Cisco VP Explains Lawsuit Against Apple

Dekortage writes "The day after Apple announced its iPhone, Cisco sued over the name. Mark Chandler, Cisco's SVP and General Counsel, has posted an explanation of the suit on his blog: 'For the last few weeks, we have been in serious discussions with Apple over how the two companies could work together and share the iPhone trademark. ...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."' What did Cisco want? '[We] wanted an open approach. We hoped our products could interoperate in the future.'" Another reader wrote to mention that already, Cisco's trademark might be in trouble in Europe.

Re:Renamed?

[HarvardFrankenstein]

Oh gods, I'm an idiot [nowpublic.com]. Ignore me. :P

Not patents

[Rob T Firefly]

IANAL, but I think the Patents icon is misleading here. While Patents and trademarks can share similar intellectual property issues, they're applied to different things for different reasons. A patent is generally to protect a method, product, device, or similar tangible things, while trademarks are used for words, phrases, logos, symbols, and such descriptives.

The rules governing them are also fundamentally different on many levels. For example, while you can patent something and then sit on it until someone else actually makes the thing and then sue, a trademark must generally be in use to remain protected.

More, as usual, on WP. [wikipedia.org]

Re:Renamed?

[Archangel Michael]

I can hear the ads now ....

The Divinyls I Touch Myself Lyrics

I love myself
I want you to love me
When I'm feelin' down
I want you above me
I search myself
I want you to find me
I forget myself
I want you to remind me

Chorus:
I don't want anybody else
When I think about you
I touch myself
I don't want anybody else
Oh no, oh no, oh no

You're the one who makes me happy honey
You're the sun who makes me shine
When you're around I'm always laughing
I want to make you mine

I close my eyes
And see you before me
Think I would die
If you were to ignore me
A fool could see
Just how much I adore you
I get down on my knees
I'd do anything for you

Chorus

I love myself
I want you to love me
When I'm feelin' down
I want you above me
I search myself
I want you to find me
I forget myself
I want you to remind me

Chorus

I want you
I don't want anybody else
And when I think about you
I touch myself
Ooh, oooh, oooooh, aaaaaah

Chorus

In Europe, it's "use it or lose it"

[iminplaya]

I like that. It helps to reduce squatting, speculation, and hoarding.

Re:Openness and Cisco?

[Anonymous Coward]

Oh shut the fuck up and read the names on the RFCs the IETF puts out. Cisco contributes reguarly to protocol standardization. Several of the protocols you're bitching about have equivilant open standard alternatives that are fully supported in IOS. HSRP -> VRRP; isl -> 802.1q

examples:
ftp://ftp.rfc-editor.org/in-notes/rfc4456.txt [rfc-editor.org]
ftp://ftp.rfc-editor.org/in-notes/rfc4364.txt [rfc-editor.org]
ftp://ftp.rfc-editor.org/in-notes/rfc4062.txt [rfc-editor.org]
ftp://ftp.rfc-editor.org/in-notes/rfc3137.txt [rfc-editor.org]
ftp://ftp.rfc-editor.org/in-notes/rfc4443.txt [rfc-editor.org]
ftp://ftp.rfc-editor.org/in-notes/rfc4659.txt [rfc-editor.org]

Re:Openness and Cisco?

[otacon]

They felt the need to create them because they probably felt they can do it better, and in most cases they have. But they are open to admitting that another standard is better, such is the case with ISL, cisco has basically scrapped ISL in favor of 802.1q. You are semi-right about a "lock in", but cisco customers expect something better than another companies network gear, they get the capability of using cisco's own stuff like EIGRP or CDP...thats why people buy cisco, but cisco doesnt make you use them, you can just as easily use OSPF instead of EIGRP, so you can interoperate. But if you have an all cisco campus, why not use EIGRP if you think it will better suit you.

Cisco's possible trademark problems

[jmbehmke1]

IAATL - trademark law is one of my specialities. 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 in the requisite period. 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. Now the Cisco press releases I have seen indicate that Cisco released the iPhone products in December 2006. Now this is my personal opinion based on the information I have seen so far (your mileage may vary): Cisco may have a problem with its trademark registration because it has not been continuously offering a product under the iPhone trademark since 1999. They knew that Apple was interested in the name (since Apple had approached them and negotiations were ongoing). 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. Apple's lawyers will have certainly found the same clues that I did, and may believe that Cisco's registration can be cancelled (by proving in federal court that the Declaration of Use contained mistatements of fact - there was no continuous use). If Apple believes that they can get the registration cancelled, they may not have wanted to sign the agreement Cisco proposed. 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.

Re:Cringely's opinion

[jevvim]

iPhone has been trademarked since 1996, before Apple had an "i" anything, how is that desperation?

Well, the InfoGear iPhone was a $299 phone that could web-surf using a dial-up ISP [fastcompany.com]. Maybe you'd like a page that has a picture [streettech.com] of the device: 7.4" black and white touchscreen with a pull-out QWERTY keyboard. Oh, and it cost $4.95 a month to use with your own ISP, or $24.95 per month with a provided ISP. Search Google for "InfoGear iPhone" for even more. This was the device for which InfoGear registered the iPhone trademark. Cisco's re-use of that trademark for such a wildly different product (a Skype phone) is desperation: trying to capitalize on the buzz around the name "iPhone" which was generated through rumors about an Apple product, not the original InfoGear iPhone. Apple simply didn't have a choice to trademark iPhone ahead of time, because (AFAIK) you must use a mark in trade (i.e., offer a product for sale) before you can file for a trademark.

Re:what were they thinking

[e4g4]

Just did a quick search on iPhone trademarks at the USPTO, and there appear to be at least two other live marks (not owned by cisco) for "iPhone" here [uspto.gov], and here [uspto.gov], IANATML, but perhaps Apple believes the term to be diluted already?

Re:MacPhone

[wbd]

No, the "e" in "eMac" stood for "education", as it was initially sold to schools ONLY until (ahem) everyone else raised a hue and cry about wanting to buy it too.

And eMac being "The Mac for everybody" is funny. The mac has always been "the computer (designed for) for everyone else (except computer geeks)", after all....

They shoulda gone with iPodPhone. (or maybe iPhod or iPhoned? ;-)

Re:Cringely's opinion

[Rytr23]

if what I read is correct, *Cisco* did not trademark iPhone but a small company they have pruchased since then had the trademark. All of this is nonsense anyways.. even before any announcement EVERYONE was giving this mythical device the "iPhone" name.And that was not Apple's doing.. At this point if apple renames it..Everyone will STILL refer to apple phone as the iPhone. Cisco was trying to leverage the trademark for a foot in apples door and apple said no.. so they sued.. Whoop dee do.. I don't see what the fuss is about.. in the end it will still end up being referred to as the iphone and cisco will still have 3 people that kow thier product is also called the iphone.. but its not a cell phone so no one cares about it..