January 16th, 2007

Cisco/Apple: The dog that did not bark in the night

Posted by Ed Burnette @ 12:01 am

Categories: Apple, Cisco, General

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Last week's article pointing out questions surrounding Cisco's ownership of the "iPhone" trademark generated a huge amount of interest. It was picked up by slashdot, digg, and even inspired an eBay auction of one of the iPhone stickers. As you can imagine I've been inundated with feedback on this issue, including a response from Cisco on the whole thing.

Some of the most interesting comments came from other trademark lawyers who disagreed with parts of Jay Behmke's analysis. The most detailed rebuttal came from Martin Schwimmer, a trademark lawyer and partner in the Schwimmer Mitchell Law Firm, who had objections to three sections in particular:

1. Possible misstatements in Cisco's Declaration of Use.

[Schwimmer] Cisco did not allege continuous use nor did it have to — its Section 8 alleged merely use at the time of filing, May 06.  In fact it's failure to file a declaration of continuous use, called a Section 15 affidavit, was conspicuous by its absence, but such a filing was not mandatory to preserve the registration.

Jay Behmke responds that indeed, there was a technical mistake in his analysis but it doesn't change his basic point that "Cisco fabricated a non-existent product to use as their specimen of trademark use". He goes on to say:

[Behmke] After a trademark registration has been effective for 5 years, there are two declarations that a registrant can file:

Section 8 — this is a mandatory declaration: if you fail to make it, your trademark will be canceled. From the USPTO website:

"Between the 5th and 6th year after registration the owner must file a Declaration of Continued Use or Excusable Nonuse (also known as a Section 8 Declaration). Failure to file the Section 8 Declaration results in the cancellation of the registration. (There is a 6-month grace period.)" [more on page 2...]

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