Feeds

Cisco's iPhone trademark also under threat in US

Defective Declaration of Use?

The Power of One Infographic

Cisco may lose the rights to the term iPhone in the US, it has emerged. The news follows last week's revelation by OUT-LAW that the company is in danger of losing the European trademark.

Last week, OUT-LAW exposed the legal loophole that could be used to put the trademark rights in Apple's hands. A US lawyer has found a similar loophole there.

Cisco currently holds the trademark rights to the term iPhone, but Apple last week launched its mobile telephone which it called iPhone, even though it had been negotiating under 24 hours earlier with Cisco over a licensing deal. Cisco immediately filed a law suit claiming infringement of its mark.

In Europe, Cisco's hold on the trademark is less secure than was previously thought. OUT-LAW revealed that a revocation application filed by a German law firm could exploit the fact that the mark appears not to have been used in Europe for over five years prior to the 18 December launch of iPhone products.

That application was filed on 18 December, the very day on which Cisco launched its products. Trademark law in Europe states that a mark must be used and, if it lies idle for five years, can be challenged.

A similar law has been reported in the US, where in order to keep a trademark a company has to file a Declaration of Use to the US Patents and Trademarks Office by the sixth anniversary of the registration of the mark.

Cisco did this, but the photographic evidence it presented in its filing was of an existing Cisco product with a sticker saying "iPhone" put on the outside of the packaging. This may not constitute use for the purposes of the law, said an expert.

Jay Behmke, a partner at trademark law specialists CMPR in the US, told Ed Burnette's ZDNet blog in the US that the company's filing may not be good enough.

"It is possible that the Declaration of Use is defective, as there was no continuous use, and the sample that Cisco submitted was for a product not released until seven months later," he said. "The fact that the Declaration of Use was submitted only days before the deadline expires gives me the impression that they were scrambling to get a product to market, and had to file the Declaration before the product was ready."

Cisco spokesman John Noh rebutted the claims. "We maintain that Cisco has taken all actions necessary to satisfy all elements to prove the validity of our trademark under trademark law in the United States and elsewhere where we hold the trademark," he told Burnette's blog.

Copyright © 2007, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

Boost IT visibility and business value

More from The Register

next story
Yorkshire cops fail to grasp principle behind BT Fon Wi-Fi network
'Prevent people that are passing by to hook up to your network', pleads plod
UK government officially adopts Open Document Format
Microsoft insurgency fails, earns snarky remark from UK digital services head
Major problems beset UK ISP filth filters: But it's OK, nobody uses them
It's almost as though pr0n was actually rather popular
HP, Microsoft prove it again: Big Business doesn't create jobs
SMEs get lip service - what they need is dinner at the Club
ITC: Seagate and LSI can infringe Realtek patents because Realtek isn't in the US
Land of the (get off scot) free, when it's a foreign owner
MPs wave through Blighty's 'EMERGENCY' surveillance laws
Only 49 politcos voted against DRIP bill
Help yourself to anyone's photos FOR FREE, suggests UK.gov
Copyright law reforms will keep m'learned friends busy
prev story

Whitepapers

Designing a Defense for Mobile Applications
Learn about the various considerations for defending mobile applications - from the application architecture itself to the myriad testing technologies.
How modern custom applications can spur business growth
Learn how to create, deploy and manage custom applications without consuming or expanding the need for scarce, expensive IT resources.
Reducing security risks from open source software
Follow a few strategies and your organization can gain the full benefits of open source and the cloud without compromising the security of your applications.
Boost IT visibility and business value
How building a great service catalog relieves pressure points and demonstrates the value of IT service management.
Consolidation: the foundation for IT and business transformation
In this whitepaper learn how effective consolidation of IT and business resources can enable multiple, meaningful business benefits.