Cisco Sues Apple over Use of iPhone Name

Cisco accuses Apple of trademark infringement, saying Apple acknowledged its ownership of the iPhone name.

Cisco Systems rained on Apples iPhone parade Jan. 10 when the networking behemoth said it is suing Apple, accusing it of trademark infringement on the iPhone name.

Cisco, which claims it had negotiated with Apple in good faith over permission to use the name, 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.

"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 spokesman 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 without signing the agreement, he said.

"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," he said.

Comments made by Philip Schiller, head of Apples worldwide marketing, suggest that Apple believes the iPhone moniker is used by many companies and that Apple is the first to apply it to a cell phone, according to Noh. 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.

/zimages/1/28571.gifClick here to read more about Apple announcing its iPhone.

Cisco, which filed its lawsuit against Apple in the United States District Court for the Northern District of California in mid-afternoon on 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.

Apple officials, apparently preoccupied with running its annual Macworld Expo in San Francisco, were slow to repond to requests for comment on the Cisco lawsuit.

A company spokesperson told eWEEK that the corporate media relations team was preparing a response at Macworld.

eWEEK Senior Writer Chris Preimesberger contributed to this report.

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