Apple issues cease-and-desist over "Podium," "Flypod" marks

[AppleInsider]

A small Washington-based firm has been served with a cease-and-desist concerning two of its trademark applications, Flypod and Podium, that Apple says are likely to be confused with its own iPod trademark.

The letter was sent a week ago to Procreate Inc.'s intellectual property attorney. Procreate is a little-known "brand conception and proliferation" company that lists four brands on its website, but only one -- Podium -- seems to be currently available. Podium itself has been developed under the name "Pivotal."

"Our client has asked us to contact you about your client Procreate Inc.'s intent to use applications to register FLYPOD and PODIUM as trademarks," reads the letter from Apple's counsel. "Apple is concerned [that the] use of the marks for such goods -- which are identical, substantially related, and/or complementary to Apple's own IPOD brand products -- will confuse consumers into believing Apple is associated with your client's products, when it is not."

Podium is the name for a line of iPhone stands, available in white and silver. The stand also works with iPod touch, and the company's website refers to a "precision engineered patent pending design [that] enables you to infinitely adjust your viewing angle for the ultimate hands-free iPhone experience." It sells for $68.

It is unknown what Flypod refers to as the product has not yet turned up. For now, it's a patent application published in January after being first submitted in September of last year. The application describes it as a name for "electronic and/or mechanical accessories for portable and handheld digital electronic devices, mamely, stands, holsters and/or docking stations...and battery chargers, electrical connectors, wires, cables, adapters and remote controls."

Apple argues that, "FLYPOD and PODIUM consist in substantial part of the dominant suffix of Apple's IPOD mark and incorporate Apple's POD mark in their entirety."

"In light of the nature of Procreate Inc.'s goods, there can be little doubt that Apple's IPOD mark is known to your client and that the 'POD' component of Procreate's marks is a direct reference to the IPOD mark," the company added.



The letter goes on to explain that the design of the website and product designs themselves are "reminiscent" of Apple's own brands, and that the Podium's design is similar to the iMac.

Apple is offering Procreate a period of time to phase out the use of the marks and will not seek further action if the company complies. The iPod maker requests a response by March 25.

The recipient of the letter, attorney Paul Hansra, cited the ongoing nature of legal matters in declining comment, adding that he is "not at liberty to discuss" his client's "legal strategy."

An attorney for Apple has not responded to AppleInsider requests.

[ View this article at AppleInsider.com ]

[macFanDave]

Oops!

Maybe my MP3 players for dogs, the iPawed, isn't such a good idea after all.

[SpamSandwich]

I found prior art!

[farshad]

Im buying one

[CU10]

Going a little too far IMHO. Podium is a legitimate word in the english dictionary, but what the heck do I know about trademarks.

Hey, whatever happened to Apple Records and Cisco's iPhone?

[JeffDM]

This happened a few years ago with "iPed", the guy that makes them just calls them Ped, it sounds like a similar kind of product as the Podium.

[fishstick_kitty]

gimme a break...this is going too far...why would apple give a rats ass about this?

[bloggerblog]

wow! the Podium looks cool.

btw: Apple needs to chill a little.

[teckstud]

I remember back in the early days when iPodlounge.com had to change their name to iLounge.com - not that Apple is controlling, mind you.

[cincytee]

OK, Flypod, maybe. It at least *sounds* like iPod. However, unless they're marketing the stand as the PODD-ium instead of POE-dium, no way. Even if they were, a podium is a stand, and that's what they make. Guess we'll have to wait for the iDais instead....

[Jimzip]

Yeah bad call, Apple.

This just sounds silly. Pick your battles no? :/

Jimzip

[iReality85]

Apple will absolutely lose on the "Podium" issue. Its an actual word, and the use of it makes sense given the type of product. What is Apple's problem? Seriously.

Edit: I do notice that Procreate is using the "Apple font" in its labeling. Just change the font style, and Apple really has no case against them.

[teckstud]

Refresh my memory- when did Apple invent the word "pod"?

[nagromme]

The industrial design of the tapered foot and hole are copies (probably legal) of Apple's industrial design. But the name "podium" (meaning "stand") for... wait for it... a STAND? I can't see any reason to object.

Let's hope the Podium gets some press and mindshare out of this at least!

[thought]

Originally Posted by JeffDM

This happened a few years ago with "iPed", the guy that makes them just calls them Ped, it sounds like a similar kind of product as the Podium.

That is correct Jeff. In my experience they will have to change too, this was the first thing I thought when this hit the market. It was only a matter of time, actually a little quicker than our C&D.

RIP PED http://thoughtout.biz/PED

[soundsgoodtome]

Originally Posted by iReality85

Apple will absolutely lose on the "Podium" issue. Its an actual word, and the use of it makes sense given the type of product. What is Apple's problem? Seriously.

Edit: I do notice that Procreate is using the "Apple font" in its labeling. Just change the font style, and Apple really has no case against them.

I came here to say the same thing, but you beat me to it.

"Podium" is an English word that means "platform," and it's pronounced with a long "o." It's merely a coincidence that it contains the letters "pod." In fact, it took me a moment to realize what in fact Apple's problem was with that product. Finally it hit me: "POD-ium." But the word "podium" is not pronounced that way. And it's not like they called the product "iPodium," which would obviously raise more eyebrows, regardless of the long "o."

So, in this instance, I don't think Apple has a leg to stand on. (Sorry.) :-)

[crees!]

Thanks for bringing this little company to my attention. That stand looks sweet. Gotta get one.

[Leonard]

Originally Posted by iReality85

Apple will absolutely lose on the "Podium" issue. Its an actual word, and the use of it makes sense given the type of product. What is Apple's problem? Seriously.

Edit: I do notice that Procreate is using the "Apple font" in its labeling. Just change the font style, and Apple really has no case against them.

I don't think Apple legal really cares if they lose. All they care is that they are "trying" to protect they're trademark. Part of winning when you need to, is to show that you fought for your trademark diligently. Needless to say, they sometimes need to go after ones that they will lose, just to to show they fought for they're trademark in cases where they really need to win. Apple needs to show they are actively protecting their trademark, even in the cases where it doesn't make sense.

Ie. In future trademark cases where Apple has a chance of winning, Apple can use these cases to show that they actively protected their trademark, even if they didn't win.

[gmcalpin]

I don't see why Podium would need to change its name, but they ARE clearly aping Apple's product design and marketing design in such a way that could lead people to think the product was made by Apple.

Considering Apple refers to the "'POD' component of Procreate's marks (being) a direct reference to the IPOD mark," that instance seems more about the design of the logo and how they're marketing it, not about the use of the word "pod."

Originally Posted by Leonard

I don't think Apple legal really cares if they lose. All they care is that they are "trying" to protect they're trademark.

Exactly. Although they can't "lose" right now, because they're not suing anybody at this point. It's just a cease-and-desist.

[daniel84]

Originally Posted by soundsgoodtome

"It's merely a coincidence that it contains the letters "pod."

I would say it's more of a clever pun than a coincidence. But I agree, this is going a bit far on Apple's part.

[bloggerblog]

Originally Posted by teckstud

Refresh my memory- when did Apple invent the word "pod"?

haha... exactly!

[DavidW]

Originally Posted by teckstud

Refresh my memory- when did Apple invent the word "pod"?

We're talking "trademark" not copyright. Did Burger King "invent" the word "Whopper". Did Apple Records invent the word "Apple" Did Ford invent the word "Mustang". Yet all of those are "trademarks". You can use any word as a "Trademark" for your product or company name, so long as that word is not a word that would ordinarily describe that product. Or in other words, a "generic" word for that product.

You can not trademark the word "Apple" for the name of your apple fruit stand. This would prevent any one with an apple fruit stand from using the word "apple" to describe it. The word "apple" is generic when referring to an apple fruit stand. However, you can name your music company "Apple". Or your computer company "Apple". As "apple' is not a word you would associate with (generic for) music or computers. (At least not at the time they were trademarked.)

Thus Burger king can trademark "Whopper" as a name for their hamburgers. Ford can trademark "Mustang" as a name for an auto. Apple Records can use the word "Apple" for their music company. And MS can trademark "Windows" for their OS (though there is or was a legal battle over the word "windows" as being generic for an OS before MS trademarked it.)

[WIJG]

[JeffDM]

Originally Posted by DavidW

We're talking "trademark" not copyright. Did Burger King "invent" the word "Whopper". Did Apple Records invent the word "Apple" Did Ford invent the word "Mustang". Yet all of those are "trademarks". You can use any word as a "Trademark" for your product or company name, so long as that word is not a word that would ordinarily describe that product. Or in other words, a "generic" word for that product.

You can not trademark the word "Apple" for the name of your apple fruit stand. This would prevent any one with an apple fruit stand from using the word "apple" to describe it. The word "apple" is generic when referring to an apple fruit stand. However, you can name your music company "Apple". Or your computer company "Apple". As "apple' is not a word you would associate with (generic for) music or computers. (At least not at the time they were trademarked.)

Thus Burger king can trademark "Whopper" as a name for their hamburgers. Ford can trademark "Mustang" as a name for an auto. Apple Records can use the word "Apple" for their music company. And MS can trademark "Windows" for their OS (though there is or was a legal battle over the word "windows" as being generic for an OS before MS trademarked it.)

People confuse trademarks, patent and copyright a lot. The basic concepts behind them are not complicated, though in practice, they can be a very complicated affair.

Trademarks are registered by category of product and service, and having a registration that uses a word doesn't mean that any other use of the word can't be legitimately trademarked or used. That is why, despite Monster Cable's legal blustering, Monster job search company is still legal. Also, there is a candy called "Whoppers", even though a fast food company uses a similar word for their burgers. There is a restaurant chain called Applebee's. I did a search on USPTO's TESS and there are 2643 items in their trademark registration list that covers using the word Apple as part of the trademark. There are 3003 entries where "pod" is concerned. I would provide a direct link to the TESS search engine, but access seems to be limited to sessions.

That said, in this case, the case may have good merit.

[DavidW]

Originally Posted by CU10

Going a little too far IMHO. Podium is a legitimate word in the english dictionary, but what the heck do I know about trademarks.

Hey, whatever happened to Apple Records and Cisco's iPhone?

Here's the funny thing about trademark laws. You can't get a trademark for a name of your product using a word (or words) that is a "generic" term for that product. Another words, you can't trademark "Apple" for a product that is an apple. Or "hamburger" for a cooked beef patty. Or "Orange Juice" or "OJ" for juice from an orange. So this company may not be able to trademark "Podium" for their iPod stand as the word "podium" may be a "generic" term for what the product actually is. A stand.

Apple Inc now owns the "Apple Records" trademark. They paid around (rumored) 100 million dollars to Apple Records for the exclusive rights to their "Apple" trademark. Apple Inc. also agreed to license back the "Apple Records" trademark" to Apple records for as long as Apple Records exist. But Apple Records can not sell their business with the "Apple Records" trademark. Apple can now do what they want in the music business, with the name "Apple".

Trademark laws states that you must actually make and market a product, using a trademark, within 8 years (I think?) of registering (and renewing) that trademark. Or you can lose it. Cisco failed to do that. They did not market any product using the "Iphone" trademark for over eight years after aquiring it. They actually acquired the trademark from some other company that they bought out. The company they bought out made VOIP phones and registered the trademark "Iphone". (Not sure if they ever made a product using that trademark.) Anyway, Apple knew this and kept the name "iPhone" secret till the very end. When it was known that Apple was naming their product "iPhone", Cisco protested. Apple at first agreed to meet with Cisco to reach an agreement for the use of the "iPhone" trademark. This bought enough time (about 6 months) for Apple to wait it out for the 8 years Cisco had to put into market a product using their "Iphone" trademark. When Apple broke off the meetings (right after the MacWorld that featured the "iPhone"), it was too late for Cisoc to market a product with their "Iphone" trademark. Cisco tried to prove that they had an "Iphone" product on the market by using Photoshop to create a picture of a box with an "Iphone" logo in it. That didn't work. Cisco lost the trademark and Apple picked it up.

[teckstud]

Originally Posted by DavidW

We're talking "trademark" not copyright. Did Burger King "invent" the word "Whopper". Did Apple Records invent the word "Apple" Did Ford invent the word "Mustang". Yet all of those are "trademarks". You can use any word as a "Trademark" for your product or company name, so long as that word is not a word that would ordinarily describe that product. Or in other words, a "generic" word for that product.

You can not trademark the word "Apple" for the name of your apple fruit stand. This would prevent any one with an apple fruit stand from using the word "apple" to describe it. The word "apple" is generic when referring to an apple fruit stand. However, you can name your music company "Apple". Or your computer company "Apple". As "apple' is not a word you would associate with (generic for) music or computers. (At least not at the time they were trademarked.)

Thus Burger king can trademark "Whopper" as a name for their hamburgers. Ford can trademark "Mustang" as a name for an auto. Apple Records can use the word "Apple" for their music company. And MS can trademark "Windows" for their OS (though there is or was a legal battle over the word "windows" as being generic for an OS before MS trademarked it.)

Yet another member who can't read.
DID I SAY IPOD?
YEESH.

[DavidW]

Originally Posted by teckstud

Yet another member who can't read. DID I SAY IPOD?
YEESH.

And did I mention "iPod" in my reply. I just stated that you are wrong in assuming that just because the word already exist in the English language, that it can't be trademarked. You don't have to "invent" a word to get a trademark on it. (Though there are rules to getting a trademark.) Nor had to "invented" the word used in your trademark in order to protect it.

In Trademark law "similarity" counts. You can't name your hamburger a "Big Mak" or "Big Mack". Or even a "teckstud Mac". Because people may confuse that with MacDonald's "Big Mac". When infringing upon some else's tradmark it only need to be similar enough to cause a confusion. So yes, the word "pod" (or letters P-O-D) may cause a confusion with some consumers who might confuse it with Apple "iPod" brand name. Specially if that product is in the same market catagory as the "iPod". (A court or judge may have to decide that.) Having not "invented" the word "pod" has nothing to do enforcing trademark violations.

So your original comment is of no use when referring to this article. Except to show off how little you know about basic trademark laws.

[teckstud]

Originally Posted by DavidW

And did I mention "iPod" in my reply. I just stated that you are wrong in assuming that just because the word already exist in the English language, that it can't be trademarked. You don't have to "invent" a word to get a trademark on it. (Though there are rules to getting a trademark.) Nor had to "invented" the word used in your trademark in order to protect it.

In Trademark law "similarity" counts. You can't name your hamburger a "Big Mak" or "Big Mack". Or even a "teckstud Mac". Because people may confuse that with MacDonald's "Big Mac". When infringing upon some else's tradmark it only need to be similar enough to cause a confusion. So yes, the word "pod" (or letters P-O-D) may cause a confusion with some consumers who might confuse it with Apple "iPod" brand name. Specially if that product is in the same market catagory as the "iPod". (A court or judge may have to decide that.) Having not "invented" the word "pod" has nothing to do enforcing trademark violations.

So your original comment is of no use when referring to this article. Except to show off how little you know about basic trademark laws.

You mentioned items that have that exact same name:
WHOPPER IS A WHOPPER IS A WOPPER.
BIG MAC IS A BIG MAC IS A BIG MAC.

POD IS NOT AN IPOD.

Your logic is as foolish as your posts are long.
Next.

[piot]

Originally Posted by teckstud

Your logic is as foolish as your posts are long.

Hey stud, wanna borrow my spade?

[teckstud]

Originally Posted by piot

Hey stud, wanna borrow my spade?

[gmcalpin]

Originally Posted by teckstud

Your logic is as foolish as your posts are long.
Next.

From http://cyber.law.harvard.edu/metasch.../domain/tm.htm —

A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another.… Under some circumstances, trademark protection can extend beyond words, symbols, and phrases to include other aspects of a product, such as its color or its packaging. (emphasis added)

The issue is not simply the use of the word "pod"; it's the combination of the trade dress (similar website design, product design, and marketing design); the fact that the "POD" in the Podium logo lifts its choice of typeface and type treatment DIRECTLY from the iPod logo; and the fact that it's an accessory to the iPod Touch/iPhone and as such within the same industry AS the "iPod."

Taken together, all of that could reasonably be argued to create the erroneous impression that the Podium is created by Apple, not some company most of us have never heard of before — which is the heart of what trademark law is meant to address.

[teckstud]

Originally Posted by gmcalpin

From http://cyber.law.harvard.edu/metasch.../domain/tm.htm —

The issue is not simply the use of the word "pod"; it's the combination of the trade dress (similar website design, product design, and marketing design); the fact that the "POD" in the Podium logo lifts its choice of typeface and type treatment DIRECTLY from the iPod logo; and the fact that it's an accessory to the iPod Touch/iPhone and as such within the same industry AS the "iPod."

Taken together, all of that could reasonably be argued to create the erroneous impression that the Podium is created by Apple, not some company most of us have never heard of before — which is the heart of what trademark law is meant to address.

Now that makes total sense but may I suggest you direct next time to the misguided poster, DavidW, who keeps insisting that it's based on the name and word.
On name alone his logic fails - it is not called FliPod nor iPodium. Though his posts ramble on and on as if he needs iModium.
Thank you.

[Ireland]

Originally Posted by gmcalpin

The issue is not simply the use of the word "pod"; it's the combination of the trade dress (similar website design, product design, and marketing design)

Huh? Show me the similar website? Apple have now Trademarked the color white is it? Apple need to get of their high horse and get on with some innovation and Mac touch, and forget about this crap, which clearly doesn't infringe on its iPod Trademark.

[gmcalpin]

Originally Posted by Ireland

Huh? Show me the similar website?

Apple says "the design of the website and product designs themselves are 'reminiscent' of Apple's own brands" in the article. I didn't say I agreed with it, so take a deep breath and act like less of a douchebag now, okay?

Only judges (or juries) can decide if something is trademark infringement or not. Neither of us are judges. So no, this is not "clearly" anything.

And Apple is a company — singular — so it's "has," "needs" and "its."

[Ireland]

Originally Posted by gmcalpin

Apple says "the design of the website and product designs themselves are 'reminiscent' of Apple's own brands" in the article. I didn't say I agreed with it, so take a deep breath and act like less of a douchebag now, okay?

I merely asked you a question. Untangle those knickers.

[Ireland]

Originally Posted by gmcalpin

And Apple is a company — singular — so it's "has," "needs" and "its."

So you're American then?

[gmcalpin]

It's not because I'm American; it's because I think subject-verb agreement trumps whatever the rationale is that compels so many people in both the UK and the US to ignore it.

But if you disagree on the point, at least be consistent about it:

Originally Posted by Ireland

which clearly doesn't infringe on its iPod Trademark.

And, consider my knickers untangled, but I didn't see how "Huh? Show me the similar website? Apple have now trademarked the color white, is it?" could be read as "merely" asking a question.

[tonton]

Originally Posted by gmcalpin

It's not because I'm American; it's because I think subject-verb agreement trumps whatever the rationale is that compels so many people in both the UK and the US to ignore it.

You seem to be ignorant that in the UK and some other parts of the world, a company always takes the plural. The rationale is that a company is a plurality of the individuals who define it. "Apple are..." is as correct as, "take the lift to the second floor," "put it in the boot of the car," or "I went to a pub and got so pissed last night." Stop living in your Amero-centric world.

[gmcalpin]

Originally Posted by tonton

a company always takes the plural.

That is absolutely wrong.

The thinking is that depending on context, a company name can be used as a plural or singular: when what is being said applies to the individual members of the group, a plural verb is used; when what is said applies to the whole, a singular is used.

I disagree with that rationale, because I feel that singular company names* should always be treated as singular, and that the plural usages — while not necessarily incorrect — are simply clunky. In my opinion better more appropriate way to say "Apple are in agreement [blah blah]" would be "Apple's employees are...." And yes, it's an opinion, not a fact.

* as opposed to "the Beatles," as an example of a plural company/group name, because each member is "a Beatle."

More importantly, whatever your opinion on the matter, you need to be consistent about it.

For the second time, it has nothing to do with my being American, because many Americans also use company names that way (and I also think they're wrong).

Also, I hardly have an "Amero-centric" view of the world. Do you even know what race I am? Where I was raised? What country my parents were born in? No, you don't, and my last name isn't going to give you any hints to that, either. Stop acting like a presumptuous ass just because you can hide behind a keyboard.

[Ireland]

Originally Posted by gmcalpin

It's not because I'm American; it's because I think subject-verb agreement trumps whatever the rationale is that compels so many people in both the UK and the US to ignore it.

But if you disagree on the point, at least be consistent about it:

And, consider my knickers untangled, but I didn't see how "Huh? Show me the similar website? Apple have now trademarked the color white, is it?" could be read as "merely" asking a question.

I was surprised, and I asked a question.