Cisco claims Apple used phony company to get name

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Cisco's Trademark Position.

IAATL - trademark is one of my specialities.

The Cisco iPhone trademark was registered 11/16/1999 (Reg. No. 2293011). In order to keep a trademark registration active, you have to file a Declaration of Use on or before the sixth anniversary of the registration date, in which you state, under penalty of perjury, that you have been using the trademark continuously during that period. The sixth anniversary would have been 11/16/2005.

Cisco did not file the Declaration of Use by 11/16/2005, which if they had been using the trademark would seemingly have been easy to do. However, the USPTO gives you an extra six months grace period, if you pay an extra fee. This grace period would have expired 5/16/2006. Cisco filed a Declaration of Use on 5/4/2006 which kept their registration active. Had they not filed, their registration would have been canceled.

With the Declaration, you are required to file a copy of a label or other packaging showing the trademark in use. Cisco filed a picture of the box for the Linksys iPhone.

Now the Cisco press releases I have seen indicate that Cisco released the Linksys iPhone products in December 2006.

Now this is my personal opinion based on the information I have seen so far (your mileage may vary): Cisco may have a problem with its trademark registration because it has not been continuously offering a product under the iPhone trademark since 1999. They knew that Apple was interested in the name (since Apple had approached them and negotiations were ongoing). If Cisco didn't launch a product using the iPhone name, their trademark registration would be canceled and they would have no bargaining chips with Apple. So in order to keep the trademark active, they had to file the Declaration of Use, and start selling a product under that trademark.

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 7 months later.

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.

Apple's lawyers will have certainly found the same clues that I did, and may believe that Cisco's registration can be canceled (by proving in federal court that the Declaration of Use contained mistatements of fact - there was no continuous use).

If Apple believes that they can get the registration canceled, they may not have wanted to sign the agreement Cisco proposed. Without the registration, Cisco and Apple would still have a trademark dispute to resolve, but Cisco will have a harder time proving that it has valid trademark rights.

Posted by: jmbehmke   Posted on: 01/11/07 You are currently: a Guest | Members login | Terms of Use

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