Apple: Trademark? What's a Trademark?

By Trevor Gilbert , written on February 15, 2012

From The News Desk

On Monday, rumors began to fly that Apple would be naming its upcoming television product 'iTV'. While Apple may think it has trademarked the letter 'i' and patented camel-case, the truth of the matter is that they have not. One company that is well aware of this is the British television network ITV. ITV has owned the trademark to 'ITV' for a very, very long time. Having been founded in the mid-1900's, they have a very solid claim to it. While this round of rumors was eventually struck down by ITV itself, what Apple will be doing with in regard to trademarks is a serious matter of concern if the Apple's iTV will be a successful device.

To learn what Apple might do, we should look to what they've done in the past. One example is the iPhone trademark, which Cisco owned. Knowing that Cisco owned the trademark, Apple went ahead and announced the device and started selling it without Cisco's permission. The result? Cisco sued Apple and the two eventually negotiated a settlement, with Apple taking control of the trademark. Imagine if Cisco had decided it didn't want to settle, saying that the iPhone trademark was too valuable to let go of. Apple would have been forced to rebrand their devices, forcing months of delays so we could all use the Apple Phone. That's why it is important to settle trademark disagreements early. Settle early, settle often, so to speak.

For another example, we can look at a case that is just picking up steam. Earlier this week, the Chinese company Proview requested that iPads across China be removed from store shelves in certain regions. Normally, the laws Proview is protecting itself under are the same laws that Apple uses to protect itself from knockoffs being sold outside of China. While the irony is comical, the ramifications of the case are somewhat more serious.

The reason that this case is more serious is that the company, Proview, owns the trademark to the term 'IPAD'. "Well, they had to have done it after Apple filed for their trademark, right?" The case isn't so clear. It appears that Proview owned the trademark free and clear, but sold it to a British company name IP Application Development, which then resold it to Apple. However, Proview Taiwan was the one selling the trademark, and Proview Shenzhen was the one using it. Proview Shenzhen now says that Proview Taiwan didn't have the right to sell the trademark. The kicker? The courts agreed and the trademark sale was nullified, meaning Proview still owns the trademark to 'IPAD'

This may seem like a small deal, and Apple could fix it by just selling iPads in China under a different name. Sure, costly, but not impossible. However, the tables were turned this week when Proview asked the Chinese government to ban the export of iPads from the country. Proview admits that this would be difficult to enforce, but the possibility remains that the country in which every iPad is manufactured may ban the export of the device.

Proview's endgame is unclear. They are asking that Apple pays a fine of hundreds of millions of dollars, so this could just be a very expensive and legal shakedown. However, Proview could also just never settle, never sell the trademark, and stall the future on one of the most popular electronic devices ever sold.

Of course, these issues are important in their own right, but especially so when you look at them with the perspective of the iTV. ITV has made it clear that they will "vigorously defend" their well-established trademark. This isn't like Cisco, where the iPhone trademark was not critical to their bottom-line. ITV is the name of the company, and the name of multiple secondary networks like ITV2, ITV3, etc. This isn't the sort of trademark a company sells or licenses out.

As with everything Apple does, they are tight-lipped. They aren't going to say whether or not they've negotiated with ITV, or whether they believe they aren't infringing upon the trademark. One thing Apple should be careful of here, though, is that this case might be a lot harder to win than the Cisco case or the Proview case. If Apple does decide to go ahead and name their yet-to-be-announced device the iTV, chances are we are in for a very long and very lucrative lawsuit.

[Image Credit: Silvia Antunes via Shutterstock]