iPhone Gets Its First Busy Signal

It didn’t take long for Cisco Systems to take a run at Apple, Inc.’s newly unveiled iPhone. Cisco owns a U.S. Trademark Registration for IPHONE in association with “computer hardware and software for providing integrated telephone communication with computerized global information networks”. Cisco has filed a lawsuit against Apple in the U.S. alleging trademark infringement among other things. Cisco alleges that up to the night before Apple’s introduction of the iPhone on Tuesday of this week at Macworld Expo, Apple and Cisco were negotiating the terms of an agreement that would have permitted Apple to use the mark.

There appear to be other entities using the iPhone mark for VoIP services, some of which have also filed applications to register the mark in association with such services. Cisco, in its lawsuit, alleges that Apple is applying to register the iPhone mark in the U.S. via a related or alter ego company called Ocean Telecom Services LLC. of 2004 on a proposed use basis.

Apple filed an application to register the mark iPhone in Canada in October of 2004 on a proposed use basis. That application is currently being opposed by Comwave Telecom Inc. Comwave  filed its own application for the mark iPhone in Canada, claiming use of that mark in Canada since June of 2004 for use in association with VoIP services.

The Source Once Again A Source of Trademark Problems

Circuit City continues to encounter trademark problems in Canada with its chain of retail consumer electronics stores. When Circuit City purchased the chain of 870 plus stores from Radio Shack 18 months ago, it was forced to incur substantial costs to re-brand them as The Source by Circuit City. Now, a smaller chain of photo shops called Foto-Source Canada Inc. has applied to the Federal Court of Canada seeking an order that Circuit City cease using The Source as part of its name.

Foto-Source contends that it adopted the slogan “Get it right, from the source” in 1994. Both parties have filed applications to register their respective trademarks in Canada but neither application has been published for opposition yet.

Scotch Distilleries Protest Use Of Glen With Canadian Whisky

The Scotch Whisky Association is battling a Cape Breton distiller of whisky over its use of the word Glen in its trademark. The Association, which represents the owners of well known brands such as Glenfiddich, Glenlivet and Glenmorangie, is concerned that consumers will assume that Glen Breton Rare single malt whisky, produced by Glenora Distillery, is a scotch whisky.

The Association argues that the word “Glen” is too closely linked to scotch whisky for anyone other than Scottish producers to use.  “Scotch Whisky” itself is a designation that is protected under the federal Trade-marks Act for use only with whisky produced in Scotland.

The Canadian distillery, which has applied to register the mark GLEN BRETON, argues that Cape Breton, where it is based, has very strong Scottish roots because it was settled by the Scottish over 200 years ago. The region is riddled with towns and villages that contain the word “Glen”, which means a place at the base of highlands or mountains. The Association has opposed the GLEN BRETON trademark application. Lawyers for both sides recently presented oral arguments and a decision of the Opposition Board is still months away.

RIM Battles Samsung Over Use of BlackJack

Canadian based Research in Motion is suing Samsung over its use of the mark BlackJack in association with a recently launched smart phone device. The Samsung smart phone competes directly with RIM’s BlackBerry Pearl smart phone. In the lawsuit, filed in California, RIM argues that the BlackJack name will cause confusion with consumers who are familiar with the established BlackBerry brand, as well as constituting false designation of origin, unfair competition and trademark dilution.  Interestingly, both devices are offered on Cingular’s network in the U.S.

Real Estate Developers Embracing Trademark Protection?

A review of recent Canadian trade-mark filings indicates that some real estate developers in Canada are choosing to protect as trade-marks, not only their company or business names, but also the marks they have chosen for individual developments. Reflecting a more conservative industry, these trade-marks are not as edgy or creative as some of the new wine industry trademarks. However, in a competitive marketplace, this may change as developers start to see the benefits of distinguishing their projects from those of the competition and targetting specific categories of brand-conscious prospective buyers.

Recent applications and registrations include,

OSCAR (Application No. 1293873)
SPIRE (Registration TMA591399)
THE VINE (Registration No. TMA668332)
THE LAUREATES (Registration No. TMA565184)
ROUGE (Application No. 1294465)
COCONUT GROVE (Application No. 1294937)
NEW TIMES SQUARE (Registration No. TMA590427)
SOPHIA (Registration No. TMA666909)
MODE (Registration No. TMA648830)
UNIVERSITY HEIGHTS (Registration No. TMA649239)
YALETOWN PARK (Registration No. TMA627657)

The time may yet come when not every Canadian city has a PARK PLACE and a BAY TOWERS, although some of the above marks continue the practice of developers using names that are the same or similar to names used by other developers, either previously in the same geographic market or in different geographic markets.

A developer’s business or corporate name normally has a shelf life that’s longer than any single development. In many cases the name of the developer is featured as much (or more prominently) in the marketing of each development than is the name of the development itself. Because of this, the protection of such corporate or business names is likely as or more important than the protection of marks for specific development projects, particularly where the marks for development projects are not distinctive.

As creative marketers begin to shake up the industry with more interesting and distinctive marks for specific projects, the need to protect these distinctive project marks will no doubt increase.

Olympic Trademark Legislation

The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC) is seeking legislation from the federal government that will allow it to deal more effectively with persons who misuse Olympic marks. In its annual report released this week, VANOC explains that it is in discussions with Canadian government officials regarding a special legilslation to protect the Olympic brand. The intention is to reduce ambush marketing during the period leading up to the 2008 Beijing Games and the 2010 Vancouver Winter Games.

Such legislation is not new. Italy introduced such legislation prior to the 2006 Turin Winter Games.