Apple Warns Companies About 'Pod' Naming

eldavojohn writes "In what may be a case of trademark trolling, Apple has issued warnings to makers of other electronic devices containing the word 'pod.' Two companies have been asked to remove the word from their products. Why might this be a mean action by Apple? These two companies don't manufacture MP3 players as one would think would cause confusion. From the article:

Profit Pod is a device that compiles data from vending machines, while TightPod manufactures slip-on covers designed to protect electronic products such as laptops and MP3 players.

Back in the day, if someone was calling an electronic device a 'pod,' I would have thought they were talking about Line 6's Guitar and Bass pods (which I believe have been around for a while). How come they aren't warning Apple about their iPod naming?"

I Did Some Research

[eldavojohn]

Hey, I did a bit of research on Line 6. According to Wikipedia [wikipedia.org], the iPod debuted on October 23, 2001 (or at least was unveiled).

Thanks to the internet archive, there is evidence of Line 6 having fully developed pods for sale during 2000 [archive.org] and 1999 [archive.org].

I mentioned this in the summary because I used to play bass pretty regularly and I recall around 2002 when all of the sudden these devices were the de facto standard for high quality multi-effects. Everyone came into the store I worked at asking for "pods." I recall when iPod came out that I was figuring there might be fall out but it never came. They're both associated with playing music but with completely different markets. I only wonder what logic Apple is using to sue these companies using the term Pods.

Afterall, there's a company called Pods that owns www.pods.com that rents pods for people to move their stuff in and that was established in 1998. I'm sure they've trademarked 'pod.' It's so funny how Apple is sending to cease and desist letters to companies when they should send themselves one. What a crazy double standard.

The Golden Rule, Corporate Style

[hey!]

When you were small, Apple Records could put the squeeze on you for being "Apple Computer". But when you get big, you get to do to unto others as once you hoped would not be done unto you.

Obvious answer

[mhazen]

How come they aren't warning Apple about their iPod naming?

Because unlike Apple, they don't have a history of being overly litigious. Apple has sued or threatened to everyone from their own customers, to Google.

Trademark dilution

[russotto]

The problem is an absolutely stupid and misguided part of US trademark law called the Federal Anti-Dilution Act. This allows owners of famous marks to go after users of similar marks in any field, even fields where there would be no confusion. There's no doubt that "iPod" is a famous mark. It's the trademark winner-take-all act.

Though to be fair, Apple might have a case against a maker of MP3 player sleeves even without anti-dilution.

In a Different Community, It Was The Standard

[eldavojohn]

Listen, I played bass, I worked at a music store that sold effects pedals. "Pod" meant Line 6's guitar pod. People came in and literally said, "I'll take one pod, please." I'm not kidding you, these things were huge and still are. Go into your local Guitar Center or what ever you have and say, "I'll take one pod, please." You can bet your ass the guy at the counter will pull up a guitar pod and ring it up right there.

If you want more evidence, read this article [sweetwater.com]:

By the end of 2002, the Line 6 people had proven themselves by designing what were unquestionably (to me, in any case) the best amp and effects models available, including the remarkable Vetta amplifiers and the best selling POD modules.

It's very popular among artists, to quote Wikipedia [wikipedia.org]: "Their products are used and endorsed by artists such as James Hetfield of Metallica, Matthew Bellamy of Muse, Trent Reznor of Nine Inch Nails, and The Edge of U2."

Re:Yeah...

[daveschroeder]

I didn't want to mention this in my original post, because the slashdot music-y types - which there are probably a lot more of here than in the general population - would think it was trolling or flamebait, but no: Line 6's products are NOWHERE NEAR anywhere as well known as "iPod". I'm sure they're very well known in guitar circles. I'm sorry to report that is a MUCH smaller market segment than that of "everyone else". Walk down the street and ask people "Do you know what a Line 6 Bass Pod is?" and then ask "Do you know what an iPod is?" and you know just as well as I do that the difference will be stark. Just because creative musician types around slashdot know what it is doesn't invalidate the truth of that point.

Also, it doesn't really matter if Line 6's products came first: they clearly didn't do anything to defend the mark in the context of the iPod mark, period, so the point is moot.

Re:Yeah...

[hankwang]

The iPod is practically [...] synonymous with "portable music player"

Maybe in the US. Here in Netherlands they are commonly called 'mp3-speler' (=mp3 player).

nearly all - over 92% - of all hard drive-based portable music players actually are iPods.

Again, maybe in the US. The US is not the whole world. From what I have seen a typical electronics store here devotes some 5 to 10% of the digital audio player shelve space to iPods. For HD-based players is might be a bit more, but nowhere near the majority. It might have to do with the fact that in the first few years, the iTMS would not sell outside the US.

My mp3 player is an iAudio which I use almost exclusively for Ogg Vorbis files. Maybe Apple should also go after them for using the 'i'?

Can Apple actually protect the term "Pod"

[rayzat]

One of the definitions of pod is "Something resembling a pod, as in compactness. " IANAL but I did recently take a class on patents, trademarks, and copyrights and one of the things we discussed was that trademarks that include generic terms had trouble being enforced. We specifically talked about Krispy Kreme. Krispy Kreme's trademark is specifically on Krispy Kreme with K's. They have tried to sue several people for selling products, even donuts with the name crispy cream, but when business have fought back the courts have always pretty much ruled that it wasn't a violation of trademark and the only way it would be was if the company specifically called it a Krispy Kreme something or other.
That being said Apple is probably just trying to cast a wide net in trying protect it's iPod trademarks. I think that the precedent set by other products( I have a Game Pod sitting on my desk that I got back in 98 that has 40 different card games) that pod generically defines any product that is compact in nature.

Re:Yeah...

[daveschroeder]

I didn't claim to know what their motives were. I just said they apparently chose to not "warn" or defend against iPod; the grandparent was making it out to be some huge deal that he did some "research" and, egad, found that Line 6's products were around before the iPod (duh), and then went on to ridiculously say that Apple should be sending itself C&D's. Huh? It's up to trademark owners to decide when they do and don't defend their mark, just as Apple is doing against these other "pod" products here, whether you agree with it or not. I'm not sure how you got what you posted out of my comment. The only point I've made in my posts is that if it can ever be successfully argued by anyone that you didn't vigorously defend your trademark against infringement under all circumstances, you could lose it - and lose associated rights to defend it against legitimate threats. It's much more likely that people would choose to go after - or capitalize on - a product as universally well known and profitable as iPod.

Re:In a Different Community, It Was The Standard

[low profile]

Or perhaps another common word like windows!!! even though there were other windowing products (X-Windows) with windows in th name proir to the MS product. Proceed @ 11.5740741uHz

Re:Yeah...

[russ1337]

you'll have to call it an escape capsule. Until the next xbox gets tradmarked an xcapsule, then your fukced.

Off topic: it was after WW1, not WW2

[Secrity]

Bayer AG lost the Bayer and the aspirin trademarks in North America when the Treaty of Versailles was signed after WW1. Sterling Drug bought the Bayer and Aspirin trademarks from the US government in 1918 and then lost the US aspirin trademark in 1921 because it had been genericised (Aspirin is still a trademark in Canada). Bayer AG bought the company that owned the North American Bayer tradmark and the Canadian Aspirin trademark in 1994. Bayer, a former member of I.G. Farben is selling insecticide in the US under the Bayer brand. Google for IG+Farben+insecticide+bayer+zyklon You might also want to Google for Fritz+ter+Meer+bayer+1963

Re:In a Different Community, It Was The Standard

[ketamine-bp]

well, it's "X window" rather than "X windows"..

Re:Yeah...

[john83]

I use vacuum, though my mother uses "hoover". And I'm Irish, not British, my Canadian friend. :p

Paracetamol is an international, non proprietary name, while acetaminophen is unique to the US, AFAIK. Both are abbreviations of the chemical name.

Re:Yeah...

[Anonymous Coward]

> To turn this question around, why don't we see stories on slashdot every 10 minutes when any other company goes through the same, tired old motions to defend their own marks?

If it was a story about any other company, you wouldn't even bother to read it, let alone post more than 20 replies. Don't want to be labeled a fanboy or a shill? Don't act like one.

Re:Yeah...

[flooey]

Actually, it is a defense. As I said, someone can claim their product containing the word pod is based named upon podcast, and as you've said, it's in the public domain. So if I create new piece of hardware called the podPlayer and they pursue me, my defense will be "it's a player which plays files which have a podCast format. The name podPlayer even indicates it's podPlayer -- a player of pod formats.

Unless & until you can show me how using the word pod in a name will stand up because Apple can claim it came from iPod and not from the pod in podCast, you won't have a case.[1] If you believe otherwise, I'd like to see logic beyond ukase or fiat.

I don't think you understand how trademark law works.

"Podcast" isn't being claimed as a trademark by Apple. Anybody can use the word, as a normal word in normal conversation, with no problems.

However, when you go to sell something under a brand name, infringement happens if there is a significant chance of consumer confusion between your product and an existing product, or if your brand is likely to dilute the distinctive qualities of a famous trademark. Where you got the name makes no difference. If you wanted to sell the podPlayer, the courts would most likely rule that you're using a name that dilutes the iPod mark and prevent you from doing so. You can't say, "But I got the name from something else", they don't care. It's not like copyright where there's a legal prohibition of derivative works, the mark being a derivative or not isn't a factor.

Specifically, 15 USC 1114 prohibits, in part, "use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive" where 15 USC 1127 says "The term 'colorable imitation' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive."

Also, 15 USC 1125 says, in part, "The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection."

You can see that there's no requirement that the infringing mark be a derivative of the original, all that matters is that the two are similar.