In the past we have talked about Apple's Lawyers attempts to bully Blogs over the use of the name iPhone (see episode 40
), when Apple had no legal right to do so. Apple often times in their letters to blogs referenced their trademark application serial number - 77007808
. As mentioned previously on the show a trademark application serial number has no legal merit - as it is simply a number assigned when an application was received. Think of it like the ticket you pull at the deli counter. It is just your place in line. Back in Feb 2007 Apple had this application rejected. Of course Apple appealed and during the appeal process switched up lawyers (guess they did not like the results with the first lawyer - but that is just a guess and not based on anything so lawyer 1 please don't sue for defamation). The second lawyer faired no better as on Dec 16 2008, the USPTO sent Apple Final Refusal notification on the application for the Trademark on - iPhone. Apple had six months to appeal and on June 16th 2009 - the last day of the six months - Apple did appeal.
It is interesting that they waited until the very last day to appeal. As the letter from Cisco (the only one that actually has a Trademark on the name - iPhone) consenting that they were ok with Apple getting a trademark on the term - iPhone - was actually received by Apple back on Nov 25th 2008. This makes one think that Apple is not all that confident that they will be granted anything on Appeal.
So where does this leave the application at this point. There is now an "Ex Parte Appeal Pending". According to the person I contacted at the USPTO -"The ex parte appeal was simply instituted to preserve the rights of the filing party. But first the examining attorney must act on the request for reconsideration after final action. I.e. the appeal becomes moot if the examining attorney is convinced by the arguments presented in the request for reconsideration. The examining attorney has 21 days from when the filing enters the docket (usually 2-3 days after the actual filing) to act upon the case. If not convinced, then the appeal would move forward, and that process could take several months."
I additionally asked the USPTO - "if a Trademark is granted for this application - would it apply only to those items referenced in the Application:
"Hand-held unit for playing electronic games"
"Computer gaming machines, videophones, prerecorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, database synchronization software, computer programs for accessing, browsing and searching online databases, computer software and firmware, namely, operating system programs, data synchronization programs, and application development computer software programs for personal and handheld computers; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld services from a data store on or associated with personal computer or a server; software for the synchronization of data between a remote station or device and a fixed or remote station or device"
In other words - since there would then be two Trademarks - one owned by Apple and one Owned (currently) by Cisco - would this not mean the specific application of the trademarks would need to be much more focused to only cover those items called out in the trademark Application."
The response from the USPTO was:Yes, the application would only cover what is listed in the application.
So my point in all this is it does look that even if Apple is finally granted a Trademark - which is very doubtful at best considering they have been rejected twice already including a "Final Refusal", and given the delay on their lawyers side to appeal, they appear to think it is doubtful. But even if they are granted a trademark it would not cover the legitimate news sites / blogs / podcasts from using the name iPhone in their title and or site. So no need for you to have to change bookmarks for your favorite iPhone Blogs and podcasts. More to come on this in the near future.
-- posted at: 10:25pm EST