Big-Time Intellectual Property Scuffles

Big-Time Intellectual Property Scuffles

by Heleigh Bostwick, May 2010

The stories are legion about people who had bright ideas for a really cool desktop widget or computer software application, but lost credit to someone else who went to the trouble of getting a patent or trademark.

It happens to the big guys too. Microsoft, Apple, and other companies often work in parallel universes, inventing similar applications along the same timelines.   

Consider the example of parallel development of the iPod. In 2005, a patent examiner at the US Patent & Trademark Office ruled that Apple's claim to the patent for digital music interface software was not valid because Microsoft developer John Platt had filed a similar patent claims five months earlier. While the iPod instance was a patent issue, most of the time it's a trademark that's at the center of a dispute. Some of the more prominent examples:


Cisco's claim that the iPhone trademark belonged to them and not to Apple was laid to rest in 2007. It was discovered that although Cisco had held the trademark to the name “iPhone” until late 2005 or early 2006, it had essentially abandoned the trademark because the company had not developed a product with that name within the allotted timeframe. In other words, although Cisco registered the iPhone trademark with the USPTO in May of 2006 using a Declaration of Use to keep the registration active, because Cisco did not actually start selling a product called “iPhone,” it lost the trademark. Thus, the Apple iPhone.


The story of Excel is a bit different. Numerous people have profited from the name Excel, the name of a software application that Microsoft never bothered to officially trademark until 2004, nearly 20 years after it was created. That didn't seem to matter to Microsoft until recently because the “Excel” name was protected under a common law trademark. A common law trademark is defined as a common name generally assumed to be associated with a particular good or service.

In 2009 however, Microsoft started cracking down on companies such as New York-based Savvysoft developer of TurboExcel, a software application whose name is alleged to infringe on the “Excel” trademark name. For the record, two other popular Microsoft products, Office and Word, are not trademarked either, but like Excel, they are protected under the common law trademark.


The story of the iPad trademark is the perfect example of a potential disaster that actually had a happy ending. iPad, the name of Apple's newest consumer gadget, started its life as a registered trademark of the Japanese company Fujitsu. Even more surprising is that the product, a touch-screen Windows Mobile device named iPAD, was similar to Apple's iPad and was even sold to the same consumer market.

In 2009 Fujitsu was in the process of renewing the trademark registration when Apple decided they wanted that name for its new device. Since it was clear that Fujitsu had a solid legal claim to the trademark, Apple was forced to pay Fujitsu outright for the trademark rather than pursue it through a lawsuit.

The lesson learned here? By registering a trademark, you are the legal owner of that name and like Fujitsu, you can decide whether you want to fight the “other guy” for trademark infringement or take the money and run.


Microsoft, Apple in iPod patent tussle

Cisco lost rights to iPhone trademark last year, experts say

Microsoft registers trademark--19 years late

Trademark Registration, Apple's Ipad Problem