Wired Article: Apple Aggressively Pursues ‘Pod’ Trademarks

This is an important article for for just about anyone who has (or is creating) branded products and services.

Here at BuzzPal, we went through a very similar trademark case in 2006 and 2007 (cleared by the US Patent and Trademark Office in 2008). We stood up for ourselves against the $30-million-VC-funded California company (and their NYC lawyers) and won (it was a respectful, friendly, and fair negotiation).

It will be interesting to see how the Sector Labs vs. Apple Computer case turns out (follow it live here on the USPTO website). I suspect a settlement will be reached that will either (A) allow Sector to use its VIDEO POD trademark, but in a narrowed scope, or (B) result in Apple making a payment to Sector in exchange for Sector agreeing to abandon the VIDEO POD mark and re-brand their product.

Now on to the article:

Apple Aggressively Pursues ‘Pod’ Trademarks
By Brian X. Chen

What’s in a name? A rose by any other name would smell as sweet, but if its name ended in “pod,” it might attract the ire of Apple’s shark-like legal team.

Apple’s obsession with the blockbuster success of its iPod has driven the corporation to chase down many companies attempting to use the media player’s three-letter suffix in their product or business names. Names that have come under fire include MyPodder, TightPod, PodShow, and even Podium. On Monday, Sector Labs, a small business whose Video Pod trademark has been blocked by Apple, took legal action to fight back.

“It appears that Apple is not only trying to put an iPod in everybody’s hands and white earbuds in everyone’s ears but to control the use of our language and most particularly the word ‘Pod,'” Sector Labs’ lawyers wrote in a 239-page response to Apple’s trademark opposition, which has blocked Video Pod’s development. “If we are not careful, in Apple’s quest for dominance, they will soon attempt to take over the words ‘Phone’ and ‘Tunes’ — let us hope they do not attempt a coup over the exclusive rights to the letter ‘i’.”

Apple’s trademark scuffle with Sector Labs is not unique. The corporation began cracking down on businesses attempting to use the word “pod” as far back as 2006. One of the earliest examples involved Podcast Ready, which developed a podcast-downloading application called MyPodder. Apple sent a cease-and-desist to Podcast Ready, claiming that “pod” has become commonly associated with Apple’s famous iPod, and using the three-letter word could cause consumer confusion. Apple subsequently took the same action against several other companies, including TightPod, an independent business that sold protective covers for notebooks, which later renamed itself to TightJacket.

A low-profile example involved a start-up called PodShow, a social networking web site for video podcasters. Though the start-up later renamed itself to Mevio to coincide with a site redesign, it’s worth noting that Apple in June 2008 filed an opposition to the company’s usage of PodShow. Seven months later, Apple withdrew that opposition [pdf].

A Hoovers search query turns up about 600 companies that use the word “pod” in their name, including Peapod and PODS International. But clearly, Apple hasn’t given up on the battle for this word. Just last week, Apple sent a cease-and-desist letter to Pivotal, a company marketing an iPhone stand called Podium. In that letter, Apple cited the same reasons — consumer confusion and protecting its intellectual property. Pivotal told Wired.com that it plans to file a formal response to Apple on Wednesday.

“I absolutely understand a company protecting their intellectual property,” said Scott Baumann, president of Pivotal, in a phone interview. “But to start taking ownership of the letters P-O-D — a word that’s in the dictionary — certainly seems far-reaching to me. It certainly seems like a stretch.”

Though Sector Labs’ response to Apple was published only Monday, the start-up’s trademark scuffle with Apple over Video Pod began March 6, 2007, when Apple filed an opposition to the registration of the Video Pod trademark. In the face of that opposition, Sector Labs halted development and funding of the product. Apple then filed a motion for summary judgment — asking for a ruling to be made without going to trial.

But rather than throw in the towel, Sector Labs owner Daniel Kokin filed a response to Apple’s motion for summary judgment, continuing the fight. In its response, Sector Labs claims the Video Pod, a video projector designed to work with a DVD player and other input devices (not the iPod), has been in development since 2000 — a year before Apple launched its first iPod. Sector Labs’ legal team added that Apple has the burden to prove that a probability of consumer confusion exists.

“The ordinary reasonable consumer must be confused about the source of the Video Pod itself,” Sector Labs’ response reads [pdf]. “Apple’s opposition falls far short of establishing that it is probable that consumers would actually be confused.”

Pinnacle Law Group principal Eric Farber, who is representing Sector Labs, said Apple’s intention is clearly to intimidate smaller companies who would more easily fold under the pressure of a corporation as large as Apple.

“Apple is using their power and strength to attempt to knock out very legitimate marks at a stage for start-ups that is very critical, where a great many of them don’t have the money to fight a behemoth like Apple,” Farber said in a phone interview.

Apple’s lawyer did not respond to requests for comment on this story.

Apple’s fans typically leap to defend the corporation, but Wired.com readers commenting on last week’s story about Podium unanimously disapproved of Apple’s actions.

“Apple’s got a good point about such flagrant use of the syllable ‘pod,'” commented Max Beta. “Why, just last week I was tricked into going into the office of someone who claimed to be some kind of ‘doctor.’ The guy didn’t know anything about music or iPods®, and he had some kind of weird foot fetish. You shouldn’t be able to call yourself a podiatrist unless you are associated with Apple in some way!”

Apple must file a response to Sector Labs by April 1, and then Sector Labs will have the opportunity to respond as well.

Photo: Gaetan Lee/Flickr

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3 Responses to “Wired Article: Apple Aggressively Pursues ‘Pod’ Trademarks”

  1. magicsing Says:

    Very helpful post.
    I will definitely use one or more of these tips.

  2. 1) TechCrunch: “Amazon Wants To Bully Amazee Into Changing Its Name”: http://www.techcrunch.com/2009/04/21/amazon-wants-to-bully-amazee-into-changing-its-name/

    2) TechDirt.com: “Lesson For Companies Being Over-Aggressive In Trademark Protection: Look At Twitter”: http://techdirt.com/articles/20090424/1652434645.shtml

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