January 12, 2007

On Wednesday, Cisco Systems Inc. filed suit in the United States District Court for the Northern District of California against Apple Inc., in part requesting a preliminary and permanent injunction against Apple’s use of the “iPhone” trademark. As you have heard in this week’s news, Apple Inc. unveiled its iPhone at Macworld Expo in San Francisco on Monday, a $499 to $599 device (depending on storage size) that will offer e-mail, internet, music, movies, and telephone capabilities via Cingular later this year.

According to the Yahoo! News article (link below), Cisco obtained rights to the iPhone trademark in 2000, and sometime afterwards, it began selling a line of inexpensive iPhones utilizing Voice-over Internet Protocol (VoIP) that cost as little as $12 alone or from $70 to over $200 as a kit. Cisco’s mark (U.S. Trademark Reg. No. 2,293,011) describes “computer hardware and software for providing integrated telephone communication with computerized global information networks,” of which Cisco deems Apple’s iPhone to be “deceptively and confusingly similar” to its own mark. The article further notes that back in 2001 Apple requested a license or rights in the name from Cisco, and when no deal could be reached, Apple started Ocean Telecom Services LLC in an effort to pursue its own iPhone.

Cisco’s complaint (PDF link below) is “a complaint for Trademark Infringement, Unfair Competition, and False Description arising under §§ 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114(1) (Trademark Infringement) and 1125(a) (Unfair Competition and False Description), for Unfair Business Practice arising under California Business and Professions Code § 17200 et seq., and for injury to business reputation.” The complaint describes how Cisco obtained the iPhone mark (originally registered by InfoGear Technology Corporation in 1996, and Cisco acquired InfoGear in 2000), noting that “InfoGear first began selling iPhone-branded devices in 1997” and that “Cisco continues to use the iPhone mark for its family of voice over IP telephones and other telephony equipment distributed by Cisco-Linksys LLC.” According to the Yahoo! article, “Apple spokeswoman Natalie Kerris called the lawsuit "silly," and Apple senior vice president Phil Schiller said other companies have tried to use the name for VoIP phones — but only Apple's iPhone is a cellular phone.”

Cisco’s Complaint: LINK
U.S. Trademark Reg. No. 2,293,011: LINK
Yahoo! News Article: LINK
Apple’s iPhone Press Release: LINK
Cisco’s iPhone Family Webpage: LINK
Cisco’s Lawsuit Press Release: LINK

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Mark Reichel
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I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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