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| Chilling Effects Clearinghouse > Trademark > Weather Reports > Apple Steps up to Podium with TM Claims | 
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|  Apple Steps up to Podium with TM ClaimsResearch Staff, Chilling Effects Clearinghouse, September 11, 2009 Abstract: Apple has once again objected to the use of the suffix "pod" in the names of two products: Pivotal's "Podium" and "FlyPod." Last March, _Ars Technica_ reported that Apple sent a cease and desist letter to iPhone and iPod accessory maker Pivotal, objecting to Pivotal's use of the suffix "pod" in the names of two of its products, the Podium (a hands-free stand) and FlyPod (which doesn't appear on Pivotal's website yet). The move was consistent with Apple's prior efforts to prevent uses of the word "pod" in product names, for instance, as we reported here: Apple goes to bat over "Pod" trademark. Apple's objection to the name "Podium" in particular has engendered a negative response and some confusion within online communities, as indicated by the comments exchanged at the _Ars Technica_ link above, as well as the comments here at Appleinsider and here at another blog, because it isolates only the "pod" suffix in iPod, which many readers point out is both an integral part of the word "podium" and a common word in its own right. Can a trademark owner corner the market on the use of a syllable? It depends on what kinds of uses we're talking about. McDonald's has successfully blocked others from making particular commercial uses of a syllable ("Mc") by arguing that the syllable has become so closely associated with McDonald's that certain competitors' use would confuse consumers into thinking that the competitor's product was associated with or made by McDonald's. In a famous New York case, McDonald's successfully made this argument against a dentist's office that called itself "McDental." (That was McDonald's Corp. v. Druck and Gerner, D.D.S., P.C., d/b/a McDental, 814 F. Supp. 1127 (N.D.N.Y. 1993).) However, whether or not the use of the trademark infringes on another user's rights is always a function of the trademark law in the jurisdiction. The _Wall Street Journal_ reported this week that McDonald's lost a lawsuit in Malaysia against a restaurant calling itself "McCurry," arguably a much more confusing use than "McDental," but the court was applying Malaysian law. For more info, see "McCurry wins Big McAttack in Malaysia." United States federal trademark law also provides trademarks that are legally considered "famous" with protection against "dilution." The Trademark Dilution Revision Act of 2006 (15 U.S.C. section 1125(c)) defines two kinds of "dilution": tarnishment, where the similarity between a famous mark and another use of the mark harms the reputation of the famous mark, and blurring, where a use of a mark "impairs the distinctiveness of the mark." Neither of these uses requires that consumers be confused, as standard infringement does. The repetition of just part of a trademark was ruled to cause dilution by tarnishment when a purveyor of various adult-only entertainment devices calling itself "Adults R Us" was successfully sued by the owners of "Toys 'R' Us." (That was Toys 'R' Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. 1996).) Apple has registered both "iPod" and "Pod" as trademarks. According to the USPTO trademark search database, TESS, Apple first filed to register the suffix "pod" separately in 2004. Registration isn't necessary to create trademark rights (which are created by using a trademark in commerce) but it does give the public notice of a trademark owner's claim to particular rights. Courts use registration as prima facie evidence of the validity of a mark, ownership of the mark, and exclusive rights to make certain commercial uses of the mark in reference to the registrant's goods or services. In fact, "pod" is not only a fairly common word, but also a fairly common trademark, with many registrations for different uses of the word in reference to different products. Whether one of these uses might infringe on the rights of another depends on a number of factors determining whether the use is confusing to consumers or causing a "dilution" of the trademark. For more information on the extent and limits of trademark rights, see Trademark.
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