iCloud Communications Files Suit Against Apple Over 'iCloud' Name

[ravenvii]

A hypothetical question: What happens if you run a not very great business and an elegant new service starts up with a similar name? It won't "tarnish your reputation" to be associated with a service better than yours, and it might even help your business if customers confuse the two services. Does that weaken your legal arguments?

"Tarnish the reputation of" basically more closely means "changes the reputation of." The purpose of the trademark law is to avoid customer confusion. Say, a brand of detergent always has a blue swish on its box, while another always has a red swish. A customer who is loyal to the former brand, would quickly go through the store and grab the "blue box."

If another company comes in, with a blue box with the same design (a swish, as the above example) and customers mistake that brand for the other, that leads to customer confusion. That Is Bad™ (hehe).

So if customers are likely to confuse iCloud Communications' brand with Apple's iCloud brand, that's your case there. "Tarnish the reputation" is just a more eloquent way of saying it, thanks to whoever was the clerk that wrote that particular judicial opinion.

Now, if we're talking remedies, then your hypothetical example becomes very important in obvious ways.

(Declaration: IANAL, nor do I play one on TV)

 

[shaynes]

Because you claim your trademark has value, hence you have an interest in defending it. That's how trademark law works: you don't defend trademark against the first infringer, you lose the rights to that trademark. Doesn't matter if the first infringer is a little Swedish company or has $50 billion sitting in the bank.

Sorry you don't understand trademark law, but this is just not correct. A small Swedish company does not pose a business risk for a small US based company. A huge multinational corporation does.

 

[inkswamp]

This is going to date me a bit but when I was a teenager there was a band around called Mr. Big whose guitarist Paul Gilbert was one of those endless stream of Eddie Van Halen types. He used to do this schtick on stage where he'd used a drill on his guitar strings to get a Van Halen-esque sound. Coincidentally, Eddie Van Halen himself came up with the same idea and was roundly accused of stealing the idea. I always felt there was some unfair irony in that. Gilbert was riding a wave created by Van Halen himself. To turn around and cry foul over something like that just seemed silly.

So, yeah, for a company to get upset over their trademark being trampled by the company that made that style of trademark (the i prefix) so popular in that first place seems odd. That's not to say they don't have a legitimate claim but still... Would they have ever come up with the idea if Apple hadn't first popularized that naming scheme? Curious.

 

[MacLawyer]

Googling

Wow. I did a Google search for iCloud with a search range of 9/1/08 to 12/1/10, and this company did not even come up!

Have they been hiding in a bunker?

 

[3goldens]

it all comes down to the dough, re me!

How much is in it for me me me!

Apple will get this taken care of likity split, no one bullies mr. jobs with silly thgs like law suits. they roll right over them and tie them up in lawyers fees till the next milenium.

should be fun to watch!

 

[Prallethrin]

Sorry you don't understand trademark law, but this is just not correct. A small Swedish company does not pose a business risk for a small US based company. A huge multinational corporation does.

Threat doesn't matter here.

When it comes to trademarks, it's "defend it or lose it". They are NOT like patents or copyrights, which you can selectively enforce if you wished.

 

[shaynes]

Threat doesn't matter here.

When it comes to trademarks, it's "defend it or lose it". They are NOT like patents or copyrights, which you can selectively enforce if you wished.

From Wikipedia.

"Unregistered trademark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be rationally expected to expand"

"An unregistered mark may still receive common law trademark rights. Those rights, for example, may extend to its area of influence—usually delineated by geography."

The trademark is regional. Being a small US based company, they should not be expected (nor have any legal right) to defend their trademark against a small Swedish company.

 

[rjohnstone]

Threat doesn't matter here.

When it comes to trademarks, it's "defend it or lose it". They are NOT like patents or copyrights, which you can selectively enforce if you wished.

How wrong you are.
Defend or lose it requires knowledge of the infringement.
Many small companies don't have the resources to monitor every corner of the world looking infringement.

Only once the infringement is known is an entity required to "defend it or lose".

 

[Jeremy1026]

Just FYI, if you call iCloud Corporation, and ask them how they will match you music, they get kind of pissed off. You should try it.

 

[Macsterguy]

They have a case...

 

[0815]

From Wikipedia.

"Unregistered trademark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be rationally expected to expand"

"An unregistered mark may still receive common law trademark rights. Those rights, for example, may extend to its area of influence—usually delineated by geography."

The trademark is regional. Being a small US based company, they should not be expected (nor have any legal right) to defend their trademark against a small Swedish company.

But what if the small Swedish company registeres the Trademark in the US (as they did) - than they should speak up since it happens in the home country of the small US company. They should at least have defended it in the US - but apparently they didn't care at the time.

 

[Kreios]

Trademark Law Info

Since there seems to be a lot of misinformation on trademark law, maybe this will help.

http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

 

[Macsterguy]

That little "6-letter" word is going to be worth a LARGE boat load of money before this is over...

 

[iCrizzo]

I have never heard of iCloud Communications, never would have heard of them either if it were not for this story. I bet their website traffic quadrupled x20 today!

 

[jettredmont]

I doubt the 1 year and a half period that Xcerion had a filing with the USPTO is sufficient to have iCloud Communications' claims thrown out.

And what legal basis would you have for that opinion?

Leaving a trademark dispute "open" for even a few months has been cause for trademark claims to be lost. I'm not aware of any specific legal requirement here other than "swiftly", but I'd be very hard pressed to argue that taking 18 months to get around to sending a simple cease-and-desist letter comes anywhere near qualifying as a "swift" defense.

No, you don't have to register a trademark to get protection for it (although it is MUCH harder to defend an unregistered trademark in court, and potential damages are significantly reduced).

It really sucks to be a little company. But, the trademark registration system was set up EXACTLY for this reason, and EXACTLY to benefit the smaller local company (doing interstate commerce). It's essentially business malpractice that they didn't take advantage of the cheap and easy registration service, and a judge would find it hard to overlook the past history of nonchalant ignorance of trademark and reckless business practices to force Apple to undergo an expensive rebranding effort.

 

[KnightWRX]

And what legal basis would you have for that opinion?

On none. It's simply something I doubt. The legal system doesn't operate on a month by month basis.

And Xcerion registering the trademark in the US doesn't mean they were using it in the US and thus might not have been causing confusion for iCloud Communications' customer base.

There's a lot of ifs here and not a lot of judges appointed to this case.

 

[ghostlines]

Motion to dismiss.

iCloud Communications had ample time to work with CloudMe the former owners of the iCloud domain to prevent confusion.

It doesn't sound like they made a move until a deep pockets company moved in.

This will be interesting.

True, I hope this doesn't turn out bad for Apple. But iCloud communications could simply claim that they only now became aware of the other "iCloud" ,because of so much media surrounding Apple's WWDC.

 

[Prallethrin]

From Wikipedia.

"Unregistered trademark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be rationally expected to expand"

"An unregistered mark may still receive common law trademark rights. Those rights, for example, may extend to its area of influence—usually delineated by geography."

The trademark is regional. Being a small US based company, they should not be expected (nor have any legal right) to defend their trademark against a small Swedish company.

Interesting. But it still has nothing to do with "threat".

And your article also says,

The unregistered trademark cannot be infringed as the owner cannot bring the infringement proceedings, which is well known as unregistered trademark infringement.[2]

In order to succeed in a passing-off action, a plaintiff must prove that
-It has reputation in its trademark in relation to its goods or services;
-The defendant's actions misrepresent the origin of the defendant's goods or services to customers.
-The applicant has suffered loss as a result of the defendant's actions.

Apple is obviously not trying to misrepresent their services and pass it off as iCloud Com's goods and services.

So...

 

[0815]

Just imagine how many new customers they could have gotten with the right advertisement:

"go to geticloud.com to get the best VOIP system powered by iCloud Communication"

Many would have thought this is a nice iCloud feature and signed up and Apple couldn't have done anything since they used those names before them.

Instead, they bring hate to themselves.

 

[kppolich]

wouldn't it be cheaper for apple to just buy out/ settle with these people outside of court rather than face lawsuits from every organization/website with i and Cloud in the title?

 

[zin]

Some people on here dismiss things far too quickly. The fact of the matter is iCloud Communications was and is a company. I don't think I'd be too happy if the main part of my company name was then used by a multinational corporation and heavily promoted.

People here are claiming they're doing it for the attention. For goodness sake. Anything revolving around Apple is going to fire a media frenzy, so it doesn't matter if some small business in Arizona initiates legal action or a large corporation does; both will receive equally large and unnecessary amounts of traffic.

I think you need to start putting yourself in the position of these plaintiffs; some, not all, do have some credibility in their accusations.

 

[Kwill]

Switched a birth

Perhaps Apple should have been the one to use CloudMe.

 

[jettredmont]

How wrong you are.
Defend or lose it requires knowledge of the infringement.
Many small companies don't have the resources to monitor every corner of the world looking infringement.

Only once the infringement is known is an entity required to "defend it or lose".

Effort to police is always a judgement call, but two major factors here go against iCloud:

1. They did not register their trademark. This is cheap and easy. It would have avoided this entire debacle (Apple would have come across the filing and acted accordingly).

2. The "small Swedish company" has had an open trademark registration for exactly that trademark for well over a year.

If you do not take advantage of the system built to passively protect you from trademark infringement, and you do not actively search for trademark infringement, and the only time you actually act on trademark infringement is when the front page of your newspaper talks about another company who is bringing out a major new product named the same as your trademark ... I don't think that qualifies as policing a trademark by any reasonable stretch of the imagination.

Again, it's a judgement call, and maybe the judge will end up ruling their way, but iCloud hasn't done themselves any favors here.

 

[reden]

They're a VoIP company, why are they called iCloud? lol

Their website sucks. I should redesign it.

This reminds me of that ComWave company here in Canada that complained about the term iPhone.

Can I see some of the sites that you have designed?

 

[jettredmont]

Some people on here dismiss things far too quickly. The fact of the matter is iCloud Communications was and is a company. I don't think I'd be too happy if the main part of my company name was then used by a multinational corporation and heavily promoted.

Personally, I wouldn't be too happy about that either. But, I'd be really pissed at the penny-wise fool who decided six years ago he'd save the $1,000 attorney fee to trademark my company name, and who "forgot" this year and last to look for trademark registrations using that company name.

I'd be really pissed if, instead of thinking up an original name, that penny-wise fool had also decided to name my company using a hip prefix and a hip term for the Internet, both of which were even at the time being combined in various sundry manners and trademarked left and right.