Maybe Apple Inc. CEO Steve Jobs should use his new iPhone to call a good trademark lawyer.
That’s the advice of several attorneys and IT analysts regarding Apple’s decision to call its new combination mobile phone, iPod and Internet communications device an “iPhone” — even though that name is a registered trademark held by Cisco Systems Inc.
For about two years, Apple negotiated with Cisco to use the iPhone name, which would dovetail with its existing iPod, iMac and iTunes product-naming convention. Those negotiations continued right until Tuesday, when Jobs stood on the stage at San Francisco’s annual Macworld conference and announced the June release of Apple’s iPhone.
Cisco subsidiary Linksys has its own iPhone. But instead of signing a proposed contract submitted Monday night by Cisco, Apple made the iPhone announcement without a deal in place. Cisco’s response: a 24-page trademark infringement lawsuit against Apple.
“It looks like Cisco and Apple were negotiating for quite a while, and at the last minute Apple pulled away and went on with Steve Jobs’ presentation,” said Ken Dort, an attorney at McGuireWoods LLP in Chicago.
The legal fight could offer challenges for both sides, he said. “Apple contends that the products are materially different, so there would be no confusion” in the marketplace, Dort said. While a judge would apply a series of legal tests to make such a determination, Dort said he would probably disagree with Apple’s contention. “They’re close enough and have a fair chance of convergence over time.”
