Note to self: never submit a specimen of use I wouldn’t want to see questioned on the editorial page of the Wall Street Journal.
A trademark owner has to submit a Section 8 affidavit in the sixth year of the registration term. The affidavit has to state that the owner is using the mark or is not using for good reason (as in, factory burned down).
It may also submit a Section 15 affidavit at that time, which states that the mark has been in continuous use for 5 years. A Section 15 is optional, but it brings important statutory benefits.
As indicated here previously, Cisco filed a Section 8 use affidavit but not a Section 15 affidavit, by the May 06 deadline, for its iPHONE registration. What appears to have occured is that the original iPhone product was taken off the market, use was interrupted, and resumed no later than the Dec 06 re-introduction. The technical issue would be: was Cisco making trademark use in May 06 when it filed the Section 8.
ZDNet took a look at the specimen for Cisco’s Section 8 (detail pictured above – the full specimen is available through TDR at USPTO.GOV) and noted that it appears to consist of an iPhone sticker slapped on a box for a pre-existing product. It implies that Cisco fabricated the specimen, which allegation Cisco has addressed.
I emailed the author about errors in the article (including the assertion that Cisco needed to prove continuous use). I tried to make the point that it’s not possible for an outside observer to come to any certain conclusion as to the validity of Cisco’s filing. I did make the point that Cisco was ably represented when it filed, and it would have been crazy to fabricate use when (1) it knew Apple was watching; and (2) it could have claimed excusable non-use. My comments were included in this follow up ZDNet story (which article, in my view, muddies the issue in its use analysis. That Cisco didn’t ‘ship’ a product until Dec. 06 is relevant to an analysis of the strength of Cisco’s rights but not necessarily relevant to whether Cisco met technical user requirements in May 06).
A traditional view of trademark use is that the trademark user has to be able to take orders, but not necessarily fulfill orders, to satisfy trademark use requirements on a particular date. A classic example would be trademark use with regard to airplanes or oil tankers, where the order is placed years before the product is shipped. So given the expansive definition of use, it’s hard for an outsider to come to a definitive conclusion as to Cisco’s May 06 activities.
I thought that was that and didn’t blog it.
Well, today’s Wall St Journal editorial page contains a piece entitled “iFoodfight.” It is an interesting essay that makes the point that litigation is the continuation of business by other means (and sort of implies that Apple is the moral favorite here). it also notes that:
“What’s more, ZDNet, the online news service, examined the paper trail and finds that Cisco may have failed to meet a six-year deadline to show it was making use of the trademark. Cisco did submit something just before an additional six-month grace period ended, but — according to ZDNet, which backs up its report with a photo — the filing consisted of slapping an “iPhone” sticker on a box for its Linksys Cordless Internet Telephony Kit.”
Well, if push comes to shove, then maybe someday Apple will put Cisco to strict proof and Cisco will have to explain the circumstances behind the specimen. Cisco did or did not satisfy Section 8 requirements. But in the short term, the ZDNet article, and the WSJ citation of it, creates an unfair inference. A sticker on a re-named box is not itself per se evidence of fraud.
Real note to self: don’t submit an affidavit to the PTO that you aren’t prepared to explain under cross.
Aside: There may be profound issues here regarding (1) the mainstream press reporting on technical legal issues and (2) lawyers speaking to the mainstream press about technical legal issues, but I will leave those for future posts.