Earlier this month Apple Computer, now known as just “Apple,” became embroiled in a trademark lawsuit with Cisco Systems, Inc. over Apple’s proposed use of the term “iPhone” in connection with its new smart-phone. Cisco claims that Apple’s use of the term infringes its trademark and creates a “substantial likelihood of confusion” with Cisco’s iPhone product. Apple claims that Cisco’s claim to trademark protection is tenuous. In this case, it is quite possible that both trademarks can peacefully coexist. In the words of Rodney King, “can't we all just get along?”

Primer on trademark law

There is much confusion in non-academic circles about just what is a trademark, a service mark, and exactly how you get one, lose one, or protect one. Put simply, a trademark is nothing more than something that is associated with the provider of goods, and a service mark is something that is associated with a provider of services. Thus, company names like “General Motors” or “Cisco” are trademarks, just as particular product lines like “Mustang” or “Big Gulp.” Trademarks can include colors (yellow and red for Kodak film), logos, typefaces, tag lines (“good to the last drop”) and may also include what is called “trade dress” – how the product or packaging looks (anyone see the new LG “Prada” phone?). The idea is, when you see the trademark, you think of the particular item or company, and not something else.

One myth about trademarks is that you have to do something to get one. In fact, all you have to do, really, is to just use the trademark. Open a pet spa in Topeka, Kansas called “Dog Day Afternoon” and you have a trademark. You could stop someone else from opening a competing store with the same name. If you want additional legal protection, and you want to put people on notice about not only the identity but also the scope of your trademark, you can register your trademark. In the United States, this is done through a filing with the United States Patent and Trademark Office, www.uspto.gov. You can also protect trademarks that you intend to use later on.

Now, not everything can be trademarked. I couldn’t trademark the phrase “Law Office” for the provision of legal services because the term is descriptive rather than identifying. But the phrase “1-800-LAWYERS” or lawyers.com might be subject to trademark. If something merely describes what it is, or if the description is or becomes generic, then trademark protection may either not be grated or may be lost. Thus, companies have had to fight to keep their trademarks from becoming generic – think “Kleenex” or “Jello” or in earlier times “Sanka,” “Radarange,” or “Frigidare.”

Another common myth is that two people cannot have the same trademark. Not true. Kelly Tires, Kelly Furniture, Kelly Temporary Employment services are all registered trademarks. Two trademarks can peacefully coexist if, for example, they describe substantially different products or services, exist in different geographic areas, or are otherwise sufficiently distinct or are made so. (Another example: Burlington Coat Factory is not associated with Burlington Industries...)