Riding a Fine Line,
Hoping for a Settlement"> Apple Riding a Fine Line, Attorney Says What Apple is saying is the term iPhone in VOIP (voice over IP) is generic, and Ciscos trademark doesnt have much teeth to it, said David Radack, head of the intellectual property department at law firm Eckert Seamans Cherin & Mellott LLC in Pittsburgh, Pa.Should Cisco and Apple go to court over the dispute, the argument will center on "the likelihood of confusion," Radack said. "Is Apples use of iPhone likely to be confused with existing Cisco use of the trademark iPhone? Someone with a cell phone may also be a buyer of VOIP services for say, a major law firm," he said. The confusion argument can also work in the reverse. "When a big player (like Apple) makes a splash with that term, people who see Ciscos use could say, Hey you ripped off Apple. That is the other thing youre fighting," added Radack. In using the likelihood of confusion argument, the question to be settled is whether the Cisco product is related to the Apple product. With Ciscos assertion that cell phones, work phone and home phones are going to converge, it is likely to argue that they are related. "Ciscos argument is this is all related and it would be a natural expansion for us to go into cell phone," said Radack. In response to the Apple trademark efforts in other countries, Radack said: "Thats interesting theyre trying to isolate [Cisco] to the U.S., but that is the biggest market in the world, and it would be difficult to operate in different countries with separate trademarks." Ciscos iPhones are cordless phones. "We feel very strongly because the iPhone today is not whats going to be the device tomorrow. The potential for the convergence of home, cell and work phones is limitless," said Noh. "Protection of the brand is very important in this regard. Thats at the crux of the matter for us. We were very open to sharing this trademark with them," he added. Cisco Hopes for a Settlement Cisco, which filed its lawsuit against Apple in the United States District Court for the Northern District of California in mid-afternoon Jan. 10, is still hoping to come to an agreement with Apple on the trademark. "We filed a complaint and will let that course of action run through. We want to do whats best for the industry and our customers. We remain open to an agreement," said Noh. "Its pretty clear this will have to be settled out of court. If they went to court, it is pretty clear Cisco would win. Apple doesnt have a case here," said David Passmore, research director at Burton Group in Sterling, Va. "Quite frankly, I dont know why they dont just call it an iPod. Its an iPod with all these cool features," he added. In a prepared statement, Ciscos Senior Vice President and General Counsel Mark Chandler said: "Cisco entered into negotiations with Apple in good faith after Apple repeatedly asked permission to use Ciscos iPhone name. There is no doubt that Apples new phone is very exciting, but they should not be using our trademark without our permission." But then again, its possible it all wont matter in the long run. "Im not a lawyer, so I cant comment on the legal aspects of this. But two things are clear," Michael Gartenberg of Jupiter Research told eWEEK. "First, Apple really should have cleared all this up legally before they announced the product, and second, I dont think it really matters what they call it. "If they change the name to iPod Phone or PodPhone, or whatever, it wont sell even one less device because of that. And everybodys going to call it the iPhone anyway, lets face it." Check out eWEEK.coms for the latest news, reviews and analysis on mobile and wireless computing.
"Apple is riding a really fine line there. If theyre successful in saying iPhone is generic for telecom, then what if Motorola comes up with an iPhone? They cant then turn around and enforce the term iPhone against others in the industry. Its a double-edged sword," Radack added.