Product Trademarks: Apple vs. Cisco over iPhone Name
By Wade M. Chumney and Tammy W. Cowart
Wade M. Chumney is the Cecil B. Day Assistant Professor of Business Ethics and Law at
the Georgia Institute of Technology. Tammy W. Cowart is an Assistant Professor of Business
Law at the University of Texas at Tyler.
I. Introduction
a. Case Synopsis
This case is designed to expose students to ethical issues involving the Lanham Act, the
United States Patent and Trademark Office (USPTO), and the registration system used in the
United States, while also demonstrating the global issues involving trademark registration and
infringement. Even though this case involved two U.S. companies, the global trademark
registration system was used to challenge the U.S. registration system. This presents students
with an understanding of the international implications of intellectual property issues, as well as
some ethical issues involving the manner in which national and international laws can be utilized
by companies.
b. Case Objectives
To provide students with the tools necessary to understand the foundational
principles upon which intellectual property laws are based
To evaluate the perspectives of two large corporations as they try to gain market
advantage utilizing intellectual property
To analyze the various actions of corporations via various ethical lenses
To understand the application of intellectual property laws in a corporate setting
II. Classroom Management
A. Outline of teaching approach
1
1. Introduce the case (five minutes)
2. Ask students to summarize the key points of the case (five minutes)
3. Ask students individually to take a position and provide the rationale for their
position. (five minutes)
4. Ask students to share his/her position and rationale to start the discussion. (five
minutes)
5. Discussion (35 minutes)
6. Summary of lessons (five minutes)
B. Discussion Questions and Answers
1. Cisco and Apple settled out of court. If this case remained in court and you were
the judge, which entity would you grant the trademark, Cisco or Apple? Why?
Answers here may vary. From a legal perspective, one may side with Apple for a number
of reasons: the “i” family of marks, the use of the product in the marketplace, the lack of proper
2. Strictly from an ethical perspective, which entity do you believe had the superior
argument for the “iPhone” mark, Cisco or Apple? Why?
Again, answers here may vary. From an ethical perspective, Apple has a strong argument
that the purpose of trademark law was not being fulfilled by Cisco in that they did not properly
2
3. Which entity’s behavior, Apple or Cisco, do you feel was most ethical and why?
Students will be able to argue either answer to this question. Apple’s behavior may be
seen as the most ethical due to the fact that they actually planned to utilize the iPhone mark in
4. What was the least ethical behavior by each entity?
Students can argue that a number of actions by Apple were the least ethical.
First, there attempt to market a product for which they did not even own the legal mark.
Second, there attempt to subvert the U.S. trademark system by filing international
C. Concluding Questions: What did you learn from this case?
Students may state that they learned about various tactics large companies will employ in
D. Other References and Resources
Wade M. Chumney and Tammy W. Cowart, “iEthics,” Journal of Business Ethics, 93, 3,
(2010): 471-482, available at http://www.springerlink.com/content/y02h54j63g00vp25/, accessed
10/30/10.
3
http://news.findlaw.com/wp/docs/apple/ciscoaap110007cmp.html, 10/10/10.
The United States Patent and Trademark Office “Rule of Practice and Federal Statutes”
(Federal Trademark Act of 1946) is available at http://www.uspto.gov/trademarks/law/tmlaw.pdf,
accessed 10/30/10.
Relevant trademark court cases students can examine are:
Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. 763 (1992), available at
http://supreme.justia.com/us/505/763/case.html, accessed 10/30/10.
Bayer Co. v. United Drug Co., 272 F. 505 (D.N.Y. 1921), available at
http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/bayer.htm, accessed
10/30/10.
J&J Snack Foods Corporation v. McDonald’s Corp., 932 F.2d 1463 (Fed. Cir. 1991),
available at
http://openjurist.org/932/f2d/1460/snack-foods-corporation-v-mcdonalds-corporation,
accessed 10/30/10.
Apple Computer v. TVNET.net, Inc., 2007 TTAB LEXIS 80 (2007) (denying application
of TVNET.net to register the mark VTUNES.NET for digital music video internet
downloads because of likelihood of confusion or dilution of ITUNES and ITUNES
MUSIC STORE), available at
http://ttabvue.uspto.gov/ttabvue/ttabvue-91168875-OPP-20.pdf, accessed 10/30/10.
4