The Grand Marshal in the Parade of Horribles, at least for some trademark types, is the one who forbids any deviation from the absolute "rule" against using brand names and trademarks as nouns or verbs, a standard "rule" commonly found in trademark use guidelines (only permitting the use of trademarks as adjectives). As I have written
—Andrew Miller, Intern, Fast Horse Inc.
In terms of name recognition, PING is to golf what Louisville Slugger is to baseball, so you’re right if you found it odd Apple would name its new music-based social network, of all things, Ping.
–Dan Kelly, Attorney
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.…