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

WIth all due repsect

[oldhack]

I say this with all due respect:

Fuck Steve Jobs.

Re:WIth all due repsect

[Anonymous Coward]

Why be so mean to donkeys?

What a typical waste

[Anonymous Coward]

I wonder how much money is wasted everyday by these useless unethical corporate bullshit lawsuits. Clearly, things are completely out of control when people waste money fighting over common usage of common words. Hey Mr. Jobs, are you proud about all the money you waste?

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

[perlchild]

As PART of their trademark. That's the part that's problematic right there. If they had tried to trademark pod, they would have lost(or at least, the other companies wouldn't have tried). Having a trademark apply to partial words is what makes it gaming the system.

Re:What a typical waste

[mabhatter654]

but Apple in particular has a practice of picking VERY generic names... like iPhone when somebody ELSE already had that name and Apple camped the trademark office on a technicality to even contest the name.

Better yet, how about Apple's blatant grab for the term "ping"... even Microsoft wasn't stupid enough to go for that big of a grab and chose "bing" instead.

If they win it,

[Bjecas]

will they go for iKea?

Re:If they win it,

[jasen666]

My god, these countries have no respect for American IP laws at all do they?!

Re:America, pull your head out of your arse.

[AnonymousClown]

US patents, trademarks, gun laws, drug laws. When is the stupidity going to stop?

When we can have the utter perfection of both the government and economic systems that Europe, Canada, Asia - especially Japan - have achieved.

After all, they live in a utopia, don't they?

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.

Re:The Law

[hedwards]

There are limitations, and in this case Apple is in essence trying to claim ownership of an English word which has been in existence for hundreds of years. A VideoPod is quite simply a Pod for videos, or basically just a container for videos. Considering that the special thing for Apple is using generic terms and declaring them to be trademarked by virtue of attaching an i to the front, I don't think they have any right to pretend like they own the word "pod."

If they get Pod...

[guyminuslife]

Do they also get Phone, Tunes, Photo, Sight, Movie, Book, Life, Chat, DVD, Web, Work, and Pad?

I'll give them Mac, but what does that mean for Shakespeare's Macbeth? Or MacLisp? Or Emacs?

Re:If they get Pod...

[guyminuslife]

If the iPod had instead been called a "Chazzwazzer," we'd be downloading "Windows Mobile Media Player Live Broadcasts" now.

Re:News @ 11

[icebike]

Open the pod bay doors Hal.

I'm sorry Dave, YOU can't do that.

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.

The law is broken

[Darkness404]

The point isn't about the origins but the actual product. It shouldn't matter if your mom thought that VideoPod was made by Apple or not, what should matter is whether she thought a VideoPod was an iPod video. THAT is the point of trademarks, not to give corporations the power to change the English language. If something was called a VideoPod and was a generic MP3 player, Apple might have a case, but if it was something like... a VHS player you hook up via USB to rip your old VHS tapes into a digital format, it doesn't matter what the name is, Apple has no offering similar to it so the name should stay.

Re:Open the pod bay doors

[jabbathewocket]

Its also written into law that if you do not "rigorously defend" trademarks/service marks, they can be ruled in the public domain ..

You also to pass a reasonability test... first off PODS storage is *not* actually called or branded as such, they are an acronym for Portable On Demand Storage (a side business of Public Storage iirc).. secondly its not "pod" as a unique name, its about Pod as part of a name in context of consumer electronics devices..

Regardless of how long the video pod device has been in gestation or internally named as such, the fact of the matter is that Apple has spent billions promoting the iPod in that market, and as such any newcomer to market has to adapt.. not the other way around..

For case studies on Copyright/Trademark defense you should look up Kleenex, Xerox, Lexis-Nexis vs Toyota(Lexus), Infinity vs Nissan (Infinity branded cars) for some of the history (from both sides of the argument as well as "equal vs equal" battles in the case of the Infinity trademark.

Its *reasonable* to state that a consumer seeing a VideoPod in a consumer electronics store would assume it to be related to iPods in some way.. that same reasonable assumption cannot be said regarding Pipeline management, Moving supplies or seeds (though I think you are reaching very firmly into ludicrous land when you grabbed at that one)

its not again about seeing "any use of the generic syllable pod in a product name.. " but rather the appending of pod to a product name in such a way that it implies a relationship to iPod/etc

Your guess is very wrong, the defendant in this suit is coming out with a product 10 years after billions of advertising have been spent on ipod/ipad/etc and trying to ride coat tails.. and using this as "free advertising" for a product that has not made it to market despite 12 years of work on it.. remember naming is not like patents.. even if he had INTERNALLY named the product VideoPod years before apple filed its first use of the iPod trademark.. the fact that he was not in fact using it in any way and had not defended it means he loses it

Re:Open the pod bay doors

[alvinrod]

They don't own pod, but they do own iPod, which they will probably argue is similar in name and general industry as they product that they allege trademark violation against. I think they may have marketed one of their older iPods as a video iPod when it first got the video capabilities, so it might be fairly easy to say that a consumer might be confused. As for why they don't go after the other companies, it seems fairly obvious from the name and description that these companies aren't releasing anything similar to a PMP. Brand confusion is much less of an issue in these cases.

I don't think Apple will win this one, but it's probably not as clear cut as you make it out to be. Also, companies have to defend their trademark or they risk losing it. I'm surprised Apple's legal team has time for this considering that they've been suing or getting sued by several other companies in the last year or so.

Sosumi is now

[wen1454]

aisuyu.

TLT (The Lawyer Tax)

[jimpop]

This is known as TLT (The Lawyer Tax). Lawyers, not having any technical competency nor skills, want a piece of the action^Wmoney from the high tech industry. So the lawyers devise rules, regulations, and guidelines, that force Apple to pursue any and all things that the lawyers feel necessary to, well, protect the lawyers. It's a vicious cycle, the lawyers feeding themselves lawyers. In the end it's the human consumer who loses.

Re:News @ 11

[flowsnake]

sudo open the pod bay doors Hal

OK

Re:News @ 11

[EricX2]

Dave is not in the sudoers file. This incident will be reported.

Correct

[Sycraft-fu]

This is why there can be a Firebird database, and also a Firebird automobile. Same name, but nobody is going to confuse one for the other. Nobody is going to say "Man, I thought I was going to get a car but it turns out I have a database server instead."

While both products in this case are technology, that seems to be where the similarities end. The iPod is, of course, an MP3 player. The Video Pod looks like it is going to be a digital cinema projector. Not really that similar. Also, Apple's branding has been around the "i" thing. Their iPod is their only "Pod" thing so saying someone is trying to create confusion by calling a projector a "Video Pod" is a real stretch.

While anything can happen in court, I can't see Apple winning this if it is properly litigated. A trademark doesn't mean you own any and everything relating to the mark. It means companies can't try and use a mark or one like it to confuse people. this does not at all seem confusing.