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MacRumors
Oct 18, 2007, 02:34 PM
http://www.macrumors.com/images/macrumorsthreadlogo.gif (http://www.macrumors.com)

MacNN reports (http://www.macnn.com/blogs/?p=449) that Apple has filed two patent trademark applications for "iPhone design trademark protection".
In both applications, Apple has filed for iPhone design trademark protection under International Class 009 which is detailed below. Apple’s design trademark applications were accompanied by an unprecedented number of evidence specimens, numbering more than 170.
The trademark applications were reportedly accompanied by a number of photographs and newspaper clippings depicting the iPhone.

Article Link (http://www.macrumors.com/iphone/2007/10/18/apple-applies-for-trademark-of-iphone-design/)



dr_lha
Oct 18, 2007, 02:50 PM
An attempt to try to stop stuff like this maybe?

http://www.engadget.com/2007/08/29/nokias-iphone-no-seriously/

chr1s60
Oct 18, 2007, 02:52 PM
An attempt to try to stop stuff like this maybe?

http://www.engadget.com/2007/08/29/nokias-iphone-no-seriously/

Exactly. If that isn't a copy of iPhone, I don't know what is.

gkarris
Oct 18, 2007, 03:15 PM
Exactly. If that isn't a copy of iPhone, I don't know what is.

At least it won't be "locked" or a "carrier exclusive"...

And if it's highly customizable - guess what icons we're going to use... ;)

(runs and hides...)

boss1
Oct 18, 2007, 03:16 PM
An attempt to try to stop stuff like this maybe?

http://www.engadget.com/2007/08/29/nokias-iphone-no-seriously/

Wow, just wow. Are you fraking serious?


This reminds me very much of that movie "Coming to America" with Eddie Murphy. Where the restaurant owner that employed Eddie said "We're McDowels... McDonalds has the Golden Arches....we have have the Golden Archs"

dr_lha
Oct 18, 2007, 03:22 PM
At least it won't be "locked" or a "carrier exclusive"...
I know you're being funny here, but in neneral Nokia phones sold by US cell phone carriers are locked, and often are only available from one carrier.

NewSc2
Oct 18, 2007, 03:29 PM
Wow, just wow. Are you fraking serious?


This reminds me very much of that movie "Coming to America" with Eddie Murphy. Where the restaurant owner that employed Eddie said "We're McDowels... McDonalds has the Golden Arches....we have have the Golden Archs"

That Nokia phone is a fake. It was a model just used to demo their new UI, which is pretty close to the iPhone's UI.

NewSc2
Oct 18, 2007, 03:31 PM
I know you're being funny here, but in neneral Nokia phones sold by US cell phone carriers are locked, and often are only available from one carrier.

Yeah, but most Nokia phones can be taken out of the country and unlocked by Nokia or your carrier. I don't quite see the hubbub about the iPhone being unlocked in the U.S., as the only other option is T-Mobile, and T-Mobile doesn't have an iPhone data plan, but I can see why people would like to keep their phones if they move out of the country.

Methodman1977
Oct 18, 2007, 03:35 PM
Why didn't Apple do this earlier? They had to assume that other phone manufacturers would copy their design.:confused:

iLeoMarc
Oct 18, 2007, 05:18 PM
Why didn't Apple do this earlier? They had to assume that other phone manufacturers would copy their design.:confused:

Ehh, isn't this an application for a trademark? Not a patent? I think it is more so that they can lay claim to the iPhone photo as distinctly theirs? I think it's more of a safety net for apple, so that not everyone can place a picture of the iphone in products and services provided by other vendors.

Apple already has patent the design of the iPhone.

zephead
Oct 18, 2007, 06:32 PM
Well it won't stop the Chinese copying industry, but it'll stop Nokia. And would this also protect against something as blatant as this (http://www.engadget.com/2007/10/12/microsoft-patent-app-shows-off-new-user-interface-for-mobiles/)?

gkarris
Oct 18, 2007, 06:44 PM
I know you're being funny here, but in neneral Nokia phones sold by US cell phone carriers are locked, and often are only available from one carrier.

You can buy unlocked Nokia phones from nokia.letstalk.com or from one of their stores... there's one here in Chicago...

http://www.nokiausa.com/A4411004

elppa
Oct 18, 2007, 06:45 PM
That Nokia phone is a fake. It was a model just used to demo their new UI, which is pretty close to the iPhone's UI.

It was a prototype, not a fake.

You can see the whole thing here (http://uk.youtube.com/watch?v=OvBqtx43x90).

Personally, I think "Good for Apple". Other handset manufacturers should produce different form factors, not just lazily rip off the big screen, home button and organic oblong shape.

minik
Oct 18, 2007, 07:30 PM
That Nokia phone looks so much better and packed with features.... I believe. :rolleyes:

Rodimus Prime
Oct 18, 2007, 08:49 PM
it going to be fairly limited in what it can do though because a lot of the so called copy phones have been long enough to be able to claim they where not coping and not to really be effected by it.

pedroistheman
Oct 18, 2007, 09:18 PM
nevermind, just found it. no need to panic, just a little excited

samh004
Oct 18, 2007, 09:58 PM
As mentioned above, I can see why they're doing this, but the majority of the fakes / look-a-likes come from China, or that is to say, are made and used in China. No amount of patents and trademarks will ever stop them being made there, they really don't care who owns what.

I know this has nothing to do with this thread, but I just got my iphone and I'm syncing my AOL mail with it. how do I select AOL when the only mail option in iTunes recognized is Outlook express????????????

On windows. You can only use Outlook I believe. So your options are not to sync your data, or start using Outlook as your e-mail client.

notsofatjames
Oct 19, 2007, 04:21 AM
i love at the end of the video the woman says "its what nokia always has done."

dr_lha
Oct 19, 2007, 07:49 AM
i love at the end of the video the woman says "its what nokia always has done."
Especially when just before the iPhone came out, Nokia were announcing that they weren't interested in Touch Screen phones.

ViveLeLivre
Oct 19, 2007, 08:12 AM
Apple has nothing to fear from Nokia, or MS for that matter. The beauty of the iPhone is the home button - most of what you want is a simple click and point away. You're never scrolling through menus for anything but specific contacts, songs, calendar entries and the like. The Nokia and MS interfaces shown in this thread can't touch that.

I can't believe Apple waited this long to TM the hardware, however.

elppa
Oct 19, 2007, 12:50 PM
Apple has nothing to fear from Nokia, or MS for that matter. The beauty of the iPhone is the home button - most of what you want is a simple click and point away. You're never scrolling through menus for anything but specific contacts, songs, calendar entries and the like. The Nokia and MS interfaces shown in this thread can't touch that.

I can't believe Apple waited this long to TM the hardware, however.

I don't think it's a case of waiting this long, more a case of taking this long to put together as good a case as possible and collect all necessary evidence.

These things have to stand up in a court of law.

Apple doesn't want to see other companies think they have a right to steal its IP just because iPhone is popular.

MrT8064
Oct 19, 2007, 04:37 PM
I think apple should sue till theres no tommorow any chinese company that copys the iPhone interface or design

aapl-ip
Oct 22, 2007, 05:27 PM
Why didn't Apple do this earlier? They had to assume that other phone manufacturers would copy their design.:confused:

unlike other IP regimes (e.g. patent) registration / filing date is not as important for trademark protection

date is relevant for enforcement, but not for priority of use, which Apple clearly could establish regardless of its date of registration (i.e. nobody else could get away with registering the same trademark, either before or after Apple's registration)

(this doesn't completely answer your question however...)

USPTO links: http://tess2.uspto.gov/bin/showfield?f=doc&state=r53c25.2.1
http://tess2.uspto.gov/bin/showfield?f=doc&state=r53c25.3.1

matticus008
Oct 22, 2007, 10:38 PM
unlike other IP regimes (e.g. patent)
Actually, none of that matters. A trademark doesn't protect a product design from being copied. It protects advertising. People won't be able to use iPhones in ads and won't be able to make it look like people are using iPhones.

They didn't do it right away because it's not terribly important. This will just stop other companies from trading on the iPhone design for their own marketing advantage. It has almost nothing to do with stopping knockoffs from being made.

aapl-ip
Oct 23, 2007, 12:41 PM
What doesn't matter? I don't understand.

A trademark doesn't protect a product design from being copied.

It certainly could if enforced (whether enforcement would occur where knock-offs would likely be manufactured is another issue...) If you look at USPTO application #77303256 you'll see that it is for the design of the iPhone: "The mark consists of the configuration of a handheld mobile digital electronic device"

Regarding enforcement, trademark protection accrues with actual use, however a trademark registrant can sue in federal court (and possibly recover damages for willful infringement)

This trademark registration might be useful to Apple both to deter others from producing similarly configured devices as well as to prevent unauthorized accessory manufacturers using realistic representations of the iPhone in their marketing and sales efforts (as matticus008's indicates in the post above)

Why didn't Apple register earlier?

It may be a combination of Apple wanting to submit a strong application, which must include (within 6 months of filing) "specimens" of use (and apparently 170 were submitted) and the fact that time was not of the essence.

Moreover, that collection of iPhone "specimens" is strong evidence of secondary meaning, i.e. that the public associates the trademark (in this case the design of the device) as specifically being an Apple iPhone. This association of trademark to source is essential for design trademark protection.

matticus008
Oct 23, 2007, 07:11 PM
What doesn't matter? I don't understand.
The trademark doesn't stop or address companies producing knockoff products. The discussion in that context thus does not make sense. Any statements about the trademark process in response to a question about copycat products are not on point.

With regard to stopping cheap knockoffs, protection must be sought through copyright or patent (or trade secret, though not for the iPhone; a design for a shipping product can't be a trade secret).
It certainly could if enforced (whether enforcement would occur where knock-offs would likely be manufactured is another issue...) If you look at USPTO application #77303256
I'm going to stop you right there. The trademark of a design does not protect against reproduction or against duplication. It protects the trade dress in advertising. It protects styles and brands and logos, not engineering. The companies producing similar products are free to do so, even with the trademark in place, because trademark doesn't prohibit the manufacture, only the advertising. Stopping them from manufacture requires an infringement of copyright or patent.
It may be a combination of Apple wanting to submit a strong application
Yes. From here out is essentially correct.

aapl-ip
Oct 30, 2007, 10:03 AM
The trademark doesn't stop or address companies producing knockoff products...The trademark of a design does not protect against reproduction or against duplication.

I don't agree and think you are overlooking the context in which trademark protection comes into play.

Yes, unlike patent or copyright protection which explicitly prohibits the manufacture and distribution of protected inventions or expression, trademark law does not prohibit the physical act of manufacturing an item subject to trademark protection but instead intends to prevent consumer confusion as to the source of goods, whether as the result of advertising or some other commercial activity. While there has been some tension regarding monopoly and the interplay of patent and trademark protection for product designs, it is settled law that non-functional design that has acquired secondary meaning can be afforded trademark protection. (See Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 81 (3d Cir. 1982)("Sears and Compco do not preclude a court from affording protection from infringement of a design element that has achieved secondary meaning and is nonfunctional, notwithstanding the absence of a patent.")

Any knock-off produced would not exist in a vacuum, never to be seen by and possibly confuse the consuming public. Knockoffs are made to be sold, and as soon as the consuming public sees any knock-off iPhone, giving it the opportunity to be confused, and perhaps even earlier, Apple has a cause of action for trademark infringement.

Consequently, trademark protection can be an effective tool to prevent knock-offs. What electronics manufacturer would produce something that could never leave its warehouse? (Of course, as I mentioned before, whether the trademark would actually be enforced where these products might exist is another issue...)

Even though "reproduction/duplication" itself is not explicitly prohibited by the Lanham Act (see below), use of such reproductions in commerce in a manner likely to confuse is, and trademark law can have the effect of preventing companies from producing knock-offs. Therefore "statements about the trademark process in response to a question about copycat products are" precisely "on point."

My position stands that these trademarks, if allowed registration, can be effective both to deter companies from producing knockoffs and to prevent companies from using the mark in unauthorized advertising/marketing.



For reference:

USC title 15 §1114

Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive...shall be liable in a civil action by the registrant for the remedies hereinafter provided.

matticus008
Oct 30, 2007, 06:31 PM
I don't agree and think you are overlooking the context in which trademark protection comes into play.
On the contrary, you are simply overstating the scope of protection. An object is not a trademark. Ever. I might have a tree that looks exactly like the tree in the Bruckheimer Films logo. I am infringing on no one's trademark unless I use the tree to advertise my product, representing it to be a Bruckheimer Films production OR I attempt to register a mark based on that tree in the same industry and the same marketable region as the original mark. This is true even if I'm a film producer. Neither of these conditions are satisfied by the simple sale of knockoff products generally.

Therefore, this trademark does not protect against knockoffs until they attempt to base advertising off it or attempt to misrepresent their products as Apple products. The former is exceptionally rare and the latter is actionable and easily won without this trademark. Given that, the trademark of the iPhone's design does not have any tangible impact on knockoffs.
While there has been some tension regarding monopoly and the interplay of patent and trademark protection for product designs, it is settled law that non-functional design that has acquired secondary meaning can be afforded trademark protection.
Yes. That's the basis for granting trade dress as a mark. It does not provide a basis for granting the injunction for the simply manufacture of a product unless you are selling a product bearing (not being) the registered mark that is not authorized to carry said mark.
Knockoffs are made to be sold, and as soon as the consuming public sees any knock-off iPhone, giving it the opportunity to be confused
The mark is a likeness, not a product. A product cannot itself be a trademark.
Even though "reproduction/duplication" itself is not explicitly prohibited by the Lanham Act (see below), use of such reproductions in commerce in a manner likely to confuse is,
No. You're jumping the gun again. The mark is not a product. The mark is protected, but not the product itself. One cannot confuse a mark for a product. I can make a rectangular touchscreen phone that is black on the front and silver on the back all I want as long as I don't represent that it is an iPhone (that means not using "iPhone" which is a registered mark, not using the Apple logo, and not using the likeness of the iPhone on the product packaging or advertising. (N.B. a photograph is not a mark, so images of a product cannot infringe in a photograph unless it is a literal photograph of the mark--not something that simply looks remarkably similar.)

Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark
Read very carefully here. Reproduction of the mark, not of the product embodied in the mark.

aapl-ip
Oct 30, 2007, 07:52 PM
you are simply overstating the scope of protection.

Nowhere have I claimed that an injunction for "the simply manufacture of a product" [sic] is necessarily warranted, although I can imagine scenarios where it might be.

I don't dispute that the device itself is not a trademark but rather it is the subject of trademark protection, the trademark being the design and configuration of the device as described in the application.

A knockoff that looks similar enough to the iPhone so as to be likely to cause confusion infringes the iPhone trademark if that knockoff enters commerce.

The design/configuration of the knockoff (its appearance if you will)(which by definition its manufacturer must hope looks very much like the iPhone) is the reproduction, counterfeit, copy, or colorable imitation of the registered mark (again, the registered mark being the configuration/design (the appearance) of the iPhone).

matticus008
Oct 30, 2007, 08:14 PM
A knockoff that looks similar enough to the iPhone so as to be likely to cause confusion infringes the iPhone trademark if that knockoff enters commerce.
No. The stream of commerce standard applies to marks, not to products. The knockoff product must use an infringing mark, not use a product with a likeness similar to the likeness of a mark.

Limited to the context of trademarks, I can make and sell a burger that is for all intents and purposes identical to a Whopper or a Big Mac, as long as I steer clear of using either of those marks (their names, their stylized logos) in my own mark. If either company has a trademark on the dress ("design")--i.e. the appearance of the burger, I simply cannot recreate that mark on packaging or promotional materials.

I can photograph my burger and place the image on the packaging and I can sell my burger without infringing on any trademark. You cannot stop me from making burgers that look like the one in your mark, because my product is not covered by your mark.
The design/configuration of the knockoff [...] is the reproduction, counterfeit, copy, or colorable imitation of the registered mark
You're still not getting this. A product can never be a mark. Ever. Ever. Ever.

aapl-ip
Oct 30, 2007, 08:36 PM
you're nothing if not persistent, though I wouldn't want you as my trademark attorney!

simply put, the trademark is the appearance of the iPhone. a knockoff by definition will appear like the iPhone, thus bearing and infringing the trademark if the knockoff and its inseparable appearance enter commerce.

I'm afraid I've done my very best to explain this and don't wish to spend any more time on the issue. Best of luck to you.

matticus008
Oct 30, 2007, 08:56 PM
you're nothing if not persistent, though I wouldn't want you as my trademark attorney!
Just the opposite in fact--knowing the limitations of a mode of protection means crafting a better set of defenses, be it a liability shield or a comprehensive set of property rights.
simply put, the trademark is the appearance of the iPhone.
No. In your effort to oversimplify, you have lost the defining characteristics. A trademark, any trademark, is a distinctive image which protects and distinguishes the origin of products. A trademark on design only protects as far as it confuses as to the origin of the goods. If no false representation is made about who made the product (or as a derivative, endorses your product or is compatible with it), you cannot establish a prima facie case of trademark infringement--objects cannot infringe on marks, which are inherently intangible. This basic truth is something you have failed to encapsulate in your argument.
a knockoff by definition will appear like the iPhone, thus infringing the trademark if the knockoff and its inseparable appearance
No. A mark is not a product. A product can never be a mark. You have not addressed this basic failure upon which the rest of your comments are based. An object cannot infringe on a mark. Trademark infringement is predicated on advertising, packaging, or marketing. That's it.

Trademarks do not protect against manufacturing, engineering, or sales. For that you need copyrights, patents, trade secrets, or contracts. It's oil and water. Only other marks can infringe on trademarks. Products themselves simply cannot. You cannot mix the two.

aapl-ip
Oct 30, 2007, 09:03 PM
Just the opposite in fact--knowing the limitations of a mode of protection means crafting a better set of defenses, be it a liability shield or a comprehensive set of property rights.

No. In your effort to oversimplify, you have lost the defining characteristics. A trademark, any trademark, is a distinctive image which protects and distinguishes the origin of products. A trademark on design only protects as far as it confuses as to the origin of the goods. If no false representation is made about who made the product (or as a derivative, endorses your product or is compatible with it), you cannot establish a prima facie case of trademark infringement--objects cannot infringe on marks, which are inherently intangible. This basic truth is something you have failed to encapsulate in your argument.

No. A mark is not a product. A product can never be a mark. You have not addressed this basic failure upon which the rest of your comments are based. An object cannot infringe on a mark. Trademark infringement is predicated on advertising, packaging, or marketing. That's it.

Trademarks do not protect against manufacturing, engineering, or sales. For that you need copyrights, patents, trade secrets, or contracts. It's oil and water. Only other marks can infringe on trademarks. Products themselves simply cannot. You cannot mix the two.

Best of luck to you!

matticus008
Oct 31, 2007, 12:57 PM
Best of luck to you!
Luck has nothing to do with it, unless one were to go to court and plead your theory, in which case he would need a healthy dose of luck to avoid the subsequent malpractice suit when the claim was flatly rejected.

aapl-ip
Oct 31, 2007, 03:48 PM
If you honestly believe your position and this issue is at all germane to your practice, you owe it to yourself to review relevant caselaw.

matticus008
Oct 31, 2007, 06:44 PM
If you honestly believe your position and this issue is at all germane to your practice, you owe it to yourself to review relevant caselaw.
Find a contrary authority and we'll talk. In the mean time, your glaring analytical deficiencies are still unanswered.

A product is not a mark and therefore cannot itself infringe on a mark. Say it over and over until it sinks in.

aapl-ip
Oct 31, 2007, 07:50 PM
how about just "find an authority", after all, "contrary authority" implies that you have already presented authority on the subject and you have not.

truthfully, your obstinance made me wonder, but I've thought about the issue critically and reviewed the relevant caselaw. I'm satisfied with my position and don't need to discuss it further.

if you'd like to test your own views and learn about product design trademarks, you might start here, with the search "product design and trademark"
http://www.law.cornell.edu/usca/search/index.html

matticus008
Oct 31, 2007, 08:18 PM
how about just "find an authority", after all, "contrary authority" implies that you have already presented authority on the subject and you have not.
The burden of proof does not lie with the status quo. As your interpretation falls outside the definition of trademark litigation, you must establish your authority.
I'm satisfied with my position and don't need to discuss it further.
Yet you keep coming back without elucidating your "position" or reconciling it with the fundamental logical error underlying your position. You have not provided an authority because there is none. You have not established infringement because there is none.
if you'd like to test your own views and learn about product design trademarks, you might start here,
The issue is not, and has never been, the granting of a mark for trade dress. The issue, which once again you have utterly failed to address, is that a product itself cannot infringe on a mark. Only marks can infringe on other marks. Every citation you have provided merely establishes the trademark, not the infringement. It also clearly establishes your amateur status in the field--why not use professional publications of law? Give me your Witkins or West.

Once again, cite an authority. The only obstinance at hand is your concluding substantive argument but continuing to post. You will be pressed to reconcile your basic, step one error each time you post, I can assure you. It will be a persistent question until you address it or cease your empty responses.

A product cannot itself infringe on a mark. Since you cannot establish a prima facie case of trademark infringement, none of the rest of your analysis applies.

JNB
Oct 31, 2007, 08:48 PM
<snip><snip><snip><snip>ad...

<snip><snip><snip><snip>...infinitum

You two settle down back there or I'm turning this forum around right now! :p


Seriously, good debate, guys.

aapl-ip
Oct 31, 2007, 09:08 PM
The Cornell database is a useful and respectable resource. The only thing that belies my status is that I'm continuing with this nonsense!

As your interpretation falls outside the definition of trademark litigation, you must establish your authority

It is your opinion that my interpretation falls outside the "definition of trademark litigation." Just as I haven't proven it doesn't, you haven't proved it does.

Nevertheless, I proceed:

My position is this:

A product design trademark can be enforced when a competitor's product enters commerce to stop its sale if it is found that the competitor's product is likely to cause source confusion.

Without attacking it for a moment, let me know if you understand that this is my position and I'll continue (tomorrow)

matticus008
Oct 31, 2007, 09:38 PM
The Cornell database is a useful and respectable resource. The only thing that belies my status is that I'm continuing with this nonsense!
It is an incomplete volume not related to the practice of law, not reflecting the aggregate tests embodied in legal precedent, and is commonly used by lay people because they do not have access to full opinions with commentary, elaboration, and subsequent history available to practicing professionals.
It is your opinion that my interpretation falls outside the "definition of trademark litigation." Just as I haven't proven it doesn't, you haven't proved it does.
No. It is intrinsic in the definition of trademark infringement. A trademark, from Black's 8th Ed.:
"The main purpose of a trademark is to designate the source of goods or services. In effect, the trademark is the commercial substitute for one's signature. To receive federal protection, a trademark must be (1) distinctive rather than merely descriptive or generic; (2) affixed to a product that is actually sold in the marketplace; and (3) registered with the U.S. Patent and Trademark Office." (emphasis added)
A product cannot itself be the mark.
A product design trademark can be enforced when a competitor's product enters commerce to stop its sale if it is found that the competitor's product is likely to cause source confusion.
No. A trademark will be enforced where a competitor's product carries a mark that confuses as to source, affiliation, endorsement, or compatibility.
Without attacking it for a moment, let me know if you understand that this is my position and I'll continue (tomorrow)
This position is (a) an inaccurate statement of law and (b) not germane to the instant case. It may well be your position, but it is not parallel to these issues and it is not on point as a response to any of my comments.

The only time trade dress can be asserted as a mark confusing the origin is in the absence of any other representation or trademark. Crescent Tool v. Kilborn & Bishop, 247 F. 299 (2d Cir. 1917). See also Ashley Furniture v. Sangiocomo.

Trade dress is protectable. Knockoffs are actionable. The manufacture and sale of these items relies on other property rights, however. Where it is clear that a knockoff is made by a different company, with a different brand, model number, packaging, and origin, there is no confusion as to origin. Thus a design trademark is inadequate as a measure of protection.

Because trade dress is protected under course of trade in the law without the trademark, the iPhone is protected by a series of patents and copyrights which debar reproduction, duplication, manufacture, and sale already, a trademark on the trade dress does not afford any additional protection than already possessed on these fronts. The design trademark protects against use in advertising and marketing (particularly important in terms of representations about accessories more than knockoffs).

Further, a product clearly bearing the easily identifiable mark of a manufacturer other than Apple, which does not contain any reference to an "iPhone" or "Apple" or ":apple:", and which has in its stead a clear model identifier, does not and cannot confuse as to origin and thus does not infringe. The product may be manufactured and sold. The only applicable restrictions would be in advertising capacities. The Lanham Act only protects design trademarks where the failure to do so would confuse as to origin (i.e. where it is the ONLY identifier). "It does not prohibit copying per se. Rather, the statute only prohibits a copy that can be passed off as the product of the originator." 247 F. 299, 301.

A product cannot be a mark. Only a mark can infringe on another mark, if alleging [i]trademark infringement. Please cite your authority for a contrary analysis.

aapl-ip
Oct 31, 2007, 10:18 PM
The Cornell database is publicly accessible. This thread has over 2500 views and someone might be interested reading more than either you or I quote here.

"This position is (a) an inaccurate statement of law"

-- This is what we are debating, I asked you to refrain for just a moment.


"and (b) not germane to the instant case. It may well be your position, but it is not parallel to these issues and it is not on point as a response to any of my comments."

-- It is and if you had given me a moment as I requested I would have addressed your concern that "a product cannot infringe a mark"

"trade dress does not afford any additional protection than already possessed on these fronts[/b]"

-- You mentioned this once before but this has never been at issue. My position has always been that trademark could itself be an effective tool. It is important to have multiple arrows in your cause of action quiver.

"Further, a product clearly bearing the easily identifiable mark of a manufacturer other than Apple, which does not contain any reference to an "iPhone" or "Apple" or ":apple:", and which has in its stead a clear model identifier, does not and cannot confuse as to origin and thus does not infringe"

-- The determination of whether something causes confusion is a factual one, not a legal conclusion as you have stated.

A product cannot be a mark. Only a mark can infringe on another mark, if alleging trademark infringement. Please cite your authority for a contrary analysis.[/QUOTE]

-- I might have actually gotten to this tonight had you been able to honor my request. Instead it will have to wait as I have other obligations.

matticus008
Oct 31, 2007, 11:09 PM
It is and if you had given me a moment as I requested I would have addressed your concern that "a product cannot infringe a mark"
You've had over a week to address it. I fail to see the point of your responding if you are not prepared to do so.
My position has always been that trademark could itself be an effective tool.
SCOTUS disagrees--trade dress is applicable only in the absence of any other marks. It is the weakest of possible tools, and even in the best of cases is the equivalent of using a pipe as a hammer when you've got a hammer sitting right next to you.
It is important to have multiple arrows in your cause of action quiver.
If you have no fewer than nine different ways of winning an unauthorized reproduction case, each with a high probability of success, you've satisfied that criterion. Adding a tenuous and unsupportable argument with an imprecise application and a subversion of policy goals does nothing to help the cause.
The determination of whether something causes confusion is a factual one, not a legal conclusion as you have stated.
Again, a misstatement. The prima facie infringement is a question of law, subject to a handful of tests, including the standard voiced in Ashley Furniture, inter alia, that trade dress infringes only where no other marks are affixed. This is not part of the debate; it is settled law. It further is subject to determination by the likelihood-of-confusion test, another matter of settled law. The final determination of infringement is a question of fact, but that question is not engaged prior to legal determination of prima facie infringement. 87 CJS Trademarks §87.

The trade dress does not exist outside other marks. Products themselves cannot infringe on marks; only marks may infringe on other marks. "Where one mark could not reasonably be mistaken for the other, and deception is improbable or impossible, there is no infringement, even though the two trade-marks suggest similar qualities in the product." Id. (emphasis added). Even though the knockoff looks extremely similar to the trade dress of the iPhone, if it clearly carries marks of a contrary origin or a consumer would have no reason to mistake the product as being of Apple origin (the slight differences in design, lack of OS X, much lower price, lack of Apple logo or iPhone name pretty conclusively establish that), that similarity cannot be sufficient to find prima facie infringement.

You make good arguments, but do not base them in appropriate legal foundations, so the arguments simply are not engaged, because they are predicated on assumptions not granted.

Even abstracting away from the merits themselves, the purpose of trademarks is to avoid confusion as to the source, not to prevent competing products from being sold. A product with the exact same specifications carrying a different mark, under trademark law, can be sold. The exact same product can be sold as long as the differing source is reasonably clear. Design marks are meant to protect consumers where there otherwise would be no way to determine the origin. No court has ever articulated a different posture.

aapl-ip
Nov 1, 2007, 06:23 PM
3 preliminary points:

1. The hierarchy of trade dress / product design protection below more traditional mark protection is irrelevant here, product design is the only form of mark I'm suggesting is appropriate for assertion to protect against knockoffs. It is irrelevant that the iPhone also bears traditional registered trademarks such as the little apple symbol or the name iPhone. Also, I haven't looked up that cite but my feeling is that it was dicta. Maybe not. Regardless, I don't think it is relevant to my position which is what I would rather focus on.

2. It would be irresponsible IP counseling to not pursue both a design patent and product design trademark, even if the latter protection is as tenuous as you think. The cost is minimal compared to the fallout if the design patent is challenged and fails? Furthermore, the product in question may or may not be appropriate subject matter for copyright protection, i.e. it might be a utilitarian object, not expression that can stand on its own.

3. Re "Further, a product clearly bearing the easily identifiable mark of a manufacturer other than Apple, which does not contain any reference to an "iPhone" or "Apple" or "", and which has in its stead a clear model identifier, does not and cannot confuse as to origin and thus does not infringe"

An iPhone knockoff is likely to have both the overall appearance of the iPhone (product design tmk) as well as the traditional Apple trademarks and not other model identifiers. Even if it didn't but simply has the overall appearance of the iPhone it seems likely to me that it could cause confusion. In one hand you have a genuine iPhone, touch screen side up (ie no other tmks or identifiers. In the other hand you have a good knockoff which looks just like the iPhone. Might the knockoff manufacturer be trying to deceive? Maybe there is even a slight difference. Is this confusing to customers? I think so. "I know they're slightly different but I'm just a soccer mom so I don't know which is which." This is where surveys come into play.

Onto the substantive argument:

I won't be able to continue this discussion or comment further but if you'd like, feel free to read on. I'll try to briefly lay out support for my previously stated position, but really I think you should read the cases if you care about this field. If you get it, great, if not, proceed to rip it apart; I'll still think you're wrong and you'll still think I'm wrong. Maybe we're arguing about different things and a few empty bear bottles would serve as good visual aids. Either way I won't be responding as further discussion is not a productive use of my time.

Please note that the remedies being sought in the cases outlined below is not for D to stop using P's mark in advertising but to stop D from selling a product which P claims infringes against its product design trademark / trade dress.

I.P. Lund Trading v. Kohler (1st Cir.) (http://www.ca1.uscourts.gov/cgi-bin/getopn.pl?OPINION=98-1334.01A))
wherein Lund attempted to assert its product design trademark on a faucet against Kohler and prevent Kohler from selling (not simply advertising) a faucet that was designed after and appeared very much like Lund's. Though unsuccessful, the Court discussed product design trademarks and outlined an analytical framework by which infringement could be found.

"The claim for protection here comes not from

traditional marks such as names but from the very design of the

faucet itself -- that design is said to give the faucet its

identity and distinctiveness. Although Lund may have been able

to obtain a design patent and so protect its VOLA faucet in

that way, at least for a period of fourteen years, see 35

U.S.C. 173, it chose not to. Rather, it chose to turn for

protection to legal doctrines of trademark and trade dress,

originally crafted without product designs in mind. The trade

dress of product designs, unlike other forms of trade dress,

cannot be separated from the product itself."

It's test:

"We emphasize

that, in any case where the trade dress is said to arise from

the product design, there must be separate analyses as to (1)

whether a design is inherently distinctive and (2) whether it

has nonetheless acquired distinctiveness through secondary

meaning. As to secondary meaning said to stem from the design

of the product itself, we hold that the plaintiff must show

that the primary significance of the design is to signify its

source."

The Court proceeds to discuss these analyses in detail.

-------

In Duraco v. Joy Plastics (http://vls.law.vill.edu/locator/3d/Nov1994/94a0885p.txt), the 3rd Cir. discusses the issue as follows:

"We conclude that traditional trade dress doctrine
does not "fit" a product configuration case because unlike
product packaging, a product configuration differs
fundamentally from a product's trademark, insofar as it is
not a symbol according to which one can relate the signifier
(the trademark, or perhaps the packaging) to the signified
(the product). In other words, the very basis for the
trademark taxonomy -- the descriptive relationship between
the mark and the product, along with the degree to which the
mark describes the product -- is unsuited for application to
the product itself.
However, we also think that there is a proper set of
circumstances for treating a product configuration as
inherently distinctive. These circumstances are
characterized by a high probability that a product
configuration serves a virtually exclusively identifying
function for consumers -- where the concerns over "theft" of
an identifying feature or combination or arrangement of
features and the cost to an enterprise of gaining and
proving secondary meaning outweigh concerns over inhibiting
competition, and where consumers are especially likely to
perceive a connection between the product's configuration
and its source. We conclude that, to be inherently
distinctive, a product feature or a combination or
arrangement of features, i.e, a product configuration, for
which Lanham Act protection is sought must be (i) unusual
and memorable; (ii) conceptually separable from the product;
and (iii) likely to serve primarily as a designator of
origin of the product."

----

A less rigorous framework was enumerated in the 2005 3rd Cir. decision of Bretford Manufacturing v. Smith System Manufacturing. (no direct link, first result searching for "Bretford" here: http://www.law.cornell.edu/usca/search/index.html)
In this case one of the issues on appeal is "Whether Smith System is entitled to copy Bretford's design." Here P was not successful either but the court discusses how a product might infringe a product design trademark by causing source confusion.

I'll quote a portion of the opinion I think relevant to our discussion:

The Supreme Court held in Wal-Mart that the phrase
“word, term, name, symbol, or device, or any combination
thereof” includes distinctive aspects of a product’s appear-
ance, commonly known as trade dress. The Court added,
however, that a product’s physical design can not be deemed
inherently distinctive, so that to prevail under §43(a) the
producer must demonstrate “secondary meaning”—in other
words, that consumers understand the design elements to
signify the goods’ origin and not just its attributes. Other-
wise, the Court thought, it would be too easy to use the
expense and risk of litigation to dissuade rivals from using
their right to reverse-engineer and copy products, which
they may do down to the last detail unless a feature of the
product is protected by patent, copyright, or trademark law.
See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc.,
532 U.S. 23, 29 (2001); Bonito Boats, Inc. v. Thunder Craft
Boats, Inc., 489 U.S. 141 (1989); Sears, Roebuck & Co. v.
Stiffel Co., 376 U.S. 225 (1964). Trademark law is designed
to reduce the costs customers incur in learning who makes
the product, and this also helps sellers obtain rewards from
producing goods of consistent quality, for consumers will
find it easier to find and buy goods with which they have
been satisfied in the past. So when trade dress implies the
product’s origin it is protected as a trademark (unless it
also is functional); but when consumers value the feature
for its own sake rather than as a badge of origin, it may be
copied freely.

The Court went on to find that the design of the product in question (a table with v shaped legs) did not signal source and consequently P could not stop D from manufacturing (moreover the legs were functional but the Court didn't need to get to that).

-----

Ashley Furniture v. Sangiacomo, 1999 (4th Cir.)(no direct link, 3rd result searching "product design trademark" here: http://www.law.cornell.edu/usca/search/index.html)

The Court describes the issue as follows:

"Thus, § 43 does not prohibit copying per se. Rather, the statute
only prohibits a copy that can be passed off as the product of the orig-
inator, thereby confusing the consumer and interfering with the origi-
nator's rights in the goodwill of its business. See Bonito Boats, Inc.
v. Thunder Craft Boats, Inc., 489 U.S. 141, 157 (1989) (citing
Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299, 301 (2d Cir.
1917) (Hand, J.))"

The Court continues:

"In its careful opinion, the district court properly recognized that
courts have differed as to how to determine inherent distinctiveness
where, as here, the trade dress at issue is the product's configuration
or design rather than its packaging. This question has bedeviled courts
because determining inherent distinctiveness typically requires ver-
balizing a judgment about the visual character of the product. This is
always difficult, but verbally describing the considerations that should
inform that judgment in a manner that will assist the analysis in cases
where the asserted trade dress is the actual design of the product presents a particularly formidable challenge. Justice Holmes's words in
the trademark context seem especially apt here:"[b]eyond stating the
principles to be applied there is little to be said except to compare the
impression made by the two" product configurations. Joseph Schlitz
Brewing Co. v. Houston Ice & Brewing Co., 250 U.S. 28, 30 (1919)
(Holmes, J.)."

The Court goes on to review various tests being used for product design trademarks and argues that consumer recognition of a product design as a source designator is not a pre-requisite for inherent distinctiveness and that the Abercrombie alone is appropriate.

"As noted above, the trade dress in such cases is not"the product
itself," but rather the nonfunctional aspects of the product that make
up its total image. If this were not so, then a product design could
never be protectable as an inherently distinctive trade dress because
it would always be part of the product. Two Pesos simply does not
permit that result -- rather it clearly contemplates trade dress protec-
tion for inherently distinctive product configurations."

The Court concluded that the District Court erred in entering SJ for D.

This decision thoroughly examines the various tests being employed and discusses the interplay of other IP regimes. It's worth a read.

--------------------

Whether or not the iPhone could satisfy one of these tests would be depend on the circumstances. I can envision a scenario in which I think it could but really its something to be proven at trial.

matticus008
Nov 1, 2007, 07:41 PM
product design is the only form of mark I'm suggesting is appropriate for assertion to protect against knockoffs.
No, brand and product trademarks are clearly the superior and preferred method of doing so--not asserting these trademarks against knockoffs is an instantaneous way of missing your golden opportunity.

If you ignore the Apple logo and iPhone trademarks, and other parties infringe upon them, then you clearly have a case of consumer confusion. Compare with a design trademark, which can only be asserted in the absence of other distinguishing marks. If a product carries a clear, traditional mark, the case is over.
It is irrelevant that the iPhone also bears traditional registered trademarks such as the little apple symbol or the name iPhone.
Exactly the opposite. The fact that it bears these instantaneous identifying marks and knockoffs do not is a clear indication of the utter lack of consumer confusion simply based on a similar product design.

Let's take a simple illustrative example. Eagle holds a design trademark on the traditional yellow pencil with the pink eraser. They also hold a trademark on their corporate logo. My company CAN produce that exact pencil, provided it is clearly stamped with a mark that distinguishes its origin from that of Eagle. The design trademark therefore affords no singular protection. If, however, I try to use such a pencil in a mark of my own, then it does infringe.
2. It would be irresponsible IP counseling to not pursue both a design patent and product design trademark, even if the latter protection is as tenuous as you think.
True, but irrelevant. The issue is not IF you should apply for such a mark, but rather WHEN such a mark affords you protections against the simple copying of the design. The Lanham Act does not bar simple copying. A design trademark does not restrict manufacture. It restricts the use of that design in a competing mark.
An iPhone knockoff is likely to have both the overall appearance of the iPhone (product design tmk) as well as the traditional Apple trademarks and not other model identifiers.
That's not the argument you presented, and even if we revise it to allow such an assertion, it does not help you much. If it infringes on their other trademarks, the case is won simply on those grounds. A court won't even get as far as a design trademark, because logo and product marks are infringed and that's the end of it. Courts stop once they've got enough information to adjudicate.
In one hand you have a genuine iPhone, touch screen side up (ie no other tmks or identifiers.
It is not in that case a genuine iPhone, as it would have all of its trademarked identifiers readily visible upon inspection.

If you're referring to an image of the product, you're back to advertising, which IS the arena in which this trademark would be useful. But you're not talking about manufacture or sale in that instance.
In the other hand you have a good knockoff which looks just like the iPhone. Might the knockoff manufacturer be trying to deceive? Maybe there is even a slight difference. Is this confusing to customers? I think so.
If the mark is not sufficiently distinctive to be identified on its own, the mark cannot be granted on its face, but only through secondary meaning, which in turn throws up an additional hurdle to "copying" because the mark is granted with the concession that it is not distinctive and thus its protection is severely narrowed.

I'll try to briefly lay out support for my previously stated position, but really I think you should read the cases if you care about this field. If you get it, great, if not, proceed to rip it apart; I'll still think you're wrong and you'll still think I'm wrong.
I don't think you're wrong. I think you have a fundamental failure to cover the basics. Your arguments are not predicated on the realities of this situation, nor do they comport with the realities of IP defense structuring. You are simply regurgitating the superstructure of arguments that "sound" correct to you without an appreciation for or understanding of the underlying principles. You are applying fact-specific holdings with no regard for the facts. You have yet to make a legal argument.
Please note that the remedies being sought in the cases outlined below is not for D to stop using P's mark in advertising but to stop D from selling a product which P claims infringes against its product design trademark / trade dress.
Precisely! It follows the Ashley Furniture elucidation--products WHICH DO NOT CARRY OTHER IDENTIFYING MARKS (in that case, furniture sets; below, high-end faucets) can rely on trade dress to find infringement. Also note that "trade dress infringement" and "design trademark infringement" are not the same thing, though you've attempted to lump them together.

Also note that the test you quote is not the Lund test, but rather the Two Pesos test. Were you an actual expert in the field, you'd know this.
"The claim for protection here comes not from
traditional marks such as names but from the very design of the
faucet itself -- that design is said to give the faucet its
identity and distinctiveness.
Yes. You are not adding anything to the discussion with this excerpt. This merely establishes the undisputed nature of design marks and trade dress protection. While it takes up space and makes it look like you've made an actual response, it accomplishes nothing.

It's test:
First, it's "its." Second, this is a restatement of prior precedent, and cannot be credited to Lund.
We conclude that, to be inherently
distinctive, a product feature or a combination or
arrangement of features, i.e, a product configuration, for
which Lanham Act protection is sought must be (i) unusual
and memorable; (ii) conceptually separable from the product;
and (iii) likely to serve primarily as a designator of
origin of the product."
Your argument fails to meet all three standards posed in the case you yourself quote.
(i) The design is not unusual if not precisely copied. The face of most HTC smartphones has followed this basic configuration for years. None of the knockoffs yet produced have replicated exactly the one-button face. The silver and black theme is not unique to Apple or novel (contrast with "iPod White" which can be).
(ii) Conceptual separation from the product would lose all distinctiveness whatsoever--it is only recognizable in the context of its own use.
(iii) The primary designators lie elsewhere in this product. It is primarily identified by "iPhone" in packaging, documentation, and electronic contexts, primarily identified by the Apple logo on the product itself, and only tangentially related to the overall design. The software interface of the display--a separate trademark to the one referenced in this thread--is instead the superior distinguishing mark. The trademark on that home screen design is useful against knockoffs, as are the iPhone and Apple logo trademarks. If you were to take the exact same hardware design and pop a Windows Mobile home screen on it, people would no longer recognize it as an iPhone. If you are considering the home screen trademark to be part of this mark, then I can see where you're coming from, but that is in point of fact a separate mark.
Here P was not successful either but the court discusses how a product might infringe a product design trademark by causing source confusion.
There's your first clue. You are citing losing cases and hoping that analytical frameworks can be your savior--unfortunately, you are divorcing said frameworks from the facts without establishing grounds to do so.
Ashley Furniture v. Sangiacomo, 1999
You're quoting a case I've already given you, and you're just throwing out words. I've already provided the analytical framework for these cases and conclusively demonstrated the functional deficiencies. You're also mangling the transition from "inherent distinctiveness" to "design trademarks"
[COLOR="Gray"]"As noted above, the trade dress in such cases is not"the product
itself," but rather the nonfunctional aspects of the product that make
up its total image.
Exactly. The product is not the mark, which gets us right back to the still unanswered question of how you're getting around that.

A product bearing marks, as all of those in question do, cannot confuse as to origin where those marks contradict the idea that they originate from a third party. If the iPhone lacks an Apple logo and lacks the "iPhone" identifier and if it carries contrary marks, there is no possibility of confusion.

I'm truly unsure as to why you felt the need to latch onto your argument so tightly--there is no question as to legal protection for knockoffs through a number of the 200 patents and no fewer than four other trademarks on the iPhone, nevermind copyright protection and general trade dress course of trade arguments. Some of the pieces you quote from are taken out of context of this separation--trade dress infringement and design trademark infringement are not the same thing as you have implied throughout this post.

Given the clear analytical difficulty, the reticence of courts in enforcing design trademarks in general, jurisdictional differences in the level of protection thereto afforded, and the extremely high level of specificity required in establishing infringement, it's blatantly obvious that this is an inefficient and anemic tool for protecting against knockoffs.

It's admirable that you've been so insistent, but it would have been far easier had you simply realized earlier that your understanding is muddy at best and that Apple's property interests were already completely covered in this regard.

They have other trademarks, patents, copyrights, and general trade dress protection. The loophole closed here is in advertising. There was no chance of a product copying the iPhone design getting away but for this mark. This mark does not stop a single case of knockoff infringement, but it does stop a number of third-party advertising issues, marketing ploys, and accessory manufacturers. It's clear what the purpose was from the beginning.

floxir
Nov 1, 2007, 09:05 PM
They protected their trade mark so ridiculously, they even prevent people from using the "iphone" in the domain names

www.modmyiphone.com
now
www.modmyifone.com


Apple Forces Their Hand on iPhone Trademark. We are changing domains.
http://www.modmyifone.com/forums/showthread.php?t=13455

razorianfly
Dec 17, 2007, 08:30 AM
Pathetic. I imagine then, that their next move is to gain control of everyone who uses or voices the letter 'i'?. Great. :rolleyes:

R-Fly

LiveForever
Dec 19, 2007, 03:45 AM
Its standard practice by most companies to stop 'passing off' and blatant copies. It doesn't do much good though, the chinese don't give a dam about it

Pacer69
Jan 6, 2008, 03:27 AM
Yes, the Chinese seem very quick to come out with copycat everything...including automobiles. I believe Chery, a leading Chinese auto concern, was making very credible clones of existing major-mfr vehicles up until just a few years ago when some of the majors (including Chrysler, at least for a time, don't know if that deal was called off or not) decided they would prefer to partner with them rather than risk having their engineering and designs ripped off.

sellitman
Jan 10, 2008, 10:38 AM
this copying is good for consumers. All boats rise in deep water. Nothing wrong with this. Windoz has made Apple stronger and visa versa. Same with cell phones. I believe Apple will kep pushing the limits and always be a pioneer.

MattG728
Jan 21, 2008, 12:32 AM
What provider is the nokia phone coming out for??? T-Mobile maybe???

I want the iphone but I'm a tmobile customer and I hate the iPhones plans... Theres not enough options... Either too many minutes or not enough and the same goes for texts....