Cisco Blogs

Taking Umbrage With WSJ’s Holman Jenkins Over iPhone Column

January 23, 2007 - 5 Comments

The old adage in communications is never pick a fight with someone who buys ink by the barrel. However, there isn’t an equal adage for 1’s and 0’s, so, hence, as Cisco invented the router and the network which is the platform for all current communications, I think it is appropriate to respond to Wall Street Journal columnist Holman Jenkins on this Cisco blog. (Note: please read this blog’s disclaimer…I am clearly speaking for myself here.)He wrote a column last week (January 17th) entitled “iFoodfight” about the iPhone trademark and Cisco’s suit against Apple. If you have a WSJ subscription, you can read it online here. He’s a good writer and a good columnist, but I had to wait a few days to respond so I could calm down in response to this one. Here is what I would write him:Dear Mr. Jenkins: Your piece on the iPhone (“iFoodfight,” January 17, 2007) issue deserves comment. First, you write an opinion piece, so you are entitled to say what you want. However, to suggest that one should “love” a company for using a trademark that is owned by someone else is, to use Apple’s own words to respond to our lawsuit, “silly.” In this era of post-Enron, backdating options and trying to win back investors confidence in the marketplace, playing by the rules should be championed, flaunting rules should not be. Further, to suggest that Cisco doesn’t make products that people care about is to say that people don’t care about broadband, internet security, wireless access, video connectivity, VoIP and the whole networked universe. As 80% of all internet traffic touches Cisco equipment at some point, I think you might need to reassess what people care about. Last I checked, this Internet thing is pretty popular.Lastly, you write, the impression is that “Cisco’s business plan for ‘iPhone’ never amounted to more than an urge to exploit Apple’s intention to launch a product of the same name.” To be clear, the iPhone trademark dates back to 1996 with Infogear, which Cisco acquired in 2000. If we or Infogear were that prescient in 1996 to think that someday we could sue Apple for their infringing on our iPhone trademark at some point some eleven years later, then we deserve all the credit in the world. Best, John EarnhardtSenior Manager, Media OperationsCisco Systems, Inc.

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  1. There is no question that Apple is a trademark bully and likes to explore new ways to litigate trademark ownership. This, however, does not contradict the fact that Cisco's defense is so week, you can drive a proverbial truck full of Apples through it. I know you don't want to litigate the trademark dispute on the blog, but how does one debunk an argument such as yours without pointing out specific flaws in it?Sure, InfoGear filed for trademark in 1996 and got registration in 1999. This does not mean, however, that the mark is unchallengable.For one, InfoGear won a infringement challenge against in 1999, but failed to challenge a far more obvious domain name Why? Probably because The Internet Phone Company registered the domain in June 1995, long before InfoGear's intent-to-use filing in 1996, actual use in the market in 1998 and registration in 1999. TIPC still owns the domain name, which now redirects to yet, Apple registered in December 1999 without challenge from either InfoGear or Cisco. InfoGear's hesitation to challenge Apple is understandable--they did not have the resources and were rescued from likely bankruptcy by Cisco by mid-2000. Although a new iPhone model was introduced in 2001, there has been nothing on the market since then. But Cisco claimed that it's been approached by Apple ever since 2001. It is virtually impossible that Cisco did not know about the domain name.The InfoGear claim is also vulnerable to the abandonment challenge for several reason, but the issue is not quite as simple as has been reported.First, the Lantham Act clearly lists abandonment as valid ground for revocation if the mark has not been used in the market for three years. There has been no product named iPhone between December 2001 and December 2006--that's five years. Cisco supporters have claimed so far that Cisco continued to support previously sold iPhones, but it is not clear whether that sufficiently qualifies as presence in the market.Second, there is a six-year rule for submitting supporting documentation that many bloggers cited as the reason for claiming abandonment. Contrary to the reports, Cisco did submit the required documentation. There is a problem, however--PTO does not look favorably to fraud and have revoked trademarks for products when a company submitted mock-up packaging rather than market-worthy packaging or other trade dress representation. The picture submitted to the PTO is an obvious box of an existing product with an equally obvious iPhone sticker attached. That is clearly a mock-up.Of course, if Apple's plans were not known in 2005, when the photo was submitted, why the ruse? Apple signed a pact with Cingular for iPhone distribution early in 2005 and has been working with East Asian manufacturers ever since. The forthcoming release of the iPhone was common knowledge in the industry on Taiwan--the same industry that supplies Cisco with a number of its products and components. So it is not a great leap to conclude that Cisco knew about Apple's plans and concocted the alternative plan in order to extort a licensing fee. If the PTO smells fraud, registration will be revoked.Third, a simple trace of the history of the so-called Linksys iPhone product line reveals that all the products in the line had been released prior to re-branding with no hint of iPhone technology"" that was ""introduced"" on December 18. The CIS 310 photo on the Linksys website has no iPhone logo on it. The accompanying description has two iPhone references obviously added post-factum--they are not a part of the description, but occur in places where such a change would require no rewrite. On other models, the situation is similar, although some added a marketing statement in the end touting the ""iPhone technology"". Some of the dealers still have the promotional product photos of CIS 200 and 400 without the iPhone logo, while others have the updated photos (don't know if the photos are of actual new packaging or are simply Photoshopped old photos). Again, it smells like extortion to me, but it's up to the PTO to make that determination.Despite the December 18 release, Cisco was still claiming on January 9 that the pact with Apple was imminent. But if that is the case, then why bother re-branding a VoIP line that has no relation to either the Apple or the InfoGear product. Which brings me to the fourth abandonment factor--the listed trademark description does not match the current Linksys product family. Oops! That means that the original mark still remains unused and it's well past 3 years.There is also a fifth abandonment argument, somewhat weaker than the rest. In 1993, InfoGear also applied for the I PHONE trademark. Some internet rumors suggest that InfoGear picked up the iPhone mark after it was abandoned by an ironically named competitor, Cidco. However, without having the specific proof of this, I doubt the claim's validity. Cidco was not a competitor--it was a partner, signed in 1997, shortly before the iPhone release. In fact, the negotiations were already in place when InfoGear filed for the mark in 1996. But what cannot be questioned is that InfoGear abandoned the I PHONE mark soon after it was registered (at the same time as the iPhone mark). Perhaps they considered the iPhone to be more marketable. Nonetheless, Cisco is the company that is actually responsible for formal abandonment of the I PHONE. One has to ask the question whether the same would have applied to both marks had Apple not been so desperate to create a product they wanted to be known as the iPhone.Abandonment, of course, is not the only arrow that Apple has in its quiver. I already mentioned the TIPC and Nuvio web sites. But there are at least six other companies that use products, components or services in the US that are branded as ""iPhone"". Since ""iPhone"" stands for ""internet phone"" (or, following the Apple family of iProducts, ""interactive phone""), the mark could conceivably be determined to be merely descriptive. And the secondary meaning criterion certainly lies with Apple, not with Cisco. Apple has already claimed that it will use this argument, but it may backfire--neither Cisco nor Apple would end up with the registration, leaving the market to determine what else may qualify as iPhone. Of course, this has never hurt Campbell in selling Chunky Soup (no trademark on ""Chunky"" or ""Soup""). And, given the secondary meaning, this would favor Apple in the market.Many have suggested that Apple may argue the iFamily mark, following iPod, iMac, iTV, etc. The argument frequently used to support this is a court decision upholding McDonalds apparently exclusive right to use Mc in marks of ubiquitous products. However, this is problematic for many reasons, not the least of which is that courts have signalled that they may want to reconsider the McDonalds decision. If I were an Apple lawyer, I would stay away from this can of iWorms. Of course, if I were Apple, I probably would have chosen a different name for the product to begin with--something like ""pPod"" for ""phone Pod"" (with a nice alliterative ring to it as well--somehow, pPhone does nor sound the same).An actual trademark lawyer might come up with more and more inventive arguments on both sides. But the validity of Cisco's trademark is far from certain. Going medieval on a WSJ writer for suggesting that, God forbid, Apple products might be more popular than Cisco's is just silly. Jenkins did not mean to imply irrelevancy of Cisco products in general--just the relative obscurity of the Linksys products re-branded as iPhone. Jenkins is not disputing brand-name recognition of Cisco, but consider this--how many laypeople even know that Linksys is a Cisco brand? And of all people, how many would known that Cisco/Linksys makes VoIP handsets (or ""kits"")? Now compare that to the brand-name recognition of Apple and iPod. Is there any doubt that the market penetration for Apple and iPod is far greater? So what, exactly, did Jenkins say that was so outrageous?John, you are a marketing manager and you want to sell your point. I can understand your intent in attacking Jenkins. But you claims just don't stand up to scrutiny. My final question is, will iPhone be Cisco's Iraq?"

  2. What is very clear is that Apple doesn't tolerate any semblance of infringement on their trademarks. Google securipod apple"" for details, or see"

  3. From what I see and my little brain can understand, Cisco never called it the iPhone before mid December 2006, and because of this, they will loose the trademark and Apple could take it. It will be interesting to see how that litigation turns out...

  4. Lastly, you write, the impression is that ""Cisco's business plan for 'iPhone' never amounted to more than an urge to exploit Apple's intention to launch a product of the same name."" To be clear, the iPhone trademark dates back to 1996 with Infogear, which Cisco acquired in 2000.""Perhaps it's just nitpicking, but...Infogear launched their iPhone _before_ Cisco bought them. Cisco did not launch any new iPhone products until December 2006, at a time when you clearly knew Apple's launch was imminent - you talked previously about having been in negotiations with Apple for a long time.In other words, Cisco did not do anything beyond honoring support and warranties for pre-existing products. They never shipped or created an iPhone-branded product until Dec 2006, a time when you guys seem to be claiming you were expecting an imminent agreement from Apple to license this trademark.If, as you claim, you were about to get an agreement from Apple, why would you suddenly start selling your own line of iPhone products? The trademark filing demonstrates that, as of the middle of 2006 you clearly hadn't even designed an iPhone box.Planning to sell your iPhone at the same time as Apple's iPhone seems like a very strange plan for Cisco to have. I wish I could understand the logic behind it. Note: As I've said before, we're not going to litigate this case on a blog, but my point (which you reiterate) is that Cisco and/or Infogear has had the iPhone trademark since 1996 which is way before any Apple ""i"" product."