Guest post by Just as Apple wraps up one lawsuit with Nokia, they have been hit with another one by a Phoenix based company named iCloud Communications. iCloud Communications, a VoIP vendor, claims that Apple’s new iCloud causes confusion with competing products, and has harmed their image because anytime someone hears the name ‘iCloud’, they will now think of Apple instead of iCloud Communications. Super-Instant Pre-publication 5000W Turbo Update from Thom: …and we have another one.
“The goods and services with which Apple intends to use the ‘iCloud’ mark are identical to or closely related to the goods and services that have been offered by iCloud Communications under the iCloud Marks since its formation in 2005,” the company alleges, “However, due to the worldwide media coverage given to and generated by Apple’s announcement of its ‘iCloud’ services and the ensuing saturation advertising campaign pursued by Apple, the media and the general public have quickly come to associate the mark ‘iCloud’ with Apple, rather than iCloud Communications.”
iCloud Communications has stated that “Apple has a long and well-known history of knowingly and willfully treading on the trademark rights of others”, noting that the Cupertino company has been sued by The Beatles over use of the Apple name, by Cisco Systems over use of the iPhone name, and by Terrytown over use of “Mighty Mouse”.
The company is seeking an injunction to stop Apple from using the name iCloud, as well as monetary compensation for damages already done.
Did iCloud Communications even LOOK at their own website? Totally different from what Apple is doing! Their customers must be morons to mistake Apple iCloud for their company. And yet they claim:
The goods and services with which Apple intends to use the ‘iCloud’ mark are identical to or closely related to the goods and services that have been offered by iCloud Communications under the iCloud Marks since its formation in 2005
Ridiculous…. I smell money grab!
I smell Apple fanboy. It doesn’t sound like a money grab to me. I think they have legitimate concerns. After, this is going to crush their search engine ranking. And they do have a point that the first thing people are going to think of when they hear iCloud now is Apple.
As I posted previously: the facts are iCloud Communications never filed for a trademark at the federal level. They didn’t even file!
It doesn’t cost all that much to file and maintain a trademark’s legal registration. As such, this certainly looks like a money grab on the part of iCloud Communications. I expect it’ll be an uphill battle for them, and it should be.
IANAL of course, but from what I understand, filing for a trademark is more of a formality to allow others to easily find that you’re using the trademark – filing isn’t necessary to enforce a claim to a trademark (though it does introduce some good evidence for a claim). I think that may even be part of the reason there’s both TM and (R) logos for trademarks.
IANAL also, but I recently had a discussion with an IP lawyer on this exact topic.
His quote: “Registering a trademark helps in defense, but not mandatory to protect it. You need to prove that your product is associated with a particular trademark before someone else started using same name.”
Dispassionately pointing out facts here seems to be a fruitless exercise when Apple is involved. If one of the site’s main contributors openly claims to
it’s highly likely that the sites main audience will feel the same way, which is likely the reason why yours, mine and the other posts pointing out those same facts were duly ignored.
From what I read here it would seem that when it comes to Apple and names, due diligence means not only checking official sources like the USPTO database, their logical and legal requirement, but fulfill some sort of ethical requirement by also doing generic web searches using everyone’s favorite search engine to make sure there’s absolutely nobody out there that was too lazy or cheap or just plain stupid to do what they should have, which was register the silly name themselves.
Way to selectively quote. You left out the part where I said that I dislike ALL companies.
Unbelievable.
Edited 2011-06-17 09:41 UTC
Again, they don’t have to file. If they can prove they were doing business under that trademark before Apple started using the name, they have a valid claim. The U.S. patent and trademark office specifically says you do NOT have to register a trademark to have a valid claim to it.
Edited 2011-06-17 13:00 UTC
Nobody thought of iCloud Communications … Ever. Apple are well known for iAnything so good luck fighting Apple. Even Cisco settled.
Well then you’re smelling someone else in the room. If you know my posts I’m about the practical, common sense approach regardless of the Operating System or computer involved.
If you said iCloud to anyone you knew last year, or the year before I bet they’d peg it as an Apple product anyways. Just do a Google Search for iCloud Communications… you won’t even see their website in the top 100 results that’s how small their mindshare is. Pretty much any website reporting on the suit comes up before their site does!
I’m just saying this is the same deal as Apple Computers vs Apple Records. I’m sure they’d still be suing Apple if they called it iCloud Storage or iCloud Music. Suing Apple is the new way to get money and publicity.
If iCloud Computing provided the same services I’d totally be against Apple and their name.
Actually, I just did one. After typing “icloud” they were second on the auto-complete list. After typing “icloud com” they came up as the very first result. So I’m not sure where you got your claim that they won’t even come up in the top 100.
Uh.. Yeah. You do know how search engine rankings work right? And that recent popular news events can rapidly change rankings? That’s to be expected. But before the news reporting broke, none of those links would have existed. The news links no doubt pushed their actual company Web site down in the search engine rankings.
The agreement between Apple Computer and Apple Records allowed Apple Computer to use the name provided that they never got into music business. Which of course, Apple violated when they came out with the iPod and iTunes.
They do have a point that Apple has a history of appropriating the trademarks of other companies.
They both provide IT services. And again, in today’s world, a lot of the issue is what will happen to your search ranking if you are a small company, and a large company like Apple with virtually unlimitted marketing money comes along and steals your trademark.
If this post and the update were interested in presenting a quick synopsis of the situation so that readers didn’t have to reference the long winded original articles, one of which has been out there for three days anyway, wouldn’t they include the tiny little tidbit that Apple actually has trademarks for both of these names related to the product / service they’re selling, or are we just interested in the emotion charged anti-Apple (or Apple Fanboy at times) rant that has a magnetic attraction for the mouse pointer? Is anyone capable of posting something just based on facts?
Considering the cost and relative ease of registering and maintaining a trademark, which is something that Apple seems to have been capable of doing, you’d have to think these companies are just after the media attention. And while they keep getting it the suits will continue.
I still like the fact that since the company started was when Apple was going iCrazy naming everything.
And I bet the company was quite happy to go “If we call ourselves iCloud, people will find us while looking for other Apple products. Yay”
And now with Cloud computing. iCloud seems pretty obvious naming scheme.
If anything the company has been riding off random hits for calling themselves something similar to Apples name for years.
It’s their fault for thinking that Apple doesn’t have a trademark right to the letter “i” at the beginning of a word? The fact is that Apple can’t trademark the letter “i” and every single product name that starts with “i”. Also, in 2005, the only “i” products Apple had were the iMac, iBook, and iPad. So it’s not their fault. They had every right to use the name iCloud. And if they beat Apple to the name, it’s Apple’s fault for not realizing how important of a buzz word “cloud” was going to be in time to grab the name first.
Edited 2011-06-16 22:33 UTC
iPad in 2005, really?
It was a typo. I meant to say iPod.
Proofreading is your friend
Yes, when you’re publishing a book or an article. Not when you’re banging out a quick response on an online forum. The standard for quality is completely different, because the writings are totally inconsequential. People who take it upon themselves to criticize others on the basis of harmless typos are just being jerks.
It was OBVIOUS that the guy meant to say “iPod,” since it was referring to 2005. OBVIOUS. Everyone reading it knew that. But sadly there are people who enjoy criticizing but lack the intellect to critically evaluate the content and meaning of what someone said. So instead, they spend all their time trolling, adding noise to what is otherwise an interesting (albeit transient) discussion.
And don’t tell me that you didn’t know that it was a typo. As intellectually challenged as you are, even you are able to reason out that there was a single letter change. So by bothering to criticize on the basis of the typo, you’re demonstrating to everyone that you’re fundamentally an incredibly rude person.
It’s people like you who work overtime to take the enjoyment out of life for everyone else. Killjoy. That should be your new name.
It’s an easy mistake to make. And an easy one to miss when proofreading. But hey, that’s OK if you want to criticize me for a typo. I’ll just assume it means you couldn’t find anything about the argument I made to criticize, so out of desperation, you picked up on a typo just so you could get some kind of criticism in.
Btw, “Proofreading is your friend.” is a complete sentence. And therefore, you should have ended it with a period. I guess you can criticize a typo even though you don’t feel the need to use punctuation.
Edited 2011-06-17 17:14 UTC
Or maybe I wanted to leave it as is? Artistic license.
The first “i” name that I recall is the Lowel i-Light: http://www.amazon.com/Lowel-Complete-Tungsten-Cigarette-Connector/d…
Lowel has sold zillions of these lights named with a small “i” since 1985 — at least 13 years before the first Apple “i” name.
Edited 2011-06-17 06:02 UTC
iPod….
Edited 2011-06-17 08:20 UTC
And iTunes, iWork, iPhoto, iMovie, iCal, iChat, iDvd, iSync and iMail. Am sure I could find a few more.
While most people would call me an Apple hater, you can’t deny the truth that both companies had legitimate businesses using their respective trademarks. Apple should have been more careful with name selection. Or they did it deliberately thinking they can’t lose. If thats the case then they should be punitively fined. Trademarks are a searchable register after all.
Whoops isn’t on the part of Apple: iCloud Communications was too damned cheap and stupid to register their mark federally, and Apple has iCloud legally filed long before this suit came out. All you have to do is do a search on uspto.gov and it’s easy to see: there’s a filed application by an individual by the name of Douglas Dane Baker, one by Xcerion AB CORPORATION SWEDEN that’s a registered trademark, and every other filing is by Apple inc.
My last check was that it cost about $400 to get a trademark registered in the US uspto.gov website. Any business that’s serious can afford to pay to register their trademark at the federal level. iCloud Communications deserves to have their butt handed to them for sheer stupidity.
http://www.osnews.com/permalink?477499
Doesn’t matter. You do not have to federally register a trademark. If you were doing business under that trademark before another company registered it, that is legal basis for establishing a trademark claim. That comes directly from the patent and trademark office.
If you pick your company name in order to resemble a line of products in use by a popular tech company in order to benefit from the associated publicity freeload from their brand image, you shouldn’t be too surprised when the name you’ve chosen eventually gets picked for use by that company as well.
Maybe they should consider asking money to Apple AFTER they’ve compensated them for all those years of gratuit publicity due to illicit brand association.
Illicit?
Since when Apple get granted the exclusive right to use single letter “i” prefix in a mark?!
Answer: never.
So, not illicit, and no compensation due.
Edited 2011-06-17 10:49 UTC
Its illicit in the sense that their perceived added value in the market has no foundation whatsoever since they are not associated to Apple, inc. So basically they’ve profited from associated brand value goodwill for years without any correlation between Apple’s products and theirs.
This type of behavior is also found in nature. One example are bee flies. Dressed up as bees, these flies benefit from the fact that they resemble the real thing. The main difference is ofcourse that beeflies don’t sue bees when they happen to come along.
Um… What? This has got to be a candidate for “worst analogy of the month” award. I really love how Apple fanboys can come up with the most ridiculous analogies that somehow make sense to them, but not to any one else who has any logical sense of thinking at all… Seriously, how can anyone be that brainwashed that they will resort to absurdities like this to defend their brand loyalty?
As others have pointed out, Apple was not even the first to use the name prefix i, followed by a name. Apple has no legitimate claim at all to “everything i”.
My argument has little to do with fanboism; besides that, at least I don’t succumb to degeneratory namecalling in a futile attempt to win an argument on the internet.
Their domain, geticloud.com, was registered in 2005, 6 years after the registration of icloud.com and in use by a service called iCloud from which Apple bought the domain name. Did they ever sue Xcerion for using that name? How can they argue that Apples brand is diluting their value, while Xcerions wasn’t? Apple’s brand is, after all, one of the strongest brands on the planet. Clearly there’s a glaring contradiction in their line of reasoning.
By 2005 Apple had launched a whole range of products using the “i” monniker including :
iMac
iBook
iPod
iTools
iLife, including iMovie, iPhoto and iDVD
iTunes
iWork
iChat
iCal
iSync
…
Even if they had filed, they’d still have to be considered as the proverbial beefly. The hole in your line of reasoning mainly being that you’re failing to place the facts in their context.
The facts are actually very simple. iCloud communications was doing business under the name iCloud long before Apple decided to use the name. And again, Apple CANNOT claim that they own the rights to every single name that starts with “i”. Sometimes they are going to step on someone. and that’s what they did in this case.
The hole in your line of reasoning is that you are biased towards Apple because of brand loyalty, so you are not looking at it from a purely legal trademark perspective.
And that’s exactly how they can argue that Apple’s brand is diluting their value. Because Apple is such a strong brand, that iCloud is immediately going to become associated with Apple.
Edited 2011-06-18 00:06 UTC
I’m looking at it from the “If you’re going to be dumb you invariably end up as a victim of your own stupidity” perspective. Clearly in the USA this is often not the case as every conflict tends to be someone elses fault. Who created this brand name confusion in the first place? Is it Apple, with had a strong “i” brand established before iCloud Communications started using theirs and where a big share of the market will immediately associate anything “i” branded with Apple, or iCloud communications which profited from market goodwill for years by associating their brand with a well known one trough a similar naming scheme? Say I’m a hardware builder, and I build a line of servers with a “DL4xx” sheme, should I balk at HP when they eventually end up using those as part of their ProLiant series?
If they were so keen on their unique awareness in the market space, they’d try to build their own unique brand from the start instead of freeloading on someone elses.
Edited 2011-06-18 08:45 UTC
Well thats all well and good if you were correct. But the second lawsuit over iBooks shows how wrong you are. iBooks was being used as a brand long before Apple had established a history of using iName for its products as only the iMac had been named.
Apple’s “ibook.com” was registered in 1997. ibooks.com was registered in 1999.
Yeah, I was checking the comments for someone to catch this one. I’m sure someone at Apple googled iCloud before the name got greenlit, and when they found it, the logic probably went something like this:
We could just buy iCloud, but we don’t really want them.
We could make an offer on the trademark, but they might refuse.
We could go ahead and use the name, but they’ll probably sue. But, it’ll be pointless to get an injunction, because the web will be alight with our product and they’ll be buried already.
If they sue, we’ll settle, probably for about what we would have offered for the name in the first place. But if we make an offer for their name before they sue, they have direct evidence that we were aware of their name before we took it, and thus a stronger court case and higher damages/settlement.
Optimal approach: just use the name, and deal with them when and if they pop up.
tl;dr: Apple made the optimal business decision. iCloud will probably make more than enough in settlement to replace all their letterhead and inform their customers.
Love it when fanboys show us how Apple has planned everything in a crisis.
At least they admit that Apple didn’t invent iNames.
Edited 2011-06-19 06:36 UTC
Well, maybe, except for the point at which Apple found the owner of the trademark and the domain (Xcerion) and bought both from them. But don’t let facts get in the way of the conspiracy.
Yes, and there was a REBOL IOS, which even won a webby award sometimes back in 2002, and there is also Cisco IOS, but yes, Apple has surely invented everything “i” related 🙂
and don’t forget about the ipaq
Or the i386 from 1985.
Or Icom communications, a very large communications equipment company. So what if the I is uppercase instead of lowercase? Still sounds the same when you say it. Maybe they should have sued Apple? Icom has been around since 1954 after all.
Point is, Apple, and several have pointed this out already, there were lots of companies using trademarks starting with the letter “i” before Apple ever started using it.
Edited 2011-06-17 18:50 UTC
Then obviously, IBM & Intel would be next.
Then so would be the whole iNternet. 🙂
Apple is going the aggressive road these days, bullying any other company which could even remotely compete with them, using fallacious arguments and sheer lawyer power. Now obviously, Apple diligent fanboys will say “this is business as usual”, the way the world works, so it is legitimate.
And then, when Apple receives similar attacks from other companies, the same fanboys start whining that this case against their idol could possibly be unfair, if looked from a specific angle, or is just about bullying money ?
Come on, there is no discussion possible with those fanatics.
I just say “good, let them experience a dose of their own medicine”.
Hmm, I think it’s time to trademark iDolatry.
But they are right in that “nobody will ever think of them when someone hears iCloud/iBook”.
However, did ANYone hear about them before? Probably, but this is going to boost their fame. Good PR.
Pedro.
Apple likes to play the innocent victim. Poor helpless Apple is being attacked by people trying to cash in on their fame. Well, a Google search for icloud before Apple anounced it would have almost certainly turned up the other company. Apple has a long history of naming first, suing second. iOS, iPhone, iCloud. Its just standard shitty corporate behavior.
Before Apple doing iCloud I never heard of the company, however I did a Google search after the announcement and found the company that is now suing Apple. I for one love my macbook however I think the company has a good foot to stand on and has a right to sue Apple and win. I do hate that large companies going after whatever they think is their “God given right” and the only saving grace they have is the money and the lawyer power to win.
Hasn’t anybody learned to Googleâ„¢ a potential company/product name (before launching with it) since the Mozilla <strike>Phoenix</strike>… I mean <strike>Firebird</strike>… I mean Firefox episode?
I don’t know if I’m an Apple “fanboi.” I own Macs and iPods and iPhones. I avoid Windows as much as I can, and I use Linux on servers. I like Apple products because, although imperfect, the do a better job than any other company or organization of polishing the end user experience. I like both the aesthetic design of their products and the usability of their software.
Not that that’s out of the way, it’s clearly unethical what they’re doing. Apple has a history of stealing other companys’ trademarks, as was pointed out in the article. The first time they did it, they could possibly be given some leeway for having not known. Now, they now that they do it. This is something they do explicitly, and they do it with impunity.
But actually, it’s not clearly unethical. No lives are at stake, and it’s an open, competitive marketplace. What they are doing is “just business.” And ethics does not enter into business. Only law does. Some of the laws are based on ethics. But companies, motivated by profit, regularly walk right up to the legal (screw ethical) line and then go right over it, with a plan to deal with the consequences should they occur. Often, the consequences are cheaper than not doing the thing in the first place. They tell you that it’s easier to ask for forgiveness than permission. For a company, forgiveness isn’t even interesting. The question is, can they buy off the other company that’s complaining?
And that’s precisely what Apple is going to do. They will settle out of court for some ungodly amount of money that will make iCloud Communications people cream their shorts. For them, it’s an exit strategy without an exit, because then they have a ton of cash, and all they have to do is rebrand, which will cost less than they cash they were given. It’s in everyone’s best interest to do this. Apple knows they’re in the wrong, so they won’t let it go to court. Losing in court would cost Apple way more money than paying off iCloud Communcations.
From the layman perspective, this may seem wrong, but the fact is, iCloud fits with Apple’s general naming scheme. It’s a simple naming scheme, which is why it amounts to very good marketing. As Apple grows, they’re going to keep stealing “i” names. For anyone starting a new company, it might be a good idea to choose a name that you think Apple might want to steal, because that will ultimately turn into a nice chunk of cash. Think of it as a business strategy.
What most people don’t realize is that businesses, as entities, are completely unemotional. Companies to not get angry. Executives might. Steve Jobs often does. But companies do not. They just work to rake in more money. So, there’s the conflict between Apple and Samsung. Apple sees similarity between Aplpe product and Samsung products as a thread to profit, so they engage in legal activity to squash it. Since Apple is also a huge Samsung customer, Apple will use that relationship as leverage. But the fact that Apple is actually moving to alternate sources of parts has nothing to do with this. Apple’s going to by the most cost-effective parts available, from whomever sells them. For instance, they’re going to have Intel fab some parts for them. Why? Because Intel has the only 22nm FinFET fab in the world!
As Apple observers, we get caught up in the fact that Steve Jobs seems to want to have “relationships” with other companies. Somehow, that tricks us into thinking that most business involves a human element. So there’s the iPhone, and then Google comes out with Android, and El Steveo gets pissed off. The same thing happened in the 80’s with Windows borrowing concepts from the Mac. But Steve Jobs is truly peculiar. He expected that because he was “friends” with Eric Schmidt that Google wouldn’t try to complete wtih Apple. Talk about distortion of reality! Mobile is the future of computing. What moron thinks that Google would not try to get in on that, just because they didn’t want to annoy Steve Jobs? Yeah. Smart. I’ll pass up billions of dollars of business in a wide open market, because some dude at another company wouldn’t like it. Then my investors will take me out and lynch me publicly. Google’s action it this area isn’t even a case of unethical business… just smart business.
Check Cisco’s iPhone, Internet-Phone. So as painful is it might be to all Apple fanboys around, ‘i’ doesn’t stand for ‘apple’, no matter how many products they name that way.
Remember the joke about Bill Gates dropping all patents and keeping only two, the one for the zero’s and the one for the ones? Apple is doing pretty much the same lately. Apple are the Microsoft of this new era. Thank goodness they still hire people who produce actual stuff and not just lawyers..
http://www.bbc.co.uk/iplayer
🙂
iDont’tCare