First iPhone, Now iPad: Guessing at Apple's Trademark Clearance Strategy

Can you spot the genuine iPad?

Back in July, I blogged about my then-discovery that Apple did not own the federal trademark registration for iPhone.  Needless to say, when I heard about Apple's new iPad product, I just had to see if they were out in front in securing trademark rights to this name.  They're not, at least not in the U.S.  As you may have read in the Wall Street Journal here and here, Fujitsu owns a pending U.S. trademark application for IPAD for use in connection with "hand-held computing device for wireless networking in a retail environment."  Fujitsu claims first use of the mark in January 2002. 

Apple?  Well, it appears that Apple is using a proxy (itself a subject for a whole separate discussion) by the name of IP Application Development to secure registered rights to the IPAD trademark.  That application claims priority to a July 2009 application filed in Trinidad and Tobago.  (Trinidad and Tobago?  Another discussion topic.)

Let's see:  Marks are identical, goods are highly similar, if not identical, and priority of January 2002 versus July 2009.  Slam dunk, right?  "No contest," you say?  Apple, pick again?

NOT SO FAST!  No, this may get interesting.  You see, Fujitsu's application to register IPAD lapsed and was declared abandoned, only to be revived in June 2009 -- a mere month before Apple's first apparent claim to rights.  This makes for a much closer race.  Further, Apple (not IP Application Development) has filed extensions of time to oppose Fujitsu's IPAD trademark application--extensions that will expire on February 28.  We should know Apple's next move within a month's time.

My assessment?  Unlike horseshoes and hand grenades, closer does not count for much here.  Priority is priority, and Apple is likely to face a difficult time surmounting some eight years of common law rights that appear to belong to Fujitsu, even if it could somehow bring down Fujitsu's application, which doesn't look promising.  (Trademark geeks see here for reason.)

Combined with the iPhone kerfuffle, I am now really wondering what Apple's trademark clearance process and discussions are like.  Selling iPods and iPhones is like printing money, so maybe Apple believes that it can just buy its way through all of these thickets.  Even so, wouldn't you want the purchase complete before the product unveiling? 

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Describe Different

"What am I?"

Every invention begs this essential question of identity.

The answer is found in the product's descriptor. A descriptor defines a thing, categorizing it, framing it, positioning it and signaling its intended future.

A product that doesn't claim to break new ground adopts its category's standard convention. For example, a new, run-of-the-mill digital camera would be marketed as a "digital camera".

A revolutionary product, on the other hand, deserves an innovative product descriptor. And, sometimes, a me-too product benefits from one, too.

The trouble is, innovation is easier done than said.

I wrote in this article about the "brander's paradox": Human instincts make us wary of unfamiliar and different things, yet differentiation is essential to a product's success.

By definition, an innovation is unfamiliar. How can its product descriptor differentiate without triggering people's fear of the unknown?

The New York Times gives us an idea in this recent article about product descriptors,

"When people encounter something they don't recognize, they make sense of it by associating it with something familiar."

The most effective new descriptors combine familiar terms in unfamiliar ways. They make product function or form clearly understood, even upon first exposure. Novel descriptors insufficiently informative should at the very least pique interest.

Descriptors that differ

The products shown below the jump illustrate different approaches:

Starbucks VIA ready brew

It's a me-too product but you can't tell from its descriptor. This is really instant coffee, a product designator unbecoming Starbucks. "Ready brew" emphasizes the chief benefit of saving time by using current, casual vernacular.

Dreyer's Slow Churned ice cream

Food scientists have a name for everything, but that name isn't always appetizing. The dessert wizards at Dreyer's, for example, had perfected a new way to blend low-fat ice cream so it acquires the texture and richness of full-fat ice cream. In precise but dry science lingo, they called the process "low-temperature extrusion". Doesn't exactly make the mouth water, does it?

Dreyer's isn't dumb. They knew "extrusion" had no place on a quart of mint chip. They needed a term that had immediate appetite appeal. The words of their final, market-facing descriptor, "Slow Churned", taps into the semiotics of yesteryear, when food was simpler, unprocessed, and naturally indulgent. "Churned" evokes hand-mixed barrels of butter, hinting at the product's creamy richness. "Slow" connotes food that's unprocessed and handcrafted.

On the heels of Slow Churned ice cream's astounding success, Breyer's flattered Dreyer's with their imitative descriptor, Double Churned ice cream.

Disclaimer: I led the naming of Dreyer's Slow Churned ice cream as Global Director of Naming and Writing at Landor Associates.

Bing decision engine

Can't fault Microsoft for trying. Bing is a search engine, pure and simple. Although "decision engine" will never become part of the vernacular, it does suggest how Bing is different: Giving relevant information to help make a informed decision, instead of overwhelming with googlebytes of information.


Noah's Stuffed Saladwich

Coined words are hard to get right. This inventive, efficient descriptor gets mixed results. At a glance, "saladwich" looks like a real word because it begins and ends with the same letters as "sandwich" (a phenomenon cheekily called, "typoglycemia"). But "Saladwich" sounds clunky because "-wich" is not a productive suffix and doesn't normally combine with other words (unlike the "-tini" of "martini" that gives us "chocotini" and "apple-tini"). "Saladwich" will sound less contrived as it becomes more familiar.

Blackberry wireless email solution

Technology products that blend hardware, software and services are tough to describe. More often than not, catch-all words like "solution" or "system" are employed. Though vague, these words avoid long descriptors that specify all key product dimensions. "Wireless email solution" is a lot shorter than "phone, PDA, email, internet, software and services." To its credit (and my alma mater's, Lexicon), the differentiation in Blackberry is borne primarily by the Blackberry name itself, not its ho-hum descriptor.


Segway personal transporter

This NYT article discusses the difficulty of categorizing the Segway, a product that's really unlike anything else. Although the article touches on the brand name, it doesn't mention Segway's official descriptor. "Personal transporter" suggests who the product is for and what it does at a basic level, but it doesn't capture how revolutionary the product is, what it looks like or even whether it's motorized.

But a descriptor can't do everything. Like most products visibly inventive, a photo of the Segway speaks volumes. And messaging, mostly communicated through PR, does the heavy lifting of describing Segway technology and its applications.

Describing technology convergence

Each of the products above fit, more or less, into one functional category. But in electronic devices, disparate functions inevitably converge. Over time, we've seen phones integrate video cameras, music players evolve into movie players, and televisions that browse the Web.

Technology convergence presents a naming quandary: How do you categorize a product that merges others?

There are five approaches a marketer can take when describing one device that does the work of many:

  • List all of the converged technologies (e.g. "all-in-one printer, fax, scanner") Long but accurate, clear and communicative. Needs to change as new functions are added. Generic and not protectable.
  • Cite one function only (e.g. "mobile phone" [the built-in camera is not referenced in the descriptor]) Short; relies on copy and imagery to tout other functions. Doesn't suggest "new". Generic, not protectable.
  • Use one of the technology descriptors as the focus but modify it (e.g. "smartphone") Short; borrows from the familiar to aid understanding. These descriptors can take a long time to be adopted by industry and customers. It helps if the modifier is already understood from other categories and retains that meaning. May or may not be protectable.
  • Come up with something totally new (e.g. "media center") In naming, unfamiliarity is friction. Descriptors like these resist widespread adoption. They typically require a lot of time and money to gain traction. May or may not be protectable.
  • Use no descriptor at all (e.g. "iPod") This is a risky approach and is only viable when the device marketer has (1) control over all communications, distribution and sales and (2) a lot of money.

Apple has conspicuously avoided using a product descriptor per se for iPod. It turns out, they didn't need one. No distributors or resellers could tinker with Apple's disciplined and exacting messaging. At launch, the ad headline, "1000 songs in your pocket" made it clear the iPod was a portable music player.

Today, the iPod has grown in function and familiarity. So confident is Apple, they answer "What is iPod touch?" with "A great iPod. A great pocket computer. A great portable game player." When you can recursively describe your product and people get it, you've transcended product descriptors and become a category unto yourself.

The iPod answers "What am I?" with the most basic statement of identity, "I am me".

I guess if you're iPod, that's all you need to know.

Anthony Shore, Operative Words

Take the innovation descriptor challenge!

Innovations are easier done than said. See if you can come up with better product descriptors than these:

  • Segway personal transporter
  • Blackberry wireless email solution
  • The Internet global network
  • Onstar in-vehicle safety and security system
  • Wii console

Post your best ideas in the comments section.

Lessons from the iPhone Trademark Spat

I don't recall what I was doing in January of 2007, but I apparently missed the news that Cisco had sued Apple over Apple's then-newly announced iPhone product.  I actually stumbled upon this accidentally when I recently searched for federal trademark registrations for IPHONE and found only one, and it belongs to Cisco.  (PDF here.)  Your eyes are not deceiving you:  since 1999, IPHONE has been a federally registered trademark for use in connection with "computer hardware and software for providing integrated telephone communication with computerized global information networks," and Cisco is the current owner of this registration.  No joke.  Look here

This raises dozens of questions in my mind, of which I will present only a few. 

Q1.  Did Apple conduct a trademark search prior to rolling out the iPhone?

Q2.  If so, what was the legal and business thought at Apple about Cisco's IPHONE trademark registration?

Q3.  What should a company like Cisco do when a junior user adops an identical trademark for use on identical goods, and the junior user's product is wildly successful?

My suggested answers are after the jump.

A1.  I would think that Apple conducted a trademark search.  Comprehensive commercial trademark searches are not very expensive, and a legal opinion on the search results are also not terribly expensive.

A2.  Apple probably thought that it could buy the IPHONE mark and registration from Cisco, or at least license it from them.  (According to Wikipedia, Apple and Cisco had been negotiating a license prior to Apple's announcement of the iPhone.)  Consider that Apple also likely vetted other product names, some of which might have had larger issues in other countries--there can be many moving parts in a global trademark clearance process.  Consider further that Apple owns federal trademark registrations for IMAC and ICHAT for use in connection with computer hardware and software, and these marks and registrations have priority over Cisco's IPHONE registration.  (Whether this is good leverage could be the subject of another post entirely.)

A3.  In my view, Cisco had as near a slam-dunk lawsuit to enjoin Apple's use of its mark as I have ever seen.  Even so, suing out even an apparently excellent claim is not cheap, and adjudicated decisions are never guaranteed.  As the terms of the eventual settlement were confidential, I hope for Cisco's sake that Apple paid (or is paying) a premium for use of the mark.  Also, Cisco has apparently consented to the registration of at least some of Apple's pending IPHONE trademark applications.  This should be worth an additional premium in a negotiation of this sort.  In short, when in Cisco's position, and the junior party hands you lemons, it probably makes the most business sense to make lemonade.