Cartier goes extreme! Then it drops extremism.

In today's world, sometimes the hammer is not good to use, because all it brings is weird and strange publicity.

I think that Cartier leapt before it looked when it filed suit against Apple for apps for the iPhone and iPod Touch. The app were a fake watch and a fake gold watch, both with the distinct Cartier mark and look. This means that the company who made the software could have caused confusion in consumers who might have thought Cartier approved the software. Apple reviews all software for the iPhone and iPod Touch, so Apple also caused the infringement.

However, (and as we will soon see) would not a letter to Apple's internal legal department have been enough? A company with as much on its own name as Apple would know and understand the problems this software created and the app could easily be removed from Apple's iTunes store. Of course, this is exactly what Apple did, but why the lawsuit, then? It makes me wonder about the machinations - sometimes it's good to wield the hammer, but that does not mean that it always needs to be used. Did Cartier contact Apple first? Did Apple respond? I really would love to know what happened.

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Is literary fan fiction copyright infringment?

Fan fiction can be classified as the stories written by the fans of a literary (or other media ) franchise. Many people write fan fiction (and it probably started with "Star Trek" and the "X-Files" back when I was in college online - but I'll accept any earlier examples). The stories are not sold and only appear as if they are written for fun.

This is the key - the stories are NOT sold. One of the guidelines to determine if a work falls under Fair Use is if it does not harm the market for any original work. Here, since those fan fiction stories are not sold, the markets for original stories are not harmed, so I would argue that fan fiction is not copyright infringement.

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They are popular! Thank you all for logging on! I will have another trademark and copyright law seminar online on Friday, May 29th at 11 AM. I will send details as soon as the website URL registers. Please join then!

Lieutenant Dan Got Me Invested in Some Kind of Fruit Company.

Cisco and Apple finally settled their dispute over the use of the trademark "iPhone."

It comes as no surprise since Cisco's complaint was filed back in January. The complaint alleged trademark infringement, unfair competition, false description and injury to business reputation (the charge of injury to business reputation is a California state claim; all the others are federal claims under the Lanham Act - the act that makes trademarks the domain of federal law).

Cisco had two main arguments in its infringement argument. The first that Apple's use of "iPhone" in its cell phones would confuse customers because Cisco's iPhone used for "computer hardware and software for providing integrated telephone communication with computerized global information networks." (That's from the description in the trademark registration.) The second is that even if Cisco and Apple make different products now, in the future, technology would allow their products to converge and the same mark would then compete head-to-head from two different companies.

One of the last paragraphs of the Associated Press story says, "Legal experts said Cisco's argument that the phones could eventually compete seemed like an unlikely scenario. They added that the products and markets they serve are currently so dissimilar there's little likelihood of future trademark tangles."

I agree that the "future" argument is weak. I am concerned, though, because at first blush, Apple's iPhone "combines three products — a revolutionary mobile phone, a widescreen iPod with touch controls, and a breakthrough Internet communications device with desktop-class email, web browsing, maps, and searching — into one small and lightweight handheld device" (according to the iPhone website). If that is not "computer hardware and software for providing integrated telephone communication with computerized global information networks," then I'm not too sure what is.

What I find interesting, however, is Cisco's trademark attorneys' lack of using trademark dilution as well as infringement in their arguments. Dilution is the use of a famous trademark in another mark which lessens the uniqueness of the mark. The issue here: Was "iPhone" famous before Apple's cellular phone announcement? I would have made the argument, especially since the Trademark Dilution Revision Act of 2006, or H.R. 683, was signed into law. The new law revised the definition of dilution so that the plaintiff only needs to show the defendant's mark is likely to cause dilution (in the past, only evidence of actual dilution was to be considered).

I'm not sure this is finished. Apple and Cisco, as a part of the agreement, are going to try to work together to have products (like the iPhone) that work with Apple and Cisco technology. I'm curious how well that will go.

Happy New Year

Happy New Year, readers!

The forum has taken some time off in order to do work and take care of personal business.

The big news story in the technological world comes from Apple. There's no shock there, as Apple has been making waves in personal devices, like the iPod. In fact, this forum noted that Apple has been protecting its marks feverishly by taking steps to stop any mark that begins with a lower-case "i" followed by a word.

So, the big news story is that Apple has released a cell phone called, of course, the iPhone.

And now the battle begins for the name, iPhone. What's that? You never heard of iPhone before? Cisco owns the mark and has begun to try to enforce its rights in the name, saying that Apple's iPhone mark is in the same goods and services (or a similar set) as Cisco's.

If anyone is curious, the text of the complaint can be found on the Web.

The iPhone name was first registered in 1996 by InfoGear, a maker of Internet appliances. Cisco acquired InfoGear, and the trademark, in 2000.

Apple even tried to negotiate the use of the iPhone mark.

Looking at the mark, Cisco's iPhone represents "computer hardware and software for providing integrated telephone communication with computerized global information networks."

As in most trademark issues, the issue swings upon the difference between the two products. Is Apple's cell phone/music player/video player/internet browser different enough to Cisco's products? It'll be interesting to keep tabs on this one.

I feel prescient. Apple defends "Pod."

Back on July 20th, I wrote, "Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness."

Now here is the twist. Apple is claiming the word "pod" as its own trademark in all situations. The worry is that any use of "pod" in a trademark could dilute the "iPod" mark.

Let's start with what trademark dilution is. As I defined it on my trademark website of NYCTrademarks.com, "Trademark dilution ... is reserved for strong trademarks. Those trademarks with the strongest in identity in a market cannot be used in other noncompeting markets. This is to avoid "diluting" the strong, recognizable mark by its use in noncompeting markets.
"Dilution is best described in an example. A mark that is recognizable is 'Barbie.' The mark 'Barbie' brings up an idea of a girl's doll of an adult woman and friends in a pink box. Most likely, 'Barbie' would not be allowed to be used in another market, even if it did not compete with children's toys because of how strong the mark is and how identifiable the mark is to the goods."

I based this example from a real case, Mattel, Inc. v. MCA Records, Inc. 296 F.3d 894 (9th Cir. 2002)(the link opens a PDF file). In this case, the song "Barbie Girl" by the group Aqua was found to dilute Mattel's trademark in the word "Barbie." (One interesting question never propsed: What if the song wasn't called "Barbie Girl"?)

Dilution comes in when the defendant's use of a mark either blurs the connection in consumers' minds between the plaintiff's mark and the goods and services is weakened or the defendant's use tarnishes the plaintiff's mark. (Tarnishing means that the defendant's use is unsavory or unwholesome or the mark is used in connection with inferior products.)

The issue in any upcoming fights will be two-fold: Is "iPod" as a mark strong enough to warrant that it can be diluted and can any mark with "pod" in it dilute "iPod"?

Mailbag!

The last post about Apple's new trademark "NUMBERS," put a thought in the mind of Bryan Adams of Teaneck, NJ.

"Is that why the TV show is called 'Numb3rs'?"

Well, that's hard to say. If I were to guess, I would say that is more of a stylistic choice than a choice because of trademark law.

This is for a few reasons. First off, not many television shows have their titles registered as a trademark. The simple reason for that is there was a time when television shows were not as marketed as they are today. The only association for the name was, probably, the show.

Today, with the advent of t-shirts and DVDs and a million different action figures based on so many television shows, it should come as no surprise that more titles are being registered.

"NUMB3ERS" recently registered on January 31, 2006. Its registration number is 3055208 (for those who would like to look it up). It is registered in International Class 41 under the goods/services of "Entertainment services in the nature of a dramatic television series." (This does make me wonder how a television series provides services of any nature if it's dramatic. It seems more like goods than services to me.)

"NUMBERS" for Apple has not yet registered, but was allowed to continue. It is in International Class 9 for goods/services of "computer software for home, education, business, and developer use."

Can "NUMBERS" and "NUMB3RS" exist next to each other? Absolutely. One of the hallmarks of trademark law is that marks are defined by their industry, goods/services the mark is related to, and the strength of the mark.

Here, the two marks are in completely different industries. One is for a television show and the other is for computer software. You can also argue that the two marks are not that strong.

Trademark strength is defined by how it is related to its mark. The types of marks are defined as:

• Fanciful
• Arbitrary
• Suggestive
• Descriptive
• Generic

A fanciful mark is a mark that has no definition in the dictionary. These are the strongest trademarks because the only relation that exists is to the product sold. Think "Kodak" for cameras and film, or "Clorox" for bleach.

An arbitrary mark is a mark that is a word that is not used in the context of the mark. Think of "Oracle" for computer software or, even "Apple" for computers.

A suggestive mark suggests some quality or characteristic of the mark. "Coppertone" for sun tanning products is the classic example.

A descriptive mark is the weakest kind of trademark. There is a direct link between the mark and the products without any thought needed by consumers. Think "Jiffy Lube" for automobile oil change services. These marks can become stronger with time and use.

A generic term is not a trademark and has no protection. Think "Ball" or "dish."

How does this relate to "Numbers"? Well, both are probably suggestive marks. "Numbers" for a spreadsheet program describes what the software does. There might be more to it, but on the most basic level, the mark describes the product. "Numb3ers" is a television show about a person who uses advanced mathematic principles in order to solve mysteries. It can adequately suggest the premise of the show.

Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness.

Do the different spellings mean anything? No. They are pronounced the same and would be treated as the same word. Note that "doughnut" (the correct spelling) is treated just like "donut" in trademark law. They sound the same and they also look relatively similar.

So, "Numbers" can describe software and "Numb3ers" can describe a television show. The marks are not strong enough to cause confusion in consumer thought. The spelling differences will not mean much, either.

Apple has a new trademark.

According to a story on MacsimumNews.com, Apple has registered "NUMBERS" as a trademark.

"Numbers," so say the rumors, is going to be the name of Apple's new spreadsheet software for a new suite of office software for the Mac. The article deals with Apple's European trademark filings, so a look at the U.S. Patent and Trademark Office database reveals that "NUMBERS" is Published in Class 009 (which is where computer software is classified - as electrical and scientific apparatuses) for the goods and services of "computer software for home, education, business, and developer use."

Unlike the European applications, Apple is only claiming software but also claims what is called priority. This means that Apple is basing this trademark application not only on its own use of "NUMBERS" in the United States, but also on an application in another country so it can have the filing date and details of the earlier application. In this case, it is Malaysia. That means Apple is most likely going to try to apply "NUMBERS" in the same classes and same goods as it is in Malaysia (like Apple is doing in Europe).

Also, the U.S. application for "NUMBERS" has no date to indicate the first use of "NUMBERS" in commerce. That is because there is no date that Apple has used "NUMBERS." This is called an intent-to-use trademark application.

Apple has filed based upon its intent to use it in for the goods and services claimed in the application. When this trademark is allowed (the trademark registrant receives a Notice of Allowance from the U.S. Patent and Trademark Office), Apple has six months to show that the company is using the mark in the goods and services claimed. After that period, the trademark may be registered.