Does iPod = eBay? Trademark Protection and Dilution

Volume 2 / Edition 11

This Week; Focus On: Does iPod=eBay? Trademark Protection and Dilution

Throughout our years in business, BNI has conducted many corporate trademark and copyright infringement investigations - ranging from the sale of illegal post-concert product at multi-venue performances to unauthorized re-published literary works (which were later claimed by the perpetrators to have been obtained through "subconscious creative osmosis").

An interesting situation we are all watching at this time is Apple's claim of the word "pod" as its own trademark in all situations. The worry is that any use of "pod" in a trademark could dilute the the "iPod" mark.

First, let's define what a trademark is. A trademark is any set of words or a design that identifies goods or services with a particular origin.
Next then, what is trademark dilution? Trademark dilution is reserved for strong trademarks. Those trademarks with the strongest in identity in a market cannot be used in other noncompeting markets. This is to avoid "diluting" the strong, recognizable mark by its use in noncompeting markets. Example, a line of housewares bearing the name eBay, completely unrelated to the EBAY online auction giant, is at least, trademark infringement and certainly trademark dilution. But can Apple make the same claim for all uses of the word "pod" based on its popular "iPod" portable music device?

Of course there are many other factors that will come into the decision once handed down. Will "pod" be disallowed for usage in other noncompeting markets? Will the use of "pod" in other nonApple related products blur the connection in the consumers' minds between Apple's mark? Is the "iPod" mark somehow weakened by a defendant's other "pod" use? What if the defendant's "pod" use is unsavory, unwholesome or for a vastly inferior product?
The two issues in any upcoming fights will be: Is "iPod" as a mark strong enough to warrant that it can be diluted and can any mark with "pod" in it dilute "iPod"? Given that podcasting is already in popular use and most podcasts (70%) are accessed through Windows, it will certainly be interesting to see what the future holds in this specific situation. Also, Apple has a new trademark "Numbers" for its not-yet-in-use spreadsheet program. )We're researching the trademark registration for the word "common" as we go to print... )

Feel welcome to contact BNI with any trademark, copyright and or patent investigations you may need conducted.

BNI investigators: Street smart; Net savvy.

I look forward to any comments you may have or and questions I can answer for you.

Sincerely,

Lina M. Maini
Editor, The Beacon Bulletin
CEO, Beacon Network Investigations, Inc.