Who is responsible for this billboard ad? Is it a Google advertisement? Verizon? Motorola? Droid?

Whatever the answer, it helps make the point visually that trademarks require protection beyond mere confusion as to source; basically, the same point we made a while back (in response to Seth Godin’s trademark position and then during a friendly sparring match with Ron Coleman), as we discussed

–Dan Kelly, Attorney

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

"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:

Continue Reading Describe Different

–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.

Continue Reading Lessons from the iPhone Trademark Spat