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Legal experts to Steve Jobs: iPhone your lawyers

An Apple spokeswoman called Cisco's trademark suit 'silly'

By Todd R. Weiss
January 11, 2007 12:00 PM ET

Computerworld - 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."

While the iPhone is a cell phone, iPod and Internet device in one, Cisco has been selling a line of iPhone mobile phone products under its Linksys brand since early last year, according to the company.

On the other hand, Apple has had so much commercial success with its "i" series of products -- everything from the iBook, iPod, iTunes to the iSight and iMac -- that the company may have some strength in court using such an argument, Dort said.

Cisco has owned the iPhone trademark since 2000, but it hadn't really used the name until last year, he said. Cisco said it obtained the iPhone trademark after acquiring InfoGear Technology Corp., which sold stand-alone devices to access the Internet without a computer. The original iPhone trademark filing by InfoGear dates back to March 20, 1996, according to Cisco.

One other legal issue stands in the way for both companies, according to Dort. Under U.S. trademark law, a trademark must be renewed every five years. But Cisco didn't file a renewal for the iPhone name within the official five-year time frame. Instead, Cisco filed its renewal application last May, only 12 days before a six-month grace period would have expired.

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