August 14th, 2006
Another cease and desist letter from Apple regarding usage of "pod" turns up
Another small businessperson who is being bullied by Apple’s lawyers for the use of the word "pod" in her trademark has come out of the woodwork.
Meet 53 year-old self-employed Terry Wilson from New Jersey. Last year, Wilson, who lives alone and makes a living as an independent Web designer (see www.terryfic.com), was having difficulty protecting her Apple PowerBook. According to her, it was a problem common to PowerBooks related to a week lid latch and so she decided to come up with her own solution.
After having success using a spare sock to store her mouse in a way that its wire didn’t get all tangled up with the other contents of her bag, she raided her dresser once again, found a vintage pair of spandex pants from the 80’s, and recycled them into an ingenious, incredibly lightweight and apparently snug protection sleeve for her notebook. Not only did it solve the problem, passers-by would notice when she removed the PowerBook from her bag and ask where she got the protective cover. So, last April, she decided to start making them for resale. Aside from figuring out where to find an endless supply of different spandex patters (turns out, the answer is eBay), the only question was what to call it. Via telephone, Wilson told me:
I tried to think of a name for it and, of course, available domain names is an issue. I had all kinds of names that were different combinations of words and I’d run them by my friends for their opinion. For example, a merger of "laptop" and "leotard." But my friends rejected most of them until I realized this was like putting a seed in its pod and that’s when I came up with TightPod. I also realized that pod was a hot buzz word — a part of the vernacular. It was turning up everywhere else. So I went with that.
Wilson has no fancy staff or production facilities. She waits for orders to come in through her Web site (www.tightpod.com) and makes them herself. To be honest, for $25 and with over 70 patterns to choose from including tiger (above left), snakeskin, and a patch of butterflies (and with Christmas coming up), these would make great stocking stuffers for those geeks who already have everything.
But not if Apple gets its way. After Apple, maker of iPods, found the trademark application in which Wilson mentions covering MP3 players as well, its lawyers sent a threatening letter that was nearly identical to the one that the same law firm sent to Dave and Carolee Ellison, owners of a family run business out of Florida that makes arcade games and a small accounting device called a Profit Pod. Said Wilson of her application:
Actually, there’s really just one small size and it was more for peripherals like mice and cables then it was for anything else and almost all of my sales are for notebooks anyway.
But, in realizing the smaller size fits MP3-player sized devices, Wilson figured why not mention that too. And that’s apparently what Apple noticed since the letter addressed to her cites that part of her application multiple times. In the letter (full text) to Wilson, not only does Apple offer her what it says is a "reasonable opportunity" to phase out usage of the TightPod trademark, it notes that Apple has registered a trademark for the word POD in other parts of the world and plans to do so in the US:
Apple recently learned that you filed an application for TIGHTPOD (Serial No. 78/746,044), on November 3, 2005, for "Beeper carrying cases; Camera cases; Carrying cases for radio pagers; Carrying cases specially adapted for pocket calculators and cellphones; Cases for diskettes and compact disks; Cases for electronic diaries; Cases for mobile phones; Cases for pocket calculators; Cases for telephones; CD cases; CD sleeves; Cell phone covers; Compact disk cases; Computer carrying cases; Dust covers for computers; DVD cases; DVD sleeves; Jackets for computer disks; Laptop carrying cases; Phonograph record sleeves; Protective carrying cases for portable music players namely MP3 players" in Class 09. Our subsequent investigation revealed that you are using the TIGHTPOD mark on your websites at www.terryfic.com, www.tightpod.com, and www.tightpods.com. For the reasons below, Apple is concerned that the application for and use of the TIGHTPOD mark infringes Apple’s trademark rights and dilutes its famous IPOD brand…
….Apple owns, inter alia, U.S. Trademark Registration Nos. 2,835,698, 2,781,793, and 3,089,360 for its IPOD mark for portable and handled digital electronic devices, as well as several pending U.S. applications for the IPOD mark…..
…Apple also owns registrations for POD in the European Community and elsewhere, as well as a pending application in the U.S. (serial No. 78/459,101) for the POD mark…
…We believe there is confusing similarity between Apple’s IPOD and POD marks and the TIGHTPOD mark. TIGHTPOD is a POD-suffixed mark, which incorporates a substantial portion of Apple’s IPOD mark and the POD mark in its entirety. The products are indisputably related: TIGHTPOD bags are for direct use with Apple’s IPOS device ("Protective carrying cases for portable music players namely MP3 players"). As such, the TIGHTPOD mark will inevitably cause consumer confusion as to the source of the products and dilute Apple’s famous IPOD mark.
In response, Wilson has offered Apple two choices. The first of these is simple: remove the reference to MP3 players in her trademark. The second of these, if Apple can’t budge on reference to the word "pod" (as is apparently the case with the Ellisons) is to split the cost of completely removing the word pod from her brands, Web sites, and trademarks and coming up with something entirely different. Wilson estimates the total cost at $20,000. So, this second option would run Apple $10,000 which she estimates is far less money than Apple will spend if it decides to exhaust its legal options. The third, unmentioned option, of course is to go to court and defend her trademark, which Wilson is prepared to do.
And so she should be. It’s certainly news that Apple has registered the POD mark somewhere in Europe and has an application for it here in the US. Perhaps those registrations are in countries where there’s no such word as "pod." For now however, Apple does not have a trademark on the word "pod" here in the US and this business of shaking down small businesspeople to keep them from using a word that’s listed in the dictionary (peas, whales, etc.) is just shameful.
But perhaps the most interesting subtext to this story is that Wilson doesn’t harbor enough ill-will against Apple to stop buying the company’s products. She has owned about 10 Macs over the years and is currently surrounded by four of them and says she’ll buy more. In some ways, that’s one of the most ironic things about this story. Not only is Apple bullying people for the use of the word "pod," it’s bullying its own customers.
| 08/14/06
