Apple Scoffs at Cisco Trademark Lawsuit, Says It Will Prevail

IT giants each contend they have the right to use the name iPhone; Apple owns the rights in other countries and calls the Cisco lawsuit "silly."

The calm discussion between Apple and Cisco Systems over the product name iPhone that started in 2001 may turn into an unpleasant legal tussle if its not settled out of court, because the two companies remain staunch that they each have the right to use it.

Apple CEO Steve Jobs on Jan. 9 introduced what he called the iPhone, the companys most important new product since the iPod in 2001. Jobs, calling the combination iPod, cell phone and connected handheld one of the most exciting products hes ever worked on, said the iPhone would "reinvent the telephone."

The following day, Cisco filed a lawsuit against Apple for trademark infringement on the iPhone name, because it received the iPhone trademark seven years ago when it acquired Infogear. Infogear, which filed for the trademark in 1996, became a part of Ciscos Linksys division. That division introduced a new family of iPhones early in 2006 and expanded it again in December.

Apple on Jan. 11 was nonchalant about the legal threat.

"We think the Cisco lawsuit is just silly, because a number of other VOIP companies are already using the name iPhone," Natalie Kerris, Apples director of music public relations, told eWEEK.

"We contend that their United States trademark is tenuous at best, because we see it as a generic term. We are also the first company to name a cell phone as the iPhone. If Cisco wants to challenge us on it, were confident well prevail."

Apple has no comment on what the next legal move will be, or whether the discussions are going to continue with Cisco, Kerris said.

Teledex, Nex-Tech and Etronicsland all are among the companies currently marketing products called iPhone on the Internet at this time.

Apple Already has iPhone Trademarked Elsewhere

A search of trademark and patent office Web sites revealed that Apple already has the iPhone trademarked in the United Kingdom, Singapore and Australia, while other filings are pending in Canada, the European Union, New Zealand and Hong Kong.

Cisco said in its complaint that Apple had first approached the company about acquiring the rights to the iPhone trademark in 2001. Over the years, Apple continued to make requests for the rights, including several attempts in 2006, Cisco said.

"Weve owned the iPhone trademark for years. Apple has acknowledged this by coming to us repeatedly over the last five years to acquire the right to use the trademark," said Cisco spokesperson John Noh. "Thats a clear acknowledgement that we own the trademark. The actions we took are not about money or the product, but about an obligation to protect our trademark in the face of Apples willful violation of it," he added.

In the weeks leading up to the Jan. 9 launch of the new Apple iPhone, Cisco and Apple had engaged in extensive discussions over an agreement to "share" the trademark, according to Noh. But Apple launched the iPhone on Jan. 9 without signing the agreement, he added.

"We sent over the final terms to them Monday, and we didnt get the approved agreement back from them. But they launched the product anyway. We believed that meant they agreed to the terms and would send over a signed agreement to us. That didnt happen today. By that action, we believe they decided to forgo the agreement and used our trademark illegally," Noh said.

Next Page: Riding a fine line, hoping for a settlement.

Chris Preimesberger

Chris Preimesberger

Chris Preimesberger is Editor of Features & Analysis at eWEEK, responsible in part for the publication's coverage areas. In his 10 years and more than 3,500 stories at eWEEK, he has distinguished...