Apple, Startup Go To Trial Over 'Pod' Trademark

suraj.sun writes with this excerpt from Ars Technica: "Apple is scheduled to go to trial with a startup to fight over a three-letter word: Pod. The trademark battle centers on independent entrepreneur Daniel Kokin, founder of startup Sector Labs, and his video projector in development called Video Pod. Apple had previously filed oppositions against Kokin's usage of 'Pod,' alleging that it would cause customers to confuse it with Apple's iPod products. ... Names that have come under fire include MyPodder, TightPod, PodShow, and even Podium. Sector Labs is the only company to go to trial with Apple over using the 'Pod' branding. Ana Christian, Kokin's lawyer, says the fight is about more than allowing small businesses to use 'Pod' in their product names. She noted a trend in the tech industry, in which large corporations have been attempting to assume ownership of ordinary words."

Comments

The Law

[cappp]

We're talking about Trademark dilution here so it's probably a good idea to have some idea about what the law says. So here we go

(2) DEFINITIONS- (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.

And the test

(B) For purposes of paragraph (1), `dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.

Don't forget that the whole point of the thing is consumer protection - your average person being able to buy a thing with a reasonable sureness about its origins. As in all things tech related the mom-test is probably best: If your mom was out shopping and found a VideoPod on the shelves would she assume it was an Apple product and make her purchasing choice accordingly.

Not the intent....

[Darkness404]

Trademark law was not designed to give power to corporations to forbid competition, rather it was to prevent misleading claims. I don't see how this misleads consumers in any way.

The scenario that trademark law was designed to prevent is people walking into a store and walking out with a product that isn't what they expected. In none of these cases were people expecting to get an iPod and ended up not getting one.

Re:What a typical waste

[DJRumpy]

Irrelevant if Apple was the one to trademark 'iPod' with their media player, and they made it a common household name. Showing a reference to a word in a dictionary isn't going to get this start-up anywhere either. No one said that using the word 'pod' is a trademark violation, and it doesn't meet the definition of a trademark infringement.

http://en.wikipedia.org/wiki/Trademark_infringement

The fact that they have a media projector called a 'Video Pod' makes the case relevant as it takes on a whole new meaning.

Not really, Pod [reference.com] has been used in that fashion for a really long time. Or at least way longer than Apple has used the word as a part of its trademark.

Re:What a typical waste

[MidnightBrewer]

Not really. If you try to trademark something within the same industry (i.e. as a competitor) and with a name that either conflicts with or at least threatens to dilute your market image through confusing similarities, that's a viable trademark dispute. It's one of the very basic guidelines you have to read up on when figuring out whether or not you have a chance of getting a trademark; it helps to evaluate incidents of prior art. Someone marketing a media device called a Video Pod in the same market sector as Apple's media device, the iPod, looks a lot like trademark dilution to me. You may not like Apple, but they've got grounds to argue here.

Re:What a typical waste

[TheRaven64]

Car is not a trademark. Your logic would only work if someone else had been using car as a trademark to describe something other than an automobile. No one was using 'pod' to describe portable media players before Apple - when it launched, I remember people saying it was a stupid name (what does it even mean? It's the place where I keep peas?).

Trademark law is not just about the word, it's about the context. A good example for geeks is VAX. This was a brand of minicomputers from DEC and a brand of vacuum cleaners from a British company. Because minicomputers and vacuum cleaners are entirely different markets, there is no possibility of confusion, so there is no trademark infringement (although the adverts saying 'Nothing sucks like a VAX!' didn't do DEC much good in the UK).

Portable media players and portable video projectors, however, are very similar markets. I would expect a future generation iPod to include a picoprojector, and there was an iPod Video, so calling something a Video Pod is likely to confuse buyers, making it a trademark issue.