There seems to be ongoing and regular announcements by companies and people who have received cease and desist letters from Apple Computer, Inc. Here’s the most recent example of which I am aware.

Apple obtained its first registraion of iPod on November 11, 2003, which it presumably purchased from Joseph Grasso. However, this registration covers public Internet kiosk enclosure containing computer hardware in Class 9. Its second registration, which covers, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio files; computer software for use in organizing, transmitting, manipulating, and reviewing audio files on portable and handheld digital electronic devices, issued on April 27, 2004 (though it claims to have been using the mark “in commerce” since 2001).

Apple seems to have taken a very aggressive stance in connection with other trademark uses of the word “POD”. Of course, those who criticize Apple’s stance point to the fact “pod” is an actual English word. Of course, “When one selects a [common English word] for a trademark, he must realize that the scope of protection will be more limited than if he had chosen an arbitrary or fanciful word. In fairness to all others who desire to use the same word in a suggestive manner as a trademark, the protection to each user will usually be carefully confined to the particular goods or those closely related since its source-identifying qualities are equally limited.” Home Decorators, Inc. v. Ekco Products Co., 130 U.S.P.Q. 153 (C.C.P.A. 1961).

The following list includes other marks in Class 9 that contain the -POD suffix — registered both before and after Apple’s first registration of iPod:

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STEALTHPOD for camera tripods – Registered: September 9, 2003;

SMARTPOD for DATA ACQUISITION AND PROCESSING COMPUTER HARDWARE AND COMPUTER SOFTWARE FOR ACQUIRING AND PROCESSING MULTIPLE PARAMETERS OF PATIENT DATA, NAMELY, BLOOD OXYGEN SATURATION, EKG AND TEMPERATURE DATA AND OTHER PHYSIOLOGICAL PATIENT MEDICAL DATA AND FOR TRANSFERRING SAID DATA TO BEDSIDE MONITORS FOR FURTHER PROCESSING AND DISPLAY – Registered: July 11, 2006;

SUPPLYPOD for inventory control system, namely, electronic controls or control panel applied to shelves, cabinets or refrigeration used to store and dispense office supplies, maintenance repair and operating supplies, and manufacturing environment supplies - Registered: April 8, 2003;

THE POD for MODULAR MULTI-HEAD RESISTANCE WELD MONITOR APPARATUS, CONSISTING OF A COMPUTER INTERFACE AND ELECTRICAL UNIT LOCATED IN A COMPACT MODULAR HOUSING – Registered: October 3, 2000;

THE POD for TELECOMMUNICATIONS HARDWARE, NAMELY, A FIBER OPTIC GATEWAY DEVICE USED FOR THE PROVISION OF TELEPHONE, TELEVISION AND GLOBAL COMPUTER NETWORK SERVICES – Registered: January 7, 2003;

TRACKERPOD for Audio and videoconferencing equipment, namely software-controlled camera pedestals, remote control devices for electronic cameras and microphones, and computer hardware for processing data relating to moving images, still images, and sound; software-based optical tracking robot for surveillance, security, identification and recognition of a subject – Registered: February 3, 2004;  

TRANSPOD for Adapters for mounting, charging, and powering portable and handheld digital electronic video or audio players; electronic converters for transmitting visual or audio signals into radio frequencies; electronic docking stations mounts, transmitters, batteries and charges, for digital video or audio players; radio-frequency transmitters; power supplies and chargers – Registered: January 13, 2004;

VIBRAPOD for Vibration isolation devices in the nature of pads, pods and bumpers for use with vibration sensitive equipment, electronics, video, scientific and/or laboratory equipment – Registered: May 8, 2006;  

MINIPOD for Loudspeakers and replacement parts therefor – Registered: July 9, 2002;

MPOD for Computer peripheral used to collect information for commercial transactions – Registered: May 17, 2005;

NUPOD for Telecommunications system consisting of antenna(s) and positioner for mobile transmit applications and/or for automatic tracking of airborne signals – Registered: October 26, 2004;

NAVPOD for Instrument housings made of plastic for marine electronics – Registered: October 10, 2000;  

MEDIAPOD PLAYER for COMPUTER SOFTWARE TOOL FOR PLAYING INFORMATION CONTAINING TEXT SYNCHRONIZED VIDEO AND DATA OVER THE GLOBAL COMPUTER NETWORK - Registered: December 17, 2002;

MEDIAPOD for Software for archiving text synchronized data downloaded from the global computer network onto local client workstations – Registered: November 11, 2003;

INTERPOD for MULTIMEDIA CONFERENCING SYSTEMS WHICH CONSIST OF CONSOLES, VIDEO DISPLAY SCREENS, KEYBOARDS, COMPUTER SOFTWARE AND HARDWARE WITH NETWORKING CAPABILITIES WHICH ALLOW FOR MULTI-USER INPUT FROM ONE OR MORE GEOGRAPHIC LOCATIONS AND USER MANUALS THEREFOR DISTRIBUTED AS A UNIT – Registered: November 11, 2003;

EQ POD for PROGRAMMABLE AUDIO EQUALIZER – Registered: February 22, 1995; DATAPOD for Data Loggers for Use in Scientific, Agricultural and Industrial Fields-Namely, Meteorology, Hydrology, Agronomy and the Like – Registered: July 11, 2005;

AV POD for AUDIO AND VIDEO CABLES AND CONNECTORS; AUDIO/VIDEO ELECTRICAL DISTRIBUTION UNIT; AUXILIARY POWER UNIT; DISTRIBUTION AMPLIFIER; BUFFER AMPLIFIER; EXTENSION CABLES – Registered: November 5, 2002;

ADAPT-A-POD for Electronic adapter for testing computer equipment – Registered: August 8, 2000;  

OMNIPOD for Computer programs, namely, software programs for use in managing, viewing and editing files, messages, multimedia content, audio and video content, appointments, contacts, and other digital material in conjunction with a network server in the field of communications and information sharing - Registered: October 29, 2002;

P.O.D. ADVANTAGE for Communications software used to access and transmit information from an on-line database featuring information for the package transportation industry – Registered: August 16, 2005; POD for Digital signal processors, namely, digital signal processors used as a sound management system that provides digital audio signal manipulation for use with musical instruments – Registered: July 19, 2005;

PODWARE for Computer hardware and software interface product, namely a signal processor used to interface and process protected digital cable TV signals including converting the signal between conditional access and digital rights management formats, provided to television manufacturers and other Original Equipment Manufacturers (OEM’s) – Registered: February 7, 2006; and

POD for Electronic brake controls for use in land vehicles – Registered: March 19, 2002.

In light of these registrations, it seems clear that many other companies had rights to “POD” marks before Apple ever acquired such rights. The fact that Apple’s iPod has subsequently arguably become the most famous of the “POD” marks does not mean that it can prevent late-comers from using the word “POD” in their marks. I mean, after all, Apple started using iPod after others had been using it for similar goods… or at least goods in Class 9.

It is also important to note that there is a 1992 registration of IPOD & Design which covers office furniture in Class 20. This mark has been in use since 1991. Yet, Apple wants to stop people from using “POD”…?

There is also a 2003 registration of IPOD which covers interactive computer software for use by the financial service industry to understand equity-indexed annuity products in Class 9. The owner claims to have been using this trademark since 1997.

There is also a registration of the mark IPOD which covers pulse oximeters in Class 10.

Other than the financial aspects that prevent small businesses from defending their marks, I don’t really see much chance for success if any of these applicants/defendants decide to defend their marks.

Of course, if any of them would like to discuss the matter, drop a line.

This entry was posted on Monday, September 18th, 2006 at 8:01 am and is filed under Business of TMs, Litigation, Trademarks. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.