A representative ofPodvertiser told TechWeb Thursday that it is among the companies to receive cease and desist orders from Apple. While the company's attorney looks whether advertising for podcasts trespass onto Apple's Pod territory, lawyers are debating whether the Davids or the Goliath would succeed in court.
Attorney Helen Minsker, of Banner and Witcoff, said in an interview this week that it makes sense for Apple to protect its investment but it may work against the company that its mark has common English language uses. She said that the uniqueness and strength of the mark, as well as whether it appears someone is trying to copy Apple, would be key factors in determining whether anyone has infringed on the trademark.
She said she is not surprised that the company has gone after a covering for mp3 players because trademark cases also consider whether a new product can be an accessory for an existing one that is already covered by the mark.
"It's not a foregone conclusion to me that Apple is going to succeed in all of these cases," she said. "I think this will be a really interesting case, as an example."
Intellectual property litigation attorney Allonn Levy, of Hopkins & Carley in San Jose, Calif., said owners of popular marks "must police the marketplace to ensure that they do not allow the strength of their mark to be eroded by others." In a statement release Thursday, Levy said that if Apple does not target other companies using the word "pod," it risks finding out later that it acquiesced to a particular use of their mark. "The question of whether or not various uses of "pod" actually amount to trademark infringement is a more complicated one," he said. "At the end of the day, the focus is on whether another company's use of 'pod' is likely to cause confusion among customers. For example, a competing digital music player with a simple interface using the name P-Pod is likely to be an infringing use because a customer may mistakenly assume that Apple makes both iPods and P-Pods. On the other hand, a children's caricature of an animated pea used in children's cartoons and also named P-Pod is not likely to cause such confusion."
Nate A. Garhart, intellectual property attorney and partner with Coblentz, Patch, Duffy & Bass LLP in San Francisco, said Apple has registered the mark for use related to portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio and other data files, and computer software for the same. The company has applied for registration of the mark in connection with other goods and services, he said.
"Trademark law gives Apple the right to keep others from using the same or similar marks for the same or similar and/or related goods and services," Garhart said in an e-mailed statement. "But where the mark is different and the services are different, the analysis is not as simple."
Garhart said that one company under fire, TightPod, could argue that its mark is different in sight, sound, and meaning from Apple's mark and that its goods are unrelated to those covered by Apple's mark. Though the dominant portion of the mark includes the word "pod," the "i" in iPod tells consumers the product is related to the Internet, he said. Since Apple repeatedly uses the "i" prefix with other terms like "iMac" and "iTunes," TightPod could argue that the term "Tight" is important and consumers are not likely to confuse the company's products with those offered by Apple, he said.
However, Minsker pointed out that Apple has expanded its "pod" territory to include applications for other uses of the mark for things like StorePods and iPod socks.
Attorney Stefan Kirchanski said Apple's latest campaign to protect its trademark appears to be part of a long-running strategy.
"Apple cracks down on people for public relations problems and they're kind of aggressive legally," he said during an interview this week. "It seems like it's kind of a gray area whether it helps or hurts them."