Since Apple announced the iPhone last week there has been a large amount of speculation about the Apple vs Cisco iPhone trademark dispute with little factual evidence being presented by either side.
To help understand the complexities of the case we contacted Eric Ramage, a Trademark Attorney at Alexander Ramage Associates, for his expert opinions.
What are the main points that the case will hinge on?
The reports I have read appear to confuse the precise purpose of the
Affidavit that Cisco filed to support their registration before they
sued Apple. In particular we must distinguish between whether Cisco used
iPhone at all following grant of their registered trade mark, and
whether Cisco used the iPhone trade mark continuously during a five year
period. A very interesting side question that nobody yet seems to have
raised is whether Cisco got the trade mark into use before 27th March
2006 which is when Ocean Telecom (the company rumoured to be a front for
Apple) filed the trade mark in Trinidad and Tobago, on which they are
now claiming priority in the US. I will deal with the importance of
these issues in turn.
Did Cisco use the iPhone trademark at all before they filed their
affidavit?
Sometime between the fifth and sixth anniversary of the date of grant
(namely before 16th November 2005) Cisco had to file what is called a
Section 8 Affidavit in order to keep the registration alive. In this
they had to say that the iPhone trade mark is in use commercially within
the US. There is in certain circumstances a six month period of grace
to do so.
Did Cisco use the iPhone trademark continuously for five years before
they filed their affidavit?
At any time when Cisco could show that they used the iPhone name
continuously for a period of five years it is open to them to file what
is called a Section 15 Affidavit asking for the trade mark to become
“incontestable”. That would mean neither Apple nor anyone else could
contest Cisco’s right to hold the trade mark until such time as Cisco
may abandon it by reason of non use.
Did Cisco use the iPhone trademark at any time before 27th March 2006?
According to the USPTO website Cisco filed a Section 8 Affidavit on 4th
May 2006, which is towards the very end of the period of grace that is
allowed to do so. In itself there is nothing wrong in this but if as
appears, they were aware of the Apple dispute I would have expected them
to be on top of this and ready to file the necessary paperwork at the
first opportunity. The fact that they waited until almost the end of
the extended period of grace does raise interesting questions as to when
precisely they started using the trademark. Also the question may arise
whether the use relied upon is “genuine” commercial use. According to
one report, the specimen apparently on file is a photograph of one of
their LINKSYS CIT phones which appears to have been overstickered.
The USPTO have accepted the Section 8 Affidavit, but Apple can be
expected to contest this decision. If they do so successfully, the Cisco
registration is likely to be declared invalid, and at face value the
company called Ocean Telecom (rumoured to be a front for Apple) will be
granted acceptance of their iPhone trade mark. Ocean Telecom filed their
trade mark application on 26th September 2006, claiming priority of 27th
March 2006 from a trade mark application they claim to have filed on
that date in Trinidad and Tobago. A number of interesting legal
questions will then arise. First is the question when did Cisco actually
get their iPhone name into use? If it was before 27th March 2006, they
scoop the pool, because that predates when Ocean can claim their
priority of filing, from Trinidad and Tobago, and Cisco will be able to
block Ocean Telecom on that basis and apply for a new trade mark
claiming use in commerce in the US from whatever date they can show
predates Ocean’s priority claim of 27th March 2006. If Cisco cannot show
genuine use prior to 27th March 2006, they might nevertheless call into
question the validity of Ocean Telecom’s application. That claims
priority of 27th March 2006 from an application filed in Trinidad and
Tobago. Priority can only be claimed within six months from the date of
filing the first trade mark application the applicant filed for the
trademark. Apple has already filed numerous applications for iPhone
outside the US and therefore could not claim priority. Ocean Telecom is
rumoured to be a front for Apple. If so, the question must arise whether
Ocean’s Trinidad and Tobago application is a valid basis for claiming
priority for the trade mark application they have filed in the US.
Indeed, Ocean filed the US application on the basis they intend to bring
the trade mark into use in the US sometime after it had been filed but
before it is registered. If Ocean Telecom is indeed a front for Apple,
the question must also arise whether Ocean had any genuine intention to
use iPhone commercially within the US (or indeed at all)? Therefore even
if the Cisco registration is invalid, the whole question arises whether
the Ocean Telecom application is valid. If Cisco lose the iPhone
registration but then successfully show that the Ocean Telecom
application is invalid, I see no reason why Cisco could not get a fresh
registration for iPhone based on the use they have actually made of
iPhone which is after all prior to Apple’s own use of iPhone. Apple
would then be back where they started. Obviously if the Ocean Telecom
trademark application is valid, and if Ocean Telecom is not a front for
Apple, then Apple will need to deal with Ocean Telecom.
How long is the dispute likely to last?
If it does not settle within the next six months or so, I think it will
rumble on for years. See for example the long running dispute between
Apple and the Beatles’ Apple Corps over use of Apple on music related
product.
In your opinion what will be the main factor that decides the outcome?
The validity of Cisco’s Section 8 affidavit, because if it is valid
Apple cannot win in the US, unless they throw the baby out with the
bathwater and seek to destroy iPhone as a trade mark.
Can you predict the likely outcome of the case?
A compromise settlement of some kind.
As I have said, if Cisco’s Section 8 affidavit is valid Apple cannot win
in the US, therefore the pressure is on them to do a deal. However, even
if Cisco’s Section 8 affidavit is valid, Cisco will not be able to
operate outside the US where Apple have already registered the iPhone
name as their trademark, therefore if they want to operate outside the
US they must do a deal.
On the other hand, Cisco has now committed to rebranding their LINKSYS
CIT phones as iPhone, but even if their Section 8 affidavit is not valid
they can contest Ocean Telecom’s right to the name. They might not want
to do so, but can Apple afford to take that risk, or will they prefer to
do a deal?
Eric Ramage is a fellow of the Institute of Trade Mark Attorneys, practising exclusively in trade marks and designs. Having read Economics and History at Strathclyde University he joined the trade mark profession in 1969, and qualified in 1972. He is a Trade Mark Attorney on the UK register of Trade Mark Agents, and a European Trade Mark Attorney practising before OHIM (the European trade marks office based in Alicante, Spain).
Alexander Ramage Associates Tel: 0044 1483 750701
{ 2 comments… read them below or add one }
Interesting spin on the scneario, sir. But, one that avoids stating as fact some obvious realities. First, a simple Google search can verify that Cisco did not in fact have the CIT series products on the market branded as ‘iPhone’ at the time of the Section 8 renewal filing; so, that filing was fraudulent, somthing the USPTO frowns upon just a bit. So, there is no ‘question’ about that Section 8 filing, as you equivocate. That filing was fraudulent. End of story.
This makes your entire “if Ocean’s application blah blah” argument is pointless. The Ocean application was indeed timely, and does indeed predate any commercial usage by Cisco of the name in dispute. Period.
Many blog entries are presented as opinion, and are accepted by readers in that light. You very specifically seek to present your blog post as a serious, fact-based statement, but fail to deliver the reality of the case in discussion.
Apple’s ‘Ocean’ filing is ‘everything’ in this case, and cripples Cisco’s position by spinning the entire matter specifically around the fraudulent Section 8 Cisco filed.
Anybody who thinks Apple has even a slim chance of losing here hasn’t a clue about trademark litigation, including you, sir.
With my respect, just the truth.
Thanks for the comments Jack.
Remember that this article, aside from the first 6 lines, was written by a Trademark Attorney.
Our staff are experts in mobile phones and we do not profess to be experts in Trademark Law, this is why we requested the advice of a professional.
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