Apple Fights for 'Pod' Rights

Apple (Nasdaq: AAPL) is up in arms over the way other companies are using the word "pod." The Cupertino, Calif.-based company recently sent cease-and-desist letters to at least two companies that use the word "pod" in their products' brand names.

Apple claims that TightPod, which manufactures laptop-protecting covers, and Mach5products.com, which sells a device that collects data from vending machines called Profit Pod, are infringing on its iPod trademark.

Trademark owners have a duty to enforce their rights to their trademarks or risk losing such rights, according to Nate A. Garhart, intellectual property attorney and partner with Coblentz, Patch, Duffy & Bass in San Francisco.

"As always with trademark infringement claims, the question is whether the use of the junior marks is likely to cause consumer confusion -- that consumers will be likely to believe that the junior marks identify products that are from or related to Apple," Garhart told MacNewsWorld.

No Simple Analysis

Apple has registered the iPod mark for use in connection with portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio and other data files, and computer software for the same. It has also applied for registration of the mark in connection with other goods and services.

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, legal analysts said.

"Where a company is using a mark that is similar to the iPod mark in connection with, for example, portable devices, Apple will have the right to prevent such use. But where the mark is different and the services are different, the analysis is not as simple," Garhart explained.

Apple could not immediately be reached for comment.

TightPod's Argument

TightPod could argue that its mark is different in sight, sound and meaning from the iPod mark, and that its goods identified by the mark are unrelated to those identified by Apple's mark.

Looking at Apple's iPod mark, the dominant portion is "pod," and the "i" is somewhat descriptive or suggestive, telling the consumer that it is somehow related to the Internet, Garhart said. The U.S. Patent and Trademark Office has taken this position with the prefix "i" for quite some time. The dominant portion of the mark is shared by the TightPod mark.

That being said, Garhart noted that Apple does not typically attach the term "pod" to other terms to create other marks, and instead repeatedly uses the "i" prefix with other terms such as iMac and iTunes.

"It could be argued that the term 'tight' in the junior user's mark is important and consumers are not likely to think that Apple is the source, sponsor, or otherwise related to such products," he continued.

There are a few additional points to consider. First, the products in question do not seem to be related. That would break the confusion argument. Second, Apple's iPod mark is not registered for, and is not currently being used with, notebook covers. Nevertheless, a court would consider whether such products are in Apple's likely zone of expansion.

TightPod was also unavailable for comment.

Mach5's Case

The analysis is similar with Mach5's Profit Pod mark, though the products involved in this case may be more similar. If Apple's assertion is true, the product looks like the iPod product. Additionally, it is used to organize data -- a function covered in the iPod mark registrations.

Garhart figures Mach5 will likely argue that the marks are not similar and the goods and services are different, in that the Profit Pod is used for something completely unrelated to the iPod: collecting data from vending machines. Mach 5, he added, will likely go a step further and argue that the market for the Profit Pod is very different from that of the iPod, and therefore consumer confusion is unlikely.

Limiting Apple's Pod Domain

Mach5, too, could not immediately be reached for comment.

"In the end, if such cases were to be litigated, one would expect the litigants to produce consumer surveys to support their positions, and the court would have to carefully parse the entire 'likelihood of confusion' analysis," Garhart concluded.

"I would also expect the defendants to argue that the iPod mark is somewhat descriptive of the product, and that there are many uses of the term 'pod,' which limit the application of Apple's rights to only those products and services for which it has actually used the mark."

Owners of popular marks such as "iPod" face a constant challenge, according to Allonn E. Levy, intellectual property litigation attorney with Hopkins & Carley in San Jose, Calif. "They must police the marketplace and ensure that they do not allow the strength of their mark to be eroded by others," he said. "If they don't do this, [companies such as] Apple risk finding later that they acquiesced to a particular use of their mark."