It has been common knowledge for some time in the IP world that Apple has been seeking a trademark for its new iPhone since 2001. However, their decision to go ahead and release the iPhone without legal rights to the name surprised trademark lawyers last week.
‘This is a gutsy move by Apple', said William Heller of McCarter & English LLP in Newark, NJ ‘but I wouldn't handicap this race just yet'. There are lots of arguments on both sides.’
Apple’s announcement immediately prompted Cisco to file a lawsuit against them on the 11 January.
‘Cisco entered into negotiations with Apple in good faith after Apple repeatedly asked permission to use Cisco's iPhone name,’ Mark Chandler, senior vice president and general counsel at Cisco said.
‘There is no doubt that Apple's new phone is very exciting, but they should not be using our trademark without our permission,’ he added. ‘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.
The lawsuit pits two of Silicon Valley's biggest heavyweights, Jobs and Cisco CEO John Chambers, against each other in one of the wireless industry's fastest-growing areas. Cisco argues it has owned the trademark since 2000. However, Apple said that because the products were different - Apple's is a cell phone and Cisco's is Internet-based - they should both be allowed to use the iPhone name.
Apple spokesman Steve Dowling said there was a difference between cordless phones marketed by Cisco's Linksys division and the cell phone Apple introduced this week.
‘We are the first company to use the name iPhone for a cell phone, and if Cisco wants to challenge us on it, we are very confident we will prevail,’ Dowling said.
That position is ‘not consistent with the discussions we've had for several years,’ Cisco general counsel Mark Chandler said. ‘Apple approached us numerous times starting in 2001 regarding use of the iPhone name.’
Cisco said it was unwilling to concede full rights to the name and could not agree on terms that would let Apple proceed.
Lawyers are divided on which way the case will go. One possible outcome according to Brian Banner, a seasoned attorney dealing with intellectual property and trademarks at Rothwell Figg, is that the ‘iPhone’ name may actually be generic enough that a judge will rule it usable by both Apple and Cisco. However, the ruling will be under the condition that a company name be attached to the term ‘iPhone,’ like ‘Apple iPhone’ or ‘Cisco iPhone.’ Banner mentioned that the term may also be deemed generic enough to use by any company.