsuits over the game "Donkey Kong" when it first came out - I saw someone mention it on /. the other day. If you're not familiar with the story, it's a pretty good read [wikipedia.org]. Briefly, Universal sued on the grounds that Donkey Kong was a rip off of King Kong, and lost in part because they'd argued in another recent case that King Kong was a public domain character.

Re:Those Little Details

Hmmm, this reminds me of those stories that come up from time to time about some big corporation forgetting to renew their domain names. If the outcome of the trademark dispute comes down to this, it will argue strongly for paying attention to the little details.

Not at all. If TFA is right, this has nothing to do with 'little details'. The big details are that Cisco had no product called 'iPhone' for years, and recently just stuck a sticker on a picture of an existing product, rebranding it 'iPhone', when renewing the trademark, when no such branding existed in the real world.

Re:Those Little Details

Not at all. If TFA is right, this has nothing to do with 'little details'. The big details are that Cisco had no product called 'iPhone' for years, and recently just stuck a sticker on a picture of an existing product, rebranding it 'iPhone', when renewing the trademark, when no such branding existed in the real world.

I believe that you and TFA are right, Cisco has not used the trademark in marketing their VOIP web/phone system. I'm looking at the box from one (ca. 2002) right now, and it is branded "Cisco IP Phone". Nowhere in the box, on the product or in the manual was it referred to as an "iPhone", "IPhone", "I Phone" or "I-Phone".

For that matter, I've seen the instruments placed on TV shows (e.g. "West Wing") and never seen any "iPhone" branding you would expect for a product placement on TV. Looks like they registered it and blew it off.

Re:Those Little Details

Indeed, it appears less as though Cisco accidently let a valuable trademark lapse, and more like Cisco is attempting to hold onto a trademark they've never used and have no intention of using, for the sole purpose of using it as leverage against Apple. No one has any brand association with the name "iPhone" to any product other than the Apple iPhone anyway.

You're missing the point

To successfully defend a trademark, you have to show you've been consistently using it for years. Cisco couldn't do that - they had to stick a sticker on the outside of a shrink-wrap of another package. Do you not think if they actually *had* a product called the iPhone, they'd have taken a photo of that ?

Score one for the fruit company...

Simon.

In Europe too!

Cisco on brink of losing iPhone name in Europe [theregister.co.uk]

I had to read TFA twice just to be sure that it was actually about the trademark in the US, not Europe.

This is definitely turning out to be a crazy situation. I agree with TFA that this is probably why Apple didn't sign the contract with Cisco after all.

But Cisco has an iPhone already?

Or do the?

http://www.theinquirer.net/default.aspx?article=36 455 [theinquirer.net]

You Know What This Proves?

The existence of the iTimeMachine. Doc Brown's gonna shit.

This is yet another flagrant incursion into history and unforgivable mussing of the timeline by Steve Jobs, a monster whose rampage will never end until our hard-working scientists develop a weap

Re:

The existence of the iTimeMachine.

So thats where those backdated stocks came from...

Pity

That's a pity because I would like to be able to buy an iHandy next year when the Apple moblie phone comes out.

USPTO website

I did a trademark search on uspto.gov, and it appeared to me that Cisco's iPhone trademark is listed as "LIVE", not "DEAD". IANAL, 'tis true. But we are talking about a ZDNet story, so I'm auto-skeptical.

Re:USPTO website

TFA goes into and explains why it still shows as 'live' - this is a legal issue not a simple "is it in the registry" issue.

Re:

That's because Cisco did apply in time according to the rules, but the question remains if they were actually actively using the Trademark or not. Apple will try to show that they did not have a single product out called the iPhone and thus, the applicatio

it all just a plot to ....

.... promote "Iphone" which is not really my phone but his phone as not third part apps will be allowed.

So that's it!

If this checks out, Youch! Everyone was wondering what was behind Apple so brazenly using the iPhone trademark. Cringely wrote a whole piece on it http://pbs.org/cringely [pbs.org] but no one guessed something as simple as this!

Memo to self: Don't play Poker with Steve Jobs.

zdnet article quotes /.er....

I RTFA and thought the commentary looked familiar: http://apple.slashdot.org/comments.pl?sid=216560&c id=17578608 [slashdot.org]

Re:zdnet article quotes /.er.... (offtopic)

when I read your post my immediate digg-like fanboy reaction was to say, "For shame! Who is Jay Behmke that he can steal quotes from the web and use it as his own?!"

Then I look a look at the /. poster's ID number:

(Score:5, Informative)
by jmbehmke1 (10

Maybe

Maybe this is why apple didn't come out with an iPhone before. They were waiting to see if they would let the trademark lapse.

My money is on Apple winning this one.

In the words of bugs bunny: How now brown cow?

The fickle commentaries crack me up. First it was WTF was Apple thinking? Then it was Cisco is in the right, Apple is wrong / evil / brazen. How stupid could they be. They're gonna have to rename it to @Phone. Blah blah blah.

Did anyone honestly think Apple would name their product the iPhone, full well knowing that Cisco had the trademark unless they were completely confident that it was both A) worth the legal headache and B) that they have a very good case and therefor chance of triumphing in this dispute?

Re:

you're forgetting c) the great publicity their jesus phone is getting from this whole debate

Seems to me that...

even if Apple knew they'd lose, the would get the buzz from the obvious "IPhone" for 6 months until the real thing comes out -- with the added lawsuit and "will they lose the name" buzz to keep it on front pages -- then they could rebrand it the Apple Phon

Featured iPhone

iPhone is now a featured product [cisco.com] on Cisco's Website. I don't know if it was there before the iPhone was announced or before this trademark non-usage news came out, but surely it's related with Apple's iPhone.

Re:Featured iPhone

Here's the direct link to the iPhone on Amazon [amazon.com] image:

      http://www.amazon.com/gp/customer-images/by-author /A675KDVLCPUZV [amazon.com]

This is a customer uploaded image uploaded by one "Ben Boyle" on December 18, 2006. The main product image has no such iPhone shown:

      http://www.amazon.com/gp/product/images/B000JI5L02 [amazon.com]
 

Somebody need to go to jail

Cisco regiters trademark.

Cisco files Delcaration of Use, with "under penalty of perjury" affidavit stating they are using the name.

Now it sounds like everything will hinge on the following:
AT a former FA:
2001 - 2006: Cisco continues servicing and providing technical support for the iPhone

So internal documentation may/probably shows continuous use of iPhone in regards to the support of an existing product.

Either

(A) the trademark is shown to be valid, as internal documents support the continued use of the trademark for support purposes OR
(B) they don't have the documentation, or it is deemed invalid, in which case whomever signed the extension is clearly guilty of perjury and should be prosecuted to the fullest extent of the law.

In my opinion, you can't have it both ways - the tradmark is valid and the signer is ok, or the trademark is invalid and the signer goes to jail. There is no middle ground.

Now, in other thoughts on the matter:

      (1) If the trademark is up for grabs, and Cisco has an iPhone product on the market which pre-dates the Apple cellular product, don't they still have "dibs" on the name? Can't they re-file for the trademark, and presumably be first in line because of an actual shipping product?

      (2) Can Chevy come out with their new "Fairlane" model next year, since Ford clearly is not producing a Fairlane and haven't for more than 7 years? If Ford claims to keep it by offering parts and service for the Fairlane, wouldn't that bolster the case For Cisco, which has supported "their" iPhone product with (at least) service for the last 6 years?

Re:

(1) If the trademark is up for grabs, and Cisco has an iPhone product on the market which pre-dates the Apple cellular product, don't they still have "dibs" on the name? Can't they re-file for the trademark, and presumably be first in line because of

USPTO

The writer makes an excellent case, but I can't help but think about how is all under the authority of the United States Patent and Trademark Office. Anyone of us can see that they just slapped an "iPhone" sticker on another product, but with all of the s

Why aPhone?

Y'know, seeing as how it's an Apple product, they can rebrand the whole of their catalog (usher in the new era of Apple Inc). That way you can own aMac and aPhone and aServer with aWirelessLAN. Of course, you could also get aLife...

-BA

Why is Apple "The good guys" ??

Did I fall asleep and miss something ?

Why is Apple, the world's largest DRM company which loves to use it's lawyers to crush and close any blog which mentions it's upcoming product, now suddenly the "good guys" ?

Here's proof of continuous use by Cisco

This is just some bloggers, not a legal opinion, even if it's from a lawyer.

Here's a demonstration that Cisco was continuously using the trademark: the support web site for the iPhone [archive.org], as archived at archive.org. "With InfoGear recently being acquired by Cisco Systems, there is currently no change to your iPhone coverage. We hope you continue to enjoy using your iPhone, and we thank you for your business. So, even if Cisco wasn't selling new units, they were still supporting the old ones. That page has been archived every year since 2000, so that's a form of continuous use.

There's an active user base. The University of Florida went iPhone [ufl.edu]. There's a description of their configuration here. [ufl.edu] They have a VoIP infrastructure with three Cisco CallManagers, two Cisco 6608 VoIP gateways, a Cisco Unity voice mail system, and many Cisco IP telephones, some of which are iPhone units, on desktops. The University of Pennsylvania also went iPhone. [upenn.edu] There are probably corporate installations too, but they tend not to publish their phone instructions on the public web. Those installations have to be supported, which is something Cisco does, and gets paid for. Cisco is in the network infrastructure business, after all.

As long as there's support, and support-related revenue, the trademark is clearly in use.

Re:Here's proof of continuous use by Cisco

Nope. A trademark by definition indicates source of origin. Support does not count, because no product or service is being originated by the company under the trademark. This is especially true in this case, since the iPhone was actually produced by another company, InfoGear. Cisco has apparently never produced an iPhone during the period in which they registered that trademark.

Re:

Can I Make a Beowulf Cluster of those iPhones ?

      Would that make it an iBeowulf Cluster, or a Beowulf iCluster? Damn, I'm so confused! Who do we sue next?

Re:

Can you point me to some of the phones with those features, specifically a phone with an interface even close to what the iPhone has? I love Japanese technology, but I hadn't really seen anything quite like it before.

Re:

The current model Treos, apparently. Only they actually have a thumb-pad, so you don't need that "I can't even get it right in the demo" virtual keyboard.

Re:

I own a Treo 650. It's not even close to what the iPhone is doing interface-wise. I also own a P990, which is about as far from the iPhone (or from the Treo, for that matter) as Windows 3.11 is from Mac OS X.

Re:I dunno...

Hey, don't get me wrong, I like my Treo 650 too; and mostly for the third party stuff, like Salling Clicker (which I also use to control ZoomPlayer and iTunes remotely on my PC). But the OS has been stagnating for years, and the UI of a lot of the apps are kind of clunky. For a lot of what I do ultimately use my Treo for, it is kind of a pain in the ass. I.e. web browsing; Blazer just stinks, and I've practically given up on even bothering to use real websites with it, instead using WAP versions of sites when I can. From what I've seen of the iPhone demonstrations, Apple has really moved things forward interface wise.

I certainly do hope to see the iPhone become a better platform for third party apps eventually, but even with nothing else, I can see ditching my Treo when it comes out. And I'm hoping that the few third party apps I do use on the Treo do make their way to the iPhone, one way or the other..... would love to have Salling Clicker on it, for example.

Actually, the other big thing I use my Treo for is as a host for TomTom navigator, but I could probably see giving that up to and just getting a physical TomTom device instead.

Re:I dunno...

Laws should be applied equally to all, regardless of who it is. Politicians. Cops. Firemen. Doctors. Corporations. Blacks. Whites. etc.

The trademark laws are fair here. Sticking a label onto shrinkwrap is not a) showing use for the past 5 years CONTINUOUSLY as the law requires, b) shows any evidence this was "use" of a trademark. Use being something the public saw when purchasing the product; they didn't.

Indeed, it seems misleading, even fraudulent, what Cisco did; they pretended that this was evidence of continuous use, public use? Please. I never heard of iphone until December and I've been looking at VOIP gear off and on for the past 6 months.

Fanboys? Sure. I used to be a Mac fanboy, back in the 68k and early PPC days. No longer. I (horrible, I know) like XP more than I like MacOS, although I dislike MS more than Apple. I have no plans to buy the crippled Apple phone/iphone either, unless Cingular has some whopping cheap plans (like $60 a month for 1000+ minutes and unlimited EDGE).

Re:I dunno...

The problem is that the product that bore the "iPhone" label in the declaration (Linksys CIT200) hadn't ever been associated with that name, so it seems to me that the sticker was an attempt to pull a fast one on the USPTO by representing the trademark as being actively used when in fact it wasn't and hadn't been for six years. The CIT200 was finally rebranded "iPhone" last month, but that was seven months after the declaration was filed and more than a year after the declaration had originally been due, and almost certainly after Cisco was aware of Apple's intentions.

IMHO Cisco fumbled badly, and they're desperately trying to recover.

Re:

Lawyers are hired guns, but they are not the gunmen, their clients are. When someone walks into a lawyer's office with a complaint (or brings one to the lawyers on staff, if it's a big company), they will look to see if there is ANY amount of legal merit