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Journal of Legal Studies Education

Volume 28, Issue 2, 331355, Summer/Fall 2011

I Phone, You Phone, We All Phone

with iPhone: Trademark Law and
Ethics from an International and
Domestic Perspective
Tammy W. Cowartn and Wade M. Chumneynn
If there is something good in the world then we copy with pride.1

In todays Internet-based and global business environment, the legal issues
companies face will often involve issues of intellectual property. In fact,
intellectual property-based businesses drive more economic growth in the
United States than any other single sector.2 Virtually every product we
purchase is protected by a trademark, a patent, and/or copyrights. Thus,
basic concepts of intellectual property are a natural component in any
business law or legal environment course.3

Assistant Professor of Business Law, University of Texas at Tyler; B.S., Texas A&M
University; J.D., Texas Tech University School of Law.

Cecil B. Day Assistant Professor of Business Ethics and Law, Georgia Institute of Technology; B.A., Davidson College; M.S. (Information Systems), Dakota State University; J.D., University of Virginia School of Law.

Gordan Kelly, Nokias iPhone: We Copied Apple Says Company VP (Aug. 30, 2007), http:// (quoting Anssi Vanjoki, Nokia VP & General Manager of Multimedia,
on his companys plans to release new phone similar to the iPhone in 2008).

Are You a Small Business?, Stop Fakes.Gov,

print.html (last visited Nov. 1, 2010).

Robert C. Bird, This Buds for You: Understanding International Intellectual Property Law through
the Ongoing Dispute over the Budweiser Trademark, 23 J. LEGAL STUD. EDUC. 53, 84 (2006).

r 2011 The Authors

Journal of Legal Studies Education r 2011 Academy of Legal Studies in Business



Vol. 28 / The Journal of Legal Studies Education

Case studies are often used in business law classes, utilizing real
or hypothetical fact patterns to help students identify and analyze real
business problems.4 One can find numerous case studies for use in
the classroom involving intellectual property issues.5 Cases can enhance
students analytical and reasoning skills6 as they are realistic scenarios
that bridge the gap between theory and fact.7 Students are most likely
to be engaged by a case and to put forth the effort required for its proper
analysis if they appreciate its relevance and timeliness.
With this in mind, what could be better than pulling an iPhone
out of your pocket and after demonstrating a few of its more captivating
features, proceeding to launch into a case study of the legal, ethical,
and business decisions required to put this phone in your hands?
Students are already very familiar with the iPhone and Apple,
Inc. (Apple), so the legal concepts are likely to resonate with them.8
This case is designed to expose students to the Lanham Act, U.S.
Patent & Trademark Office (USPTO), and the registration system in
the United States, while also demonstrating the global issues involving
trademark registration and infringement. The following scenario
demonstrates how a product name, or trademark, can become a
major issue for companies. Part II.A of this case study presents the
facts of the dispute, and Part II.B contains questions for discussion, both
of which could be distributed to students in a classroom setting. Part III
contains a Teaching Note with background information in basic trademark
law concepts and guidance to use the case in a business law or business
ethics class.

See, e.g., Jeffrey Pittman, Consumer Electronics v. Jones & Diamond: A Hypothetical Case Study, 29
J. LEGAL STUD. EDUC. 117 (2002).

See, e.g., Bird, supra note 3, at 1; Janell M. Kurtz & Drew Schuler, Competitive Intelligence
at Procter & Gamble: A Case Study in Trade Secrets, 21 J. LEGAL STUD. EDUC. 109 (2003); Margo E.
K. Reder, Case Study of Apple, Inc. for Business Law Students: How Apples Business
Model Controls Digital Content Through Legal and Technological Means, 26 J. LEGAL STUD. EDUC.
185 (2009).

Bird, supra note 3, at 1.

Pittman, supra note 4, at 118.

See Reder, supra note 5, at 186.

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A. Facts
On January 9, 2007, Apple, Inc. introduced its newest product, the
iPhone, in one of the most anticipated product launches in recent
memory. Steve Jobs, CEO of Apple, Inc. stated,
Today, were introducing three revolutionary products . . .. The first one is a
widescreen iPod with touch controls. The second is a revolutionary mobile
phone. And the third is a breakthrough Internet communications device. . . .
An iPod, a phone, and an Internet communicator . . . These are not three
separate devices, this is one device, and we are calling it iPhone.9

He made the pronouncement at the Macworld Conference & Expo to

cheers of Apple enthusiasts. But behind the scenes, a firestorm had been
brewing over the iPhone trademark well in advance of Apples January
The story actually began years earlier, when InfoGear Technology
Corporation (InfoGear)10 filed to register the iPhone mark with the USPTO in March of 1996.11 InfoGear began selling its iPhone, which combined a telephone and dialup Internet portal, in 1997. In 2000, Cisco
Systems, Inc. (Cisco)12 acquired InfoGear, thereby securing the U.S. trademark in the iPhone mark.13 The original iPhone trademark registration

Steve Jobs, Macworld Conference and Expo (Jan. 9, 2007), available at http://www.iphone


InfoGear Technology Corporation, formed in 1995, primarily produced software and integrated circuits for Internet appliances. It was a privately-held company based in Redwood
City, California. Infogear Technology Corporation, BLOOMBERG BUSINESSWEEK, http://investing. (last
visited Dec. 21, 2010).

IPHONE, Registration No. 2,293,011.


Cisco Systems, Inc. sells Internet-protocol products and other products related to the communications and information technology industry, such as adapters, gateways, modems, software products, and IP (Internet-protocol) phones. It competes worldwide with other product
providers, including Apple. Cisco Systems, Inc., BLOOMBERG BUSINESSWEEK, http://investing. (last visited Dec.
22, 2010).
Scott Martin, Cisco files iPhone Suit, RED HERRING (Jan. 9, 2007),


Vol. 28 / The Journal of Legal Studies Education

covered integrated telephone communication with computer networks.14

Cisco then used the iPhone mark after its acquisition of InfoGear for its
Voice over Internet Protocol (VoIP) telephones. In 2001, Apple initiated
conversations with Cisco for permission to use the iPhone mark.15
Although negotiations ensued through 2006, Cisco never agreed to
release its rights to the mark.
On September 22, 2006, Apple filed a Certificate of Formation in
Delaware for Ocean Telecom Services, LLC (Ocean Telecom).16 On
September 26, Ocean Telecom filed an Intent to Use application with
the USPTO for the iPhone mark, thereby requesting authority to use
the mark.17 Ocean Telecoms application claimed a prior right to the
iPhone mark based on trademark filing number 37090 filed in Trinidad
and Tobago on March 27, 2006. Moreover, on September 19, 2006, Apple
filed an application to register the iPhone trademark in Australia. Apples
application was similar to Ocean Telecoms and also claimed a prior right to
the iPhone mark based on the same trademark filing in Trinidad and Tobago.
This type of priority filing is allowed under the provisions of the
Madrid Protocol Implementation Act (Madrid Protocol).18 The Madrid
Protocol allows for a trademark holder in another country to file an international registration with the World Intellectual Property Organization
(WIPO). The trademark owner can then file for an Extension of Protection
of the trademark with the USPTO, which has the same effect and validity
as filing an initial registration with the USPTO.19 More interestingly, a
provision of the act provides that an international registrant shall be

IPHONE, supra note 11.


John Markoff, Cisco, Claiming Ownership of iPhone, Sues Apple, N.Y. TIMES, Jan. 10, 2007, at
C13, available at

Many first learned that Apple wholly owned Ocean Telecom after the dispute with Cisco
resolved and Ocean Telecom merged into Apple. Ocean Telecom Services, LLC Certificate of
Merger (Oct. 4, 2007) (on file with author).


An Intent to Use application must include a sworn statement that the applicant has a bona
fide intention to use the mark in commerce. The applicant must then begin actual use of the
mark in commerce before the USPTO will register the mark. See United States Patent and
Trademark Office, What Must the Application Include?,
appcontent.jsp (last visited Oct. 9, 2010).

Madrid Protocol Implementation Act, 15 U.S.C. 1141 (2002).


15 U.S.C. 1141 (i) (2002).

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entitled to claim a date of priority . . . if . . . (2) the date of international

registration . . . is not later than 6 months after the date of the first regular
national filing.20 This provision allowed Apple and Ocean Telecom to
register the iPhone mark in Australia and Trinidad and Tobago, respectively, and then file for Extension of Protection in the United States. The
effective date of trademark protection in the United States, however, was
the date the original applications were filed in Australia and Trinidad and
Tobago, not when the registration was filed in the United States.
On December 18, 2006, Cisco launched its new iPhone product.21
But Ciscos iPhone launch involved some complicating factors. Because
Cisco had acquired the trademark from InfoGear in 2000, Cisco was
required to file a Declaration of Use in the sixth year of the registration
term (in 2006), stating that the owner was still using the mark.22 When
Cisco filed the Declaration of Use, it allegedly sent in a picture of a cordless
Internet phone with an iPhone sticker affixed to the box.23 Cisco claimed
to have been shipping iPhone products since early 2006 when it acquired
Linksys and that the December 2006 line of products was an extension of
the earlier products.24
To complicate matters for Cisco, at least four other companies, including two in the United Staes, were using the iPhone mark to market
various products prior to Ciscos iPhone product launch.25 Surecom, a
Texas company, used it for a USB device.26 Vocal Tech, in Israel, used it for
a software product.27 Orate Telecommunications, located in Britain, used
it for a VoIP phone.28 The fourth use of the mark was for a line of hotel


15 U.S.C. 1141 (g) (2002).


Martin, supra note 13.


Paul Miller, Cisco Might Have Lost iPhone Trademark in 06 (Jan. 13, 2007), http://www.engad


Neeraj Saxena, Apple to Launch in June, May Alter Name. ECON. TIMES, Jan. 16, 2007, available
1230622.cms Ciscos Declaration of Use (filed May 4, 2006) (on file with authors).



Holman Jenkins, Business World: iFoodfight, WALL ST. J., Jan. 17, 2007, at A18.








Vol. 28 / The Journal of Legal Studies Education

phones from Teledex, located in California.29 Further, the URL, http:// was utilized by a number of third-party entities from
1999 through 2007.30 The domain name had been in existence since
As mentioned earlier, on January 9, 2007, Steve Jobs announced the
production of the Apple iPhone at the Macworld Conference and Expo.32
Although Apples iPhone shared the Cisco products name, there were
numerous differences in the actual products. Ciscos phone connected directly to online voice products such as Skype and Yahoo! Messenger with
Voice and allowed access to other media on the Internet.33 There were
several models of the phone to connect with various messenger clients, and
at least one of the products could be used as a landline as well.34
This contrasted with the phone produced by Apple. Apples product is a
GSM (Global System for Mobile Communications) cellular telephone with
Bluetooth and Wi-Fi.35 It combines three products in oneFa cellular phone, a
widescreen iPod, and an Internet device with HTML e-mail and a desktopclass Web browser.36 Obviously, both products are phones with varying degrees
of features, though one is VoIP enabled and the other is cellular in nature.
On January 10, 2007, one day after the Apple iPhone introduction,
Cisco filed a lawsuit against Apple for trademark infringement.37 After the



Martin Schwimmer, More Than Meets the iPhone, WORLD TRADEMARK REV., Mar.-Apr. 2007, at
Anick Jesdanun, Speculators Grab iPhone Domain Names, ASSOC. PRESS FIN. WIRE (June 29,
2007), available at

Markoff, supra note 15.


Apple Insider, Cisco Introduces iPhone Family of Devices (Dec. 18, 2006),



Apple Insider, News Flash: Apple iPhone Receives FCC Approval (May 17, 2007), http://www.


Apple, iPhone 4 Technical Specifications, (last visited

Oct. 10, 2010).


Markoff, supra note 15. See Complaint for Trademark Infringement, Unfair Competition,
False Description, and Injury to Business Reputation, Cisco Systems, Inc. v. Apple, Inc., No.
3:07-cv-00198-MHP (N.D. Cal. Jan. 10, 2007) available at

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announcement of the lawsuit by Cisco, Apple chose the tack most often
advised in litigation strategiesFit remained silent, with no public announcement, blog entry, or statement.38 Cisco, on the other hand, communicated its side of the story with the public via its general counsels
blog.39 In pertinent part, that blog entry stated:
Fundamentally we wanted an open approach. We hoped our products could
interoperate in the future. In our view, the network provides the basis to make
this happenFit provides the foundation of innovation that allows converged
devices to deliver the services that consumers want. Our goal was to take that to
the next level by facilitating collaboration with Apple. And we wanted to make
sure to differentiate the brands in a way that could work for both companies
and not confuse people, since our products combine both web access and voice
telephony. Thats it. Openness and clarity.40

Cisco appeared to be attempting to position itself as looking to the

future of telecommunications; the protection of the brand was about the
possibility of all phones (home, work, or cell) being able to work together in
the future.41 Talks on interoperability apparently began in April of 2006,
when Apple and Cisco began researching possibilities of its products working together.42 Cisco argued that it did not want money for the license to
use the name; rather, it simply wanted the Apple phone to work with Cisco
Exhibit A shows a timeline of the relevant events leading up to and
including the litigation between Apple and Cisco.

Apple filed several stipulations allowing it additional time to file a response, which allowed
Apple to negotiate with Cisco without ever filing a formal answer to the complaint. See Stipulation Regarding Time to Move or Plead in Response to the Complaint, Cisco Systems, Inc. v.
Apple, Inc., No. 3:07-cv-00198-MHP (N.D. Cal. Feb. 1, 2007) (on file with authors).


Schwimmer, supra note 30.


Mark Chandler, Update on Ciscos iPhone Trademark (Jan. 10, 2007),


Ken Mingin, Cisco Sues Apple over iPhone Trademark, COMPUTER WORLD (Jan. 10, 2007),, command=view articleBasic&articleId=

Apple, Cisco Try to Make iPhones Compatible, BLOOMBERG NEWS (Apr. 17, 2007), http://seattlepi.

Victoria Shannon, Cisco Systems Chief Executive Calls Apple Lawsuit a Minor Skirmish, INTL
HERALD TRIB., Jan. 27, 2007,


Vol. 28 / The Journal of Legal Studies Education


March 1996
March 27, 2006
May 4, 2006
September 19, 2006
September 22, 2006
September 26, 2006
December 18, 2006
January 9, 2007
January 10, 2007
February 21, 2007
July, 2008
FebruaryMay, 2010

InfoGear trademarks iPhone

Cisco acquires InfoGear
Apple negotiates with Cisco through 2006 trying to acquire iPhone
Ocean Telecom iPhone trademark filed in Trinidad & Tobago
Cisco files the Declaration of Use for iPhone mark in this 6th year
Apple files Intent to Use iPhone mark in Australia, based on 3/27/06
Certificate of Formation for Ocean Telecom filed in Delaware
Ocean Telecom files Intent to Use application with USPTO for
iPhone mark based on 3/27/06 filing
Cisco launches iPhone device
Apple launches iPhone device at Macworld Conference & Expo
Cisco files lawsuit against Apple
Cisco and Apple settle lawsuit
Apples iPhone 2.0 software offers an option for communicating
with Cisco security appliances
Apple expands its iPhone trademark protection by filing for protection of Made for iPhone and expanding the trademark to include handheld electronic games.

B. Questions for Discussion

Having read the foregoing facts, students should be directed to some basic
resources for more information on trademark law.44 Using the facts above,
the information in Exhibit A, and the resources available, students could be
asked to consider the following discussion questions.
1. Is the trademark iPhone distinctive enough to justify protection?
Why or why not? Explain under what category of trademarks this mark
would be classified.
2. Which company, Cisco or Apple, properly acquired the iPhone trademark first? Reference facts from the case to justify your response.
3. Did Cisco act properly in protecting the iPhone trademark after it
acquired the trademark in 2000? Why or why not?


Instructors might direct students to the resources found at U.S. Patent & Trademark Office,; Lanham Act, 15 U.S.C. 11141127; Madrid Protocol Implementation Act, 15 U.S.C. 1141 et seq.; and World Intellectual Property Organization, http://

2011 / I Phone, You Phone, We All Phone with iPhone


4. Articulate an argument that Apple could make that it owns a family of

marks for any electronic or communication product which begins with
the i prefix. Is it persuasive? Why or why not?
5. How is this dispute complicated by international trademark treaties
such as the Paris Convention for the Protection of Industrial Property
(Paris Convention) and the Madrid Protocol? What are the policy issues
at stake when the United States adopts treaties which may conflict with
the actions of U.S. companies?
6. What are the ethical issues at stake here? Did either company act unethically in attempting to gain control of the iPhone trademark? Justify
your conclusion.
7. In your opinion, which company should be granted the exclusive use of
the iPhone trademark, and why?


As stated earlier, case studies can enhance student engagement in business
law classes45 and allow instructors to rely less on lectures for instruction.46
This case is appropriate for use in a business law, legal environment, or
business ethics class at the undergraduate or graduate level. The case describes the national and international issues and implications of securing
and defending trademarks. An instructor could focus only on the Lanham
Act trademark issues for a single undergraduate class. In addition, because
the global trademark registration system was used to challenge the U.S.
registration system in this case, the instructor could include issues involving the Paris Convention, WIPO, and Madrid Protocol. These issues may
be particularly appropriate for an MBA-level course because of the more
complex nature of the course and deeper coverage of the material. Students can be encouraged to develop an understanding of the international
implications of intellectual property issues as well as some ethical issues
involving the manner in which companies operate within national and
international laws.


Pittman, supra note 4.


Darren Charters et al., Using the Case Study Approach to Challenge Students in an Introductory
Business Law Course, 26 J. LEGAL STUD. EDUC. 47, 52 (2009).


Vol. 28 / The Journal of Legal Studies Education

The case is flexible and could be used as an individual assignment

with in-class discussion or as a group assignment followed by an in-class
presentation. The instructor could also use role playing, assigning student
groups to assume the role of Apple, Cisco, or other stakeholders as an
ethics exercise. Whatever methodology is chosen, there are several distinct, yet interrelated, aspects of trademark law that this case presents for
classroom analysis.

A. Relevant Law
1. Timing of Use/Registration
The creation of a proper trademark allows a company to develop and
maintain an identity distinct from that of its competitors. It is also a tool
that allows consumers to identify products of various manufacturers.47
This is the core issue at stake in the iPhone trademark dispute between
Cisco and Apple. According to the Lanham Act, trademark law protects a
word, name, symbol, or device used to identify the source of a good and
distinguish it from the products of another.48 In practice, anything capable
of communicating with consumers can be considered a trademark, which
would also include slogans, colors, designs, product configurations, and
Trademark rights can be acquired by being the first person to use
the mark in commerce or being the first to register the mark with the
USPTO.50 While unregistered trademarks are governed by common law,
where priority is given to the first to use the mark in a commercial transaction,51 registered trademarks must be filed with the USPTO. The Lanham Act states that registration is prima facie evidence of the validity of
the registered mark . . ., of the registrants ownership of the mark, and of
the registrants exclusive right to use the registered mark.52 It effectively


Katya Assaf, Brand Fetishism, 43 CONN. L. REV. 83, 85 (2010).


Lanham Act, 15 U.S.C. 1127.


Qualitex Co. v. Jacobson Prods., 514 U.S. 159, 16364 (1995).


15 U.S.C. 1127(a).


Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 267 (4th Cir. 2003).


15 U.S.C. 1057(b).

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prevents others from using the trademark in connection with the sale,
offering for sale, or advertising of goods, in a way that is likely to cause
confusion.53 Specifically, benefits of registration include (1) the right to
use the mark nationwide (subject to preexisting use of the mark in a particular geographic region);54 (2) nationwide constructive notice to others
that the party owns the trademark; (3) the ability to bring an infringement
suit in federal court;55 and (4) the potential to recover treble damages,
attorneys fees, and other remedies. Additionally, after five years, the mark
can become incontestable, at which point the exclusive right to use the
mark is conclusively established.56 One may also register the mark with the
state; although this does not provide the same benefits as federal registration, it does provide notice to others.
In order to serve as a trademark, a mark must be distinctive, meaning
it must be capable of identifying the source of a particular good or distinguishing the applicants goods from those of others.57 The distinctiveness
of a mark is its power to identify the source of a product.58 To determine
the level of distinctiveness necessary for protection, the courts divide
marks into five categories, based upon the relationship between the mark
and the underlying product: (1) arbitrary, (2) fanciful, (3) suggestive,
(4) descriptive, or (5) generic.59 An arbitrary or fanciful mark bears no
logical relationship to the underlying product and is considered inherently
distinctive.60 A suggestive mark suggests a characteristic of the underlying
good and it too is inherently distinctive.61 A descriptive mark is one that
directly describes a characteristic of the underlying product. It is not
protectable unless it has acquired secondary meaning, meaning the consuming public primarily associates the mark with a particular producer as


15 U.S.C. 1114(1)(a).


15 U.S.C. 1072.


15 U.S.C. 1121.


15 U.S.C. 1065.


15 U.S.C. 1052.


Time, Inc. v. Petersen Publg Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999).


See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F. 2d 4, 9 (2d Cir. 1976).


Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).




Vol. 28 / The Journal of Legal Studies Education

opposed to the underlying product.62 A generic mark is one used by the

public to describe the general category to which the underlying product
belongs and it may never be claimed as a trademark.63
The instructor can use the actual iPhone mark to question students
regarding the five categories of trademarks. Interestingly, the mark can be
argued as belonging in either the suggestive category or perhaps in the
descriptive category. This allows for an intriguing discussion regarding the
requirement that a mark be distinctive. For example, if the iPhone mark is
descriptive, students can discuss how it could acquire secondary meaning
and thus receive trademark protection.
To prove a trademark violation, the plaintiff must generally show that
there was a protectable mark and that there exists a likelihood of confusion
of the protected product with another product.64 Courts have interpreted
this standard to require a plaintiff to show (1) that it possesses a mark; (2)
that the defendant used the mark; (3) that the defendants use of the mark
occurred in commerce; (4) that the defendant used the mark in connection
with the sale, offering for sale, distribution, or advertising of goods or
services; and (5) that the defendant used the mark in a manner likely to
confuse consumers.65
Regarding the above requirements, a trademark is found to be used
in commerce when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed
thereto.66 Once it has been proven that the mark was used in commerce,
the trademark owner must prove that numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product
in question because of the entrance in the marketplace of defendants


Lanham Act, 15 U.S.C. 1052(f).


Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).


15 U.S.C. 1114. See also Time, Inc. v. Petersen Publg Co. L.L.C., 173 F.3d 113, 118 (2d Cir.
1999) (stating that the test for infringement is the likelihood of consumer confusion as to the
source of the allegedly infringing product.). Trademark infringement may also be found when
the commercial trademark use is likely to cause initial interest confusion, even if that confusion
is dispelled at the time of purchase. John Handy, Note, Why the Initially Confused Should Get a
Clue: The Battle Between Trademark Infringement and Consumer Choice Online, 16 FORDHAM INTELL.
PROP. MEDIA & ENT. L.J. 567, 57677 (2006).

U-Haul Intl, Inc. v., Inc., 279 F. Supp. 2d 723, 727 (E.D. Va. 2003).


Id. (citing 15 U.S.C. 1127 (2000)).

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mark.67 Although there is some disparity among the circuit courts, four
factors are common to the circuits in assessing likelihood of confusion: the
similarity of the marks, the proximity of the goods, evidence of actual
confusion, and the strength of the plaintiff s mark.68
Given the documents filed with the USPTO by Cisco, the iPhone
mark was being used in commerce. Although Ciscos use in commerce may
not have been substantial enough to cause much actual confusion, the
iPhone mark was placed on a box and offered for sale in the marketplace.
Apple clearly used the mark in commerce as soon as Steve Jobs announced
the launch of the iPhone at the Macworld Conference and Expo in early
2007. Even though the mark was used in commerce, it may be tougher for
students to determine whether there was a likelihood of confusion.69 While
the marks were identical and the goods were very similar, there would be
little evidence of the strength of Ciscos mark. Students could further discuss how the court would analyze evidence of actual confusion using the
four factors outlined above. Finally, students could discuss the strength of
the iPhone mark, a point addressed later in this case.
2. Diligence in Protecting Mark
Exploring this issue underscores the importance of following the procedure established in the trademark registration process. Understanding the
nuances of this process gives students an opportunity to debate the intent
of the law versus the letter of the lawFespecially given the sample submitted by Cisco for its Declaration of Use.
A trademark owner in the United States is required to submit a Section 8
Declaration of Continued Use in the sixth year of the registration term.70 The
Section 8 affidavit can state either (1) that the owner is using the mark or (2)
the owner is not using the mark for good reason.71 At the same time, a


Gruner1Jahr Publg v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993).


Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 CAL. L.
REV. 1581, 1589 (2006).

Consumer surveys are typically used in litigation to show confusion. K. J. Greene, Abusive
Trademark Litigation and the Incredible Shrinking Confusion Doctrine Trademark Abuse in the Context
of Entertainment Media and Cyberspace, 27 HARV. J.L. & PUB. POLY 609, 620 (2004).


Lanham Act, 15 U.S.C. 1058.




Vol. 28 / The Journal of Legal Studies Education

trademark owner can, but is not required to, file a Section 15 Declaration of
Incontestability, claiming incontestable rights in the mark based on the
continuous use of the mark for the past five years.72 Cisco had to file a
Declaration of Use the sixth year of the registration term, in 2006, stating
that the owner was still using the mark.73 As stated in the case, when Cisco
filed the Declaration of Use, it apparently sent in a picture of a cordless
Internet phone with an iPhone sticker affixed to the box.74 As reported in
the Wall Street Journal,
Cisco may have failed to meet a six-year deadline to show it was making use of
the trademark. Cisco did submit something just before an additional six-month
grace period ended, butFaccording to ZDNet, which backs up its report
with a photoFthe filing consisted of slapping an iPhone sticker on a box for its
Linksys Cordless Internet Telephony Kit.75

It should also be noted that Cisco could not file the optional Section
15 Declaration of Incontestability, despite the important statutory benefits
it would bring, because the iPhone mark was not continuously used in
commerce for the requisite time period.76 Examination of this issue can
lead students to a greater understanding of the underpinnings of U.S.
trademark law. A critical requirement of trademark protection is that the
mark be used in commerce. The actions of Cisco raise some issues that will
allow the class to see real-life application of this trademark law principle.
As discussed in the case, InfoGear Technologies first acquired and
used the iPhone trademark in 1996.77 It should be noted, however, that
after buying InfoGear in 2000, Cisco did not actually use the iPhone
trademark until late 2006.78 Furthermore, the release of this product followed many discussions with Apple about licensing the trademark.79 But

15 U.S.C. 1065.


Miller, supra note 22. The Declaration of Incontestability is conclusive evidence of the
validity of a registered mark and the owners exclusive right to the use the mark. The
standard is higher and provides more protection than the Section 8 Declaration of Continued


Saxena, supra note 23.


Jenkins, supra note 25.


Schwimmer, supra note 30, at 43.


Markoff, supra note 15.





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Cisco claimed it had been shipping InfoGears iPhone until it launched the
Linksys product under the same name.80
Ciscos conduct (or lack thereof) brings up the issue of trademark
abandonment. Pursuant to 15 U.S.C. Section1127, a trademark is deemed
to be abandoned when, its use has been discontinued with intent not to
resume such use.81 Once a mark has been abandoned, another person
can seize the trademark and establish a right to use the mark under trademark priority laws.82 To win on this issue, Apple would need to demonstrate, non-use of the name by the legal owner and no intent by that
person or entity to resume use in the reasonably foreseeable future.83
Furthermore, three years of consecutive nonuse would constitute prima
facie evidence of abandonment.84 This presumption would place a burden
on the owner of the mark (Cisco) to produce either evidence of actual use
during the period or intent to resume use.85
Closely related to the use in commerce requirement of trademark law
is the fact that a trademark owner bears the burden of policing the use of
its mark by others.86 The facts in this case allow the instructor to question
the students about whether Cisco truly sought enforcement of the rights
granted to it via the U.S. trademark law system or was lackadaisical in its
Prior to the lawsuit with Apple, Cisco had apparently failed on several
occasions, against several different entities, to protect its trademark for the
iPhone. At least four other companies, including two in the United States,
were using the iPhone trademark to market various products.87 The


Tom Krazit, How Apple Could Fight Cisco (Jan. 12, 2007),


Lanham Act, 15 U.S.C. 1127.


Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 268 (4th Cir. 2003).


Stetson v. Howard D. Wolf & Assocs, 955 F.2d 847 850 (2d Cir. 1992).


15 U.S.C. 1127.


Cerveceria Centroamericana SA v. Cereveria India Inc., 892 F.2d 1021 at 1026 (Fed. Cir.

Levin, Elizabeth K. Note: A Safe Harbor for Trademark: Reevaluating Secondary Trademark Liability After Tiffany v. eBay, 24 BERKELEY TECH. L.J. 491, 518 (2009).

Jenkins, supra note 25.


Vol. 28 / The Journal of Legal Studies Education

presence of the mark in other countries and for other products and services arguably shows a lack of initiative on Ciscos part to protect the mark.
Another interesting point raised by this case is the critical concept of
consumer confusion. This is the key determinant of liability in a trademark
infringement suit, and the issue is not clear-cut in this case. The instructor
may question the students about how closely related the two products are
and if this proximity (or lack thereof) would lead to consumers being confused. The legal issue of the relatedness of the goods is a subset of likelihood of confusion from a consumers perspective. Apples argument would
be that Apples iPhone is so different and distinct from Ciscos product that
consumers would not be confused as to the source of each good.88 The
clearest example of this is Delta faucets and Delta airlines; one is likely
aware of both trademarks but the likelihood of consumer confusion is
exceedingly low. With the iPhone, both products are phones, though one is
VoIP enabled and the other is cellular in nature. Clearly there is not the
level of distinction presented in the Delta trademark example, but where it
falls along the spectrum is not absolutely clear.89 On balance, this argument
would likely lean toward Ciscos position as both products are phones. But
creative students may present arguments to the contrary.
While all the aforementioned issues could be argued by Apple, one
last nuclear option would remainFthe argument that the iPhone mark
was generic. The generic argument permits the instructor to cover various aspects of trial strategy from Apples perspective. The instructor could
tie this issue back to the five categories of trademark law generally and
discuss the concept of genericide, whereby an entity loses ownership
of a trademark because of how it is viewed by consumers.90 This would


Krazit, supra note 80.


The Supreme Court ruled that Victor and Cathy Moseleys use of the mark Victors Little
Secret in a retail store for lingerie, adult videos, and sex toys in Kentucky did not dilute the
Victorias Secret trademark without proof of harm. Moseley v. V. Secret Catalogue, Inc., 537
U.S. 418, 423 (2003). However, other courts have ruled that there was infringement for use of
identical marks for different goods. See J. Thomas McCarthy, Symposium: Trademark in Transition: Institute for Intellectual Property & Information Law Symposium: Proving a Trademark Has
Been Diluted: Theories or Facts?, 41 HOUS. L. REV. 713, 72122 (2004) (Bacardi jewelry was an
infringement of Bacardi rum; Jaguar perfume was an infringement of Jaguar autos; and K2
cigarettes conflicted with K2 skis).

A mark may begin as fanciful and protected and drop to the lowest level, generic, through
the process of genericide. See Deven R. Desai & Sandra L. Rierson, Confronting the Genericism
Conundrum, 28 CARDOZO L. REV. 1789, 1810 (2007).

2011 / I Phone, You Phone, We All Phone with iPhone


obviously be the position of last resort for Apple, because if successful, it

would allow anyone to use the iPhone moniker.91 This argument is possible
given the number of entities using the iPhone mark in commerce over the
course of time. The hope on Apples part would be that in coming years, it
would be able to build some brand distinction in the mark and later acquire a trademark for its product and fend off other competitors. This
outcome is obviously less appealing than winning on any of the aforementioned arguments. But it may be preferable to what Cisco argues it truly
wants: interoperability.
3. Family of Marks Argument
One way to analyze which party had superior rights to the iPhone trademark is to look at the strength each party has in its respective mark.
Arguably, Cisco already owned the legal right via U.S. trademark law to the
mark, but Apple had an interesting argument to put forth, namely, that it
owned rights in a family of marks.92 Apple would posit that it owns a
family of trademarks beginning with the i prefix for electronic, computer and communication products . . . for example, iPod, iTunes, iMac,
iBook, iPhoto and several others.93 The key to this line of attack by Apple
would be consumer perception. And it should be noted that prior to the
official announcement, members of the media and analysts were already
calling Apples phone the iPhone.94 Additionally, Apple already owned the
domain name at that time and, as previously discussed, was
filing for trademarks around the world.95
Apple, Inc. has invested a great deal of time and money in securing
goodwill and a hold in the marketplace for its family of i products.
Because products like the iPod, iMac, iWork, and iLife are all associated
with Apple, it seems only logical that a phone developed by Apple would be
called the iPhone. In fact, in contrast to Ciscos behavior, Apple has been


Antone Gonsalves, Apple Unlikely to Go to Trial Over iPhone Trademark Suit, EE TIMES ASIA (Jan.
15, 2007, available at

Krazit, supra note 80.


Schwimmer, supra note 30, at 44.


Apple Insider, Cisco Introduces iPhone Family of Devices, supra note 33.




Vol. 28 / The Journal of Legal Studies Education

somewhat aggressive in protecting its rights to its i-marks.96 A similar

strategy has also been used by McDonalds to protect the Mc-family of
trademarks.97 In discussing this concept, the Federal Circuit Court in J&J
Snack Foods found that a family of marks generally has recognizable common characteristics such that consumers associate the marks, as well as the
common characteristics, with the trademark owner.98 The court noted,
Recognition of the family is achieved when the pattern of usage of the
common element is sufficient to be indicative of the origin of the family.99
Courts will consider the use, advertisement, and distinctiveness of the
family marks, as well as how the marks are identified with the common
origin.100 Apple would likely be successful from the standpoint of consumer identification of the iPhone mark with its company; as stated earlier,
many assumed the product would be called the iPhone even before Jobs
announced it.101
But there are two legal arguments against Apples family of marks
position: (1) the nonexclusivity of the i family of marks and (2) the date
Apple obtained such rights.102 Regarding the first point, Sony used a
technology it terms iLink to describe its version of the FireWire system.103

See, e.g., Apple Computer v., Inc., 2007 TTAB LEXIS 80 (2007) (denying
application of to register the mark for digital music video internet
downloads because of likelihood of confusion or dilution of ITUNES and ITUNES MUSIC


See J&J Snack Foods Corp. v. McDonalds Corp., 932 F.2d 1460 (Fed. Cir. 1991).


Id. at 1462.


Id. at 1463.


Id. (relying on consumer survey evidence where 30 percent of respondents thought a

product marked McPretzel originated with McDonalds). See Toys R Us, Inc. v. Akkaoui, 40
U.S.P.Q.2d (BNA) 1836, 1838 (N.D. Cal. 1996) (concluding likelihood that AdultsRUs was
diluting the Toys R Us family of marks); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d
1333, 57 U.S.P.Q.2d (BNA) 1557 (Fed. Cir. 2001) (finding that Alberto-Culvers TRES
marks for various hair-care products constituted a family of marks).
Apple has encountered some international resistance. In early 2010 it purchased the
i-phone trademark from the Hanwang Technology Co., which registered the trademark in
China in 2004 for its telephone and handset products. This move opened the door for Apple
to sell its iPhone in China. Owen Fletcher, Apple Resolved iPhone Trademark Conflict in China,
PCWORLD (Jan. 4, 2010),,185767/printable.

Schwimmer, supra note 30, at 44.



2011 / I Phone, You Phone, We All Phone with iPhone


Additionally, numerous companies use the i mark for accessories created

for Apples iPod.104 Regarding the date Apple arguably obtained ownership of the family of marks, any date appears to postdate the 1996 iPhone
trademark registration date. For example, Apple began selling the iMac in
1998, the iBook in 1999, and iTunes and iPod in 2001.105 Thus, each
product release postdates Ciscos 1996 priority date.
Cisco claimed in the lawsuit that permitting both companies to use
the name iPhone would create confusion among consumers; however, Apple argued to the contrary and sought to further benefit from the i
brand.106 Ciscos claim was one of reverse confusion and actionable under 15 U.S.C. Section 1125. Reverse confusion occurs when a junior user
saturates the market with a trademark similar to a senior users and, in
doing so, overwhelms preexisting commercial associations made by consumers with the senior user.107 But in this instance, two factors worked
against Cisco: (1) Cisco was not the typical small plaintiff and (2) Cisco
relaunched the product six years after becoming aware of Apples interest
in the name.108
4. International Trademark Issues
The legal issues presented in this case allow the instructor to impress
upon the students the importance of global harmonization of intellectual property regimes. It can be demonstrated that a clever entity
with the proper motivation can manipulate the international trademark
system to its advantage. Students can debate the public policy and
legal implications of these provisions as well as the ethical implications of
Apple using such loopholes to attempt to circumvent Ciscos prior-filed
U.S. trademark.




Id. at 45.


Jennifer LeClaire, Cisco Dials Apple in iPhone Trademark Spat, NEWSFACTOR (Feb. 16, 2007),

Ameritech, Inc. v. Am. Info. Tech. Corp., 811 F.2d 960 (6th Cir. 1987).


Schwimmer, supra note 30, at 45.


Vol. 28 / The Journal of Legal Studies Education

The Paris Convention was originally signed by eleven countries and

became effective in 1884.109 It was an attempt to harmonize the intellectual
property laws of the signatory countries. For example, key provisions of
the Paris Convention provide that an application for the registration of a
trademark by a U.S. company may not be refused by a signatory country
on the ground that the trademark has not been effected in the country of
origin.110 This allowed Apple and Ocean Telecom to file in Australia and
Trinidad and Tobago, respectively, for trademark protection of the iPhone
mark even though neither applicant had filed for trademark protection in
the United States. Despite the fact that the effect of the actions of both
companies was to fly under the radar of the USPTO and Cisco, the Paris
Convention practically compelled the foreign countries to accept the
application for registration of the iPhone mark. Arguably, Apple had
formed Ocean Telecom for the sole purpose of circumventing Ciscos hold
on the iPhone mark.
The Madrid Protocol was enacted by Congress and became effective
in November of 2003.111 The key provision of the Madrid Protocol is that
it allows a registrant to file a single application in a single place and receive
protection for a trademark in all signatory countries.112 Moreover, the
USPTO will issue a certificate of extension of trademark protection to a
foreign applicant even though the mark has not been used in commerce in
the United States.113 The request for extension of protection based on an
international filing will have the same effect as a registration on the Principal Register with the USPTO.114 Furthermore, the effective date of the
trademark protection allows for a priority date back to an earlier filed
national application in a foreign country.115
Thus, Apple was able to file for protection of the iPhone mark in
Australia, and Ocean Telecom was able to file for protection of the iPhone

Paris Convention for the Protection of Industrial Property art. 6 (2), Mar. 20, 1883, 21
U.S.T. 1583.



Madrid Protocol Implementation Act, Nov. 2, 2003, 15 U.S.C. 1141 et seq.


15 U.S.C. 1141d-e.


15 U.S.C. 1141h.


15 U.S.C. 1141i.


15 U.S.C. 1141f.

2011 / I Phone, You Phone, We All Phone with iPhone


mark in Trinidad and Tobago. When both companies filed for extension of
protection of the respective marks with the USPTO, they were nearly
guaranteed extension of registration under the Madrid Protocol, and the
Paris Convention allowed the grant of trademark protection to date back to
the respective filings in Australia and Trinidad and Tobago. These provisions arguably allowed Apple and Ocean Telecom to bootstrap the
iPhone mark to a filing date (as early as March 2006) and place which
may have been unknown to Cisco.
B. Ethical Issues
This case provides the instructor with a vehicle for extending the discussion beyond a narrow focus on the law and to introduce the students to
the intertwined concepts of business and ethical concerns. Students should
be asked to posit the best business and ethical arguments that both Cisco
and Apple could put forth. The instructor could then question the viability
of these positions from legal, business, and ethical angles, in order to
encourage critical thinking.
Different ethical schools of thought give appropriate perspectives from which to argue for and against the actions taken by both
Apple and Cisco. While the application of numerous ethical theories is
possible,116 it is not necessary for the instructor to utilize all of them
in order to engender vibrant student discussion of the issues. Two schools
of ethical thought relevant to this case are utilitarianism and natural
rights theory.
1. Utilitarianism
Utilitarianism posits that actions are moral in proportion as they tend to
promote happiness and wrong as they tend to produce the reverse of
happiness.117 This is often understood as advocating a position that promotes the greatest amount of good for the greatest number of people. The
ethical theory is applicable to trademarks because the protection of commercial trademarks promotes the greatest amount of good consequences

See Wade M. Chumney & Tammy W. Cowart, iEthics, 93 J. BUS. ETHICS 471, 475 (2010)
(providing an ethical analysis of Apple and Ciscos trademark dispute via the additional perspectives of justice theory and stakeholder analysis).

JOHN STUART MILL, UTILITARIANISM 7 (George Sher ed., 2001) (1861).


Vol. 28 / The Journal of Legal Studies Education

for society as opposed to bad consequences.118 Accordingly, one can argue

that an injustice occurs whenever there is a taking or withholding from
any person that to which he has a moral right.119
Pursuant to this theory, one must ask what use of the iPhone mark
would provide the greatest amount of good for the greatest number of
people. One could argue that Apples actions in attempting to gain some
ownership of the iPhone mark by using the provisions of the Madrid Protocol rules for international registration constitute an injustice because the
act appears to be taking advantage of a loophole in the law. Thus, Cisco
should have the right to exclusive use of the iPhone mark based on its
prior registration pursuant to U.S. trademark law. Consequently, it can be
argued that allowing Cisco to retain the iPhone mark would benefit the
greatest number because it would allow subsequent trademark owners to
trust that their earlier registered marks will be protected.
On the other hand, one could utilize this theory to argue that Apple
should be awarded the iPhone mark. A utilitarian argument for the protection
of trademarks would focus on the users of the trademarked property rather
than on the producers.120 The protection of trademarked goods is necessary
to ensure that enough products are available to users from producers who are
more inclined to produce given the fact that their goods will be protected from
infringers.121 Because Cisco had allowed the iPhone mark to remain essentially unused by consumers during the years it owned the iPhone mark, the
greatest amount of good would be served by the actual use of the iPhone
mark. In fact, such intent is written into the Trademark Act insofar as it provides greater protection to registrants who use their marks in commerce and
continual nonuse of a trademark allows a competitor to argue that the mark
has been abandoned by the registrant.122 Thus, one can argue that the maximum utility for the iPhone mark would be achieved by allowing Apple to
obtain legal rights to the iPhone mark by filing under the Madrid Protocol.

D. B. Resnik, A Pluralistic Account of Intellectual Property, 46 J. BUS.ETHICS 319, 324 (2003)
(noting that social utility is maximized by providing trademark holders with incentives and
reward, which encourage the development of industry).

MILL, supra note 117 at 45.


Edwin C. Hettinger, Justifying Intellectual Property, 18 PHIL. & PUB. AFFAIRS 31, 48 (1989).




Three years of consecutive nonuse constitutes prima facie evidence of trademark abandonment. 15 U.S.C. 1127.

2011 / I Phone, You Phone, We All Phone with iPhone


2. Natural Rights Theory

The Lockean view of natural rights informed the constitutional framers
understanding of intellectual property law.123 According to Locke,
every individual man has a property in his own person; this is something that
nobody else has any right to. The labour of his body and the works of his
hands, we may say, are strictly his. So when he takes something from the state
that nature has provided and left it in, he mixes his labour with it, thus joining
it to something that is his own; and in that way he makes it his property.124

While this theory could be used to examine many facets of this case,
utilizing it to analyze the consumers perspective is particularly interesting.
One could argue that Cisco put forth the effort to acquire InfoGear and
obtain rights to the iPhone mark. While InfoGear put forth the initial labor
required to create the mark, through independent knowledge and effort,
Cisco came to be the rightful owner of the mark and should thus be able to
utilize it as the company sees fit.
Alternatively, if the marketplace presumes that the newest product developed by Apple would bear the i prefix to its mark, does Apple have
some moral high ground for the mark? Consequently, should Apple, and
not Cisco, reap the benefits of creating goodwill and consumer recognition in
the iPhone, part of the i-family of marks?125 One could argue whether
Cisco anticipated this very thing when it purchased InfoGear and the iPhone
mark in 2000. From an ethical standpoint, the issue may be whether Cisco
had some obligation to tender the mark to Apple when the company was
approached beginning in 2001. This responsibility would arguably flow from
the divergent approaches taken by the two companies in the marketplace. As
discussed earlier, Apple affirmatively labored in the marketplace to create
consumer goodwill toward the i family of marks. Contrarily, Cisco acquired
the iPhone mark but did nothing in the marketplace in order to create a
product for consumers. Thus, from a Lockean natural rights view, one could
argue that Apple had the stronger claim the iPhone mark.
Benjamin G. Damstedt, Limiting Locke: A Natural Law Justification for the Fair Use Doctrine,
112 YALE L.J. 1179, 1179 (2003).

JOHN LOCKE, SECOND TREATISE OF GOVERNMENT 11 (J. Bennett ed., 2008), available at http://

See Paul Steidlmeier, The Moral Legitimacy of Intellectual Property Claims: American Business and
Developing Country Perspectives, 12 J. BUS. ETHICS 157, 160 (1993).


Vol. 28 / The Journal of Legal Studies Education






Cisco ultimately extended negotiations with Apple twice so that the two
companies could resolve the dispute.126 Cisco and Apple finally settled the
lawsuit and obviated the need for trial on February 21, 2007.127 Cisco appeared willing to allow Apple to use the iPhone mark if Apple was willing to
allow both companies phones to communicate with each other.128 The
areas of interoperability to be explored were thought to include security,
consumer, and business communications.129 Little was expected from the
settlement; while Apple may have considered interoperability on some of
its lower-profile products, Apple was not expected to open up any of its
proprietary technology to outside devices any time soon.130 Many believed
that money had more of a role in the settlement than either company
stated.131 A few months after the settlement, on October 4, 2007, Ocean
Telecom Services, LLC was merged into Apple via a Certificate of Merger.
In 2008, Apples iPhone 2.0 software offered an option for communicating
with Cisco security appliances, so perhaps there was some gain for Cisco in
forcing the iPhone trademark issue with Apple. However, Apple has not
changed its proprietary stance on protecting its intellectual property interests. In the spring of 2010, Apple filed for trademark protection of
Made for iPhone and expanded the current iPhone trademark to include handheld electronic games.132 Apples recent attempt to trademark

Cisco Extends iPhone Talks with Apple Until Feb. 21, AM. INTELLIGENCE WIRE (Feb. 16, 2007),

Steve Donohue, Apple, Cisco Call iPhone Truce, MULTICHANNEL NEWS (Feb. 22, 2007), http://

Cisco Extends, supra note 126.


Brad Stone, Settlement with Cisco Lets Apple Keep iPhone Name, INTL. HERALD TRIB., Feb. 22,

Id. See also Reder, supra note 5, at 208.




Vlad Savov, Apple Locks Down iPhone Trademark, Includes Electronic Games Category, ENGAD(Feb. 14, 2010, 12:29 p.m.),; Jack Purcher, Apple Files Made for
iPhone Trademark, PATENTLY APPLE (May 5, 2010),


2011 / I Phone, You Phone, We All Phone with iPhone


the term App Store has been challenged by Microsoft as being too
generic; the dispute is pending with the USPTO.133
The iPhone case presents many issues that give students an opportunity to engage in legal, ethical, and business analyses of these concepts.
The instructor can use this case for a basic analysis of trademark rights and
filing, a more complex analysis of international treaties, or the ethics of a
companys efforts to protect its intellectual property. Whether used in a
business law, legal environment or business ethics course at the undergraduate or graduate level, this is a case where both companies have credible arguments. Thus, various perspectives can be taken by the students,
allowing them to engage in high-level critical thinking. By utilizing the
popular iPhone as the focal point for these issues, an instructors task of
motivating students to think, participate and learn critical-thinking skills in
the classroom can be greatly enhanced.


Jennifer Valentino-DeVries, Should Apple Get to Trademark App Store? Microsoft Says No,
DIGITS WALL ST. J BLOG, (Jan. 25, 2011, 10:49 p.m.),