In the first post in this series I provided examples wherein two companies are using similar logos:
Yet only one,.PDT/VoIPvoice, has registered the trademark but the other, Cisco/Linksys, has been using its version for the past 18 months at least. Of course lots of publicity has been given to Cisco’s trademark infringement suit over Apple’s use of the iPhone label for similar products sold into the telephony market.
In light of this coverage and the subsequent statements that came from Cisco in a blog posting by Mark Chandler, Sr. VP and General Counsel, it becomes interesting to imagine what PDT could be thinking to say about Cisco/Linksys:
Cisco Statements re iPhone
What PDT could state
|Our expectation was that our name wouldn’t be used without permission. And it is a surprise when any large company announces a product using a name they don’t have a right to use.||Our expectation was that our name wouldn’t be used without permission. And it is a surprise when any large company announces and continues to distribute a product using a name they don’t have a right to use.|
|Cisco is aware that other companies have used the iPhone name and in the past Cisco has been involved in ‘enforcement actions involving the use of this name||If Cisco/Linksys had checked trademark registrations and fully carried out their market research, they would be aware that other companies have used the VoIPvoice name. (In applying for Skype Certification they should have learned about VoIPvoice products which were amongst the first to be Skype Certified)|
|They (Apple) clearly seem to value intellectual property. If the tables were turned, do you think Apple would allow someone to blatantly infringe on their rights?||Cisco/Linksys clearly seems to value intellectual property. We know that with the tables turned (see iPhone case), Cisco would not allow someone to blatantly infringe on their rights?|
|How would Apple react if someone launched a product called iPod but claimed it was ok to use the name because it used a different video format? Would that be ok? We know the answer – Apple is a very aggressive enforcer of their trademark rights.||How has Cisco reacted when Apple launched a product called iPhone but claimed it was ok to use the name because it used a different audio format? Would that be ok? We know the answer – Cisco is a very aggressive enforcer of their trademark rights.|
|And that needs to be a two-way street. This lawsuit is about Cisco’s obligation to protect its trademark in the face of a wilful violation||And that needs to be a two-way street. Any potential lawsuit would be about PDT’s obligation to protect its trademark in the face of a wilful violation|
|seeking to prevent Apple from infringing upon and deliberately copying and using Cisco’s registered iPhone trademark||seeking to prevent Cisco/Linksys from infringing upon and deliberately copying and using PDT’s registered VoIPvoice trademark|
|but they should not be using our trademark without our permission||but they should not be using our trademark without our permission|
|From Cisco’s law suit filing:|
|Apple’s “iPhone” device will be distributed and sold in the same types of retail channels and to the same classes of purchasers as Cisco’s iPhone family of products and services.||Cisco’s “iPhone” device (with VoIPvoice logos on the packaging and included on items in the box such as the CD) will be distributed and sold in the same retail channels and to the same purchasers as PDT’s VoIPvoice family of products and services.|
|Apple’s use of Cisco’s mark is likely to cause confusion, mistake, or deception in the minds of the public||Cisco’s use of PDT’s VoIPvoice logo mark has been clearly demonstrated to cause confusion, mistake, or deception in the minds of the public|
|Apple’s infringement constitutes a wilful and malicious violation of Cisco’s trademark rights, aimed at preventing Cisco from continuing to build a business around a mark that it has long possessed||Cisco’s infringement constitutes a wilful and malicious violation of PDT’s trademark rights, aimed at preventing PDT from continuing to build a business around a mark that it has long possessed|
|Clause 43 talks about injury to business reputation by people mistaking a relationship between Cisco and Apple||There are clearly grounds to demonstrate injury to business reputation by people mistaking a relationship between PDT and Cisco|
In the CNet article referenced above, Bruce Sunstein, co-founder of the Boston law firm Bromberg & Sunstein, is quoted: “Cisco holds a clear advantage in the [iPhone] legal dispute as the trademark holder of record and having already released products using the iPhone name …. The one who has a registration is in a better position than the one who does not.”
And the article goes on to state:
In the U.S., courts evaluate trademark disputes based on a list of 13 factors, including how similar the trademarks are, how well-recognized they are–and, crucially, whether there will be “any actual confusion” on the part of consumers.
Sounds like PDT can build a case against Cisco/Linksys’ use of the VoIPvoice logo using:
- customer and market confusion
- products that are direct competitors in the same market
- a violation of PDT’s trademark rights
- prior registrations in both the U.S. (provisional) and the U.K. (accepted 2002)
- significant ongoing sales of VoIPvoice products in both the E.U. and U.S. (and, in fact, worldwide via the Skype Store)
With respect to the last point there is no confusion over whether PDT had “abandoned” use of the VoIPvoice logo. A post by ZDNet’s Ed Burnette reports some experts seem to feel may be the case with Cisco/Linksys’ use of the iPhone trademark. PDT has been continuously selling VoIP phones under the VoIPvoice name for at least the last three years. In the author’s follow-up article, Jay Behmke, a partner at CMPR who specializes in trademark law, is quoted. “Registration of a trademark is not the crucial issue. Trademark rights come from use. Registration only recognizes the rights you have obtained from use.”
[Note: in these articles reference is made to the “recent” application of an iPhone sticker to the Cisco packaging. For the [now iPhone] CIT200 I purchased in December, 2005 (which makes use of the VoIPvoice logo as illustrated in my previous post), there is no iPhone logo or label on either the product or any of the collateral in my possession.]
In a recent development, Cisoc/Linksys has taken out a full page “iPhone” ad in the New York Times (Feb. 1) but there exists significant skepticism as to the real purpose of the ad. Hat tip also to Janet Whitman in the NY Post and textually.org.
In the final post of this series we will interview an executive of PDT as well as seek a response from Cisco/Linksys.
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