Update: Cisco sues Apple over iPhone trademark

The two sides have been in talks about the name

Cisco Systems Inc. late today announced that it has filed suit against Apple Inc. in U.S. District Court for the Northern District of California in a bid to stop Apple "from infringing upon and deliberately copying and using Cisco's registered iPhone trademark."

Cisco, in a statement on its Web site, said it got the iPhone trademark in 2000 after it bought Infogear, which had owned the trademark and had sold iPhone products for several years. According to Cisco, Infogear's original filing for the trademark was on March 20, 1996.

Linksys, a division of Cisco, has been shipping iPhone products since early 2006 and last month expanded the iPhone line further.

"Cisco entered into negotiations with Apple in good faith after Apple repeatedly asked permission to use Cisco's iPhone name," said Mark Chandler, senior vice president and general counsel for Cisco. "There is no doubt that Apple's new phone is very exciting, but they should not be using our trademark without our permission.

"Today's iPhone is not tomorrow's iPhone," he said. "The potential for convergence of the home phone, cell phone, work phone and PC is limitless, which is why it is so important for us to protect our brand."

With the lawsuit, Cisco is asking the court to prevent Apple from copying its iPhone trademark.

Apple CEO Steve Jobs announced the iPhone yesterday at the company's Macworld Expo in San Francisco even as lawyers were still working behind the scenes to nail down the legal issues associated with the iPhone name.

The iPhone has proved to be the most talked-about product at this year's MacWorld, and its positive reception sent Apple's stock surging over the past two days. The company's stock closed at $97 today, up nearly 5% for the day.

Apple and Cisco have been in negotiations for about two years over Apple's desire to license the iPhone trademark, said Cisco spokesman John Noh. "Because they have been negotiating with us on licensing the trademark all this time, Apple is acknowledging that we own the name," said Noh.

Jobs made no mention of any dispute over the name during his announcement yesterday.

Asked about the lawsuit, an Apple executive told PC World that because the Cisco iPhone is a voice over IP (VoIP) phone and the Apple iPhone is a cell phone, Apple is not violating Cisco's trademark.

"They're different products," said Greg Joswiak, Apple's vice president of worldwide iPod marketing. The iPhone also includes an iPod music player.

But if Apple was in talks with Cisco to license the iPhone trademark, it would be "a dangerous move" for Apple to start using the iPhone name anyway, said trademark attorney Allonn Levy of law firm Hopkins & Carley in San Jose. "It could be seen as intentional infringement."

Levy said it's possible that Apple could argue that Cisco had not introduced any iPhone products until last summer and that Apple would consider the name available. But he also said Cisco may have filed the lawsuit in order to pressure Apple into signing the trademark licensing agreement the two companies had been negotiating.

Neither Levy nor his firm represent Cisco or Apple.

Discuss the Apple phone:

Shark Bait: Apple's mobile phone: A must-have product, or will it go the way of the Newton?

Computerworld's Sharon Machlis and the IDG News Service contributed to this report.

Copyright © 2007 IDG Communications, Inc.

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