Silicon Valley Watcher - Former FT journalist Tom Foremski reporting from the intersection of technology and media

Cisco updates SVW on iPhone trademark battle with Apple

Posted by Tom Foremski - January 10, 2007

UPDATE: The Seattle Post-Intelligencer has a copy of the complaint (PDF).

This is from John Earnhardt, Senior Manager of Policy Communications for Cisco Systems. He writes the Cisco High Tech Policy Blog:

Update on Cisco's iPhone Trademark - Intellectual property is the lifeblood of Silicon Valley and we all have to protect our property.

The iPhone trademark is owned by Cisco. We (Cisco) had hoped to reach an agreement to share our trademark with Apple, yet they decided to use the name without our agreement, so we, unfortunately, are having to go to court to stop them from using the name.

We still hope we can reach an agreement, but when your neighbor steals your property, you have no recourse other than to call the cops and file a complaint.

Full Cisco statement at: http://newsroom.cisco.com/dlls/2007/corp_011007.html

Thanks John.

And thanks to Ron Piovesan from Cisco for the following:

Commentary from Mark Chandler, Cisco's SVP and General Counsel, on Apple's infringement of Cisco's iPhone trademark. 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.

Cisco owns the iPhone trademark. We have since 2000, when we bought a company called Infogear Technology, which had developed a product that combined web access and telephone. Infogear’s registrations for the mark date to 1996, before iMacs and iPods were even glimmers in Apple’s eye. We shipped and/or supported that iPhone product for years. We have been shipping new, updated iPhone products since last spring, and had a formal launch late last year. Apple knows this; they approached us about the iPhone trademark as far back as 2001, and have approached us several times over the past year.

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. We genuinely believed that we were going to be able to reach an agreement and Apple’s communications with us suggested they supported that goal. We negotiated in good faith with every intention to reach a reasonable agreement with Apple by which we would share the iPhone brand.

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.

Fundamentally we wanted an open approach. We hoped our products could interoperate in the future. In our view, the network provides the basis to make this happen—it provides the foundation of innovation that allows converged devices to deliver the services that consumers want. Our goal was to take that to the next level by facilitating collaboration with Apple. And we wanted to make sure to differentiate the brands in a way that could work for both companies and not confuse people, since our products combine both web access and voice telephony. That’s it. Openness and clarity.

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.


Cisco Press Release on this issue can be viewed here: http://newsroom.cisco.com/dlls/2007/corp_011007.html.

Please also see my fellow ZDNet blogger, Russel Shaw on this topic:

There are four "live" trademark assignments for iPhone or derivative term. Only one of these four is owned by Cisco. Each of the other three are being contested.

I will show you these trademark assignments now, and bring you up to speed on Trademark Office actions specific to each.

Please see:
Three ‘iPhone’ trademark applications neither Cisco nor Apple owns are awaiting Trademark Office action

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