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Cisco versus Apple for the iPhone name: development scenarios

The Cisco / Apple quarrel about the iPhone name seems like a not easily unravelable skein. Let's analyze the various contexts involved and some possibilities to consider.

Situation in the USAAccording to some, including trademark law expert Jay Behmke, Cisco may not own the rights to use the 'iPhone' trademark on American territory, having lost them about a month ago, according to US laws, to continue to hold rights on a registered trademark need to file a declaration of use within six years (with possible extension of 6 months) from the date of registration of the trademark.

Cisco registered the 'iPhone' trademark on 11/16/1999. Calendar in hand, the deadline for filing a declaration of use was 05/16/2006: Cisco archives this declaration on 04/05/2006. It would therefore appear that this gesture mortgaged the trade mark rights. American laws provide for a rigid protocol for the formulation of the declaration of use, a protocol that Cisco seems not to have followed.

If the Cisco statement of use was not valid, the rights would pass to the second company listed for the brand, Ocean Telecom LCC, which many believe to be an empty box belonging to Apple. This would not immediately resolve the dispute, but certainly Cisco could no longer make legal claims.

Situation in Europe?As in the US, Cisco would have lost its rights in Europe too. This is Lee Curtis of Pinsent Masons (Out-Law). European laws provide that a person (natural or legal) can invoke the rights to a trademark, registered by third parties, through a valid application if the trademark has not been used in Europe for at least 5 years from the date to of registration.

This request was filed by the German law firm CMS on the same date that Cisco launched its iPhone in the US, that is, on December 18 last year. In the previous 5 years there has been no use of the 'iPhone' brand in Europe, nor a well-defined plan for the launch of the product. Even in the old continent, Cisco's rights are therefore under threat.

Alternative scenariosUndoubtedly Cisco is the company that has long been concerned with protecting the 'iPhone' brand both in the US (inherited from Infogear) and in Europe. So it is premature to think that he has already lost the lawsuit against Apple. If the latter does not somehow manage to untie the use of the brand by Cisco, Steve Jobs could cost the brand royalties very expensive, we speak in the order of $ 325 million a year.

As we have already highlighted, the negotiations between Apple and Cisco continued until a few hours after the keynote of 9 January; Cisco aimed more than anything to get a part in Apple's iPhone project, not so much to monetize the state of affairs. Apple doesn't seem very willing to give in to Cisco's requests.

One last possibility, expressed by Robert X. Cringely, would concern a possible change of name of the mobile phone: from 'iPhone' to 'Apple Phone', a bit like success for 'Apple TV'. Everything revolves around that 'i', which now seems to have a very relevant meaning in itself and immediately associated with a family of common products (iTunes, iLife, iPod, iMac, etc.).

A change of name would save Apple from having to shell out millions of dollars every year, but it could no longer write 'iPhone' on its cell phone packaging. Time is running out: there are still six months to change the packaging.