Pivotal, producer of Podium, the leading desktop stand for iPhone (http://www.podiumrevolution.com), announced today that it has received a Cease-and-Desist Letter from Apple Inc. regarding use of the name PODIUM with Pivotal's stand. Legal counsel for Apple Inc. claims that such use infringes Apple's trademark rights, stating that the "POD" component in the name of Pivotal's PODIUM stand is a direct reference to the IPOD and Apple's pending POD trademark registrations.
"If you look at our product and then look up the word Podium in the dictionary, I think it becomes pretty clear where our branding inspiration came from" states Scott Baumann, President of Pivotal. Mr. Baumann continues, "We were certainly surprised by the allegations and will be consulting with our legal counsel regarding this matter".
A complete copy of the Cease-and-Desist Letter is attached.
March 11, 2009
Re: Infringement of Apple Inc.'s Trademarks
Dear Mr. Hansra:
We represent Apple Inc. in intellectual property matters.
Our client has asked us to contact you about your client Procreate Inc. ' s intent to use applications to register FLYPOD (Serial No. 77/562,969) and PODIUM (Serial No. 77/562,967) as trademarks for "Electronic andlor mechanical accessories for portable and handheld digital electronic devices, namely, stands, holsters and/or docking stations specially designed for holding portable and handheld digital electronic devices, and battery chargers, electrical connectors, wires, cables, adapters and remote controls for portable and handheld digital electronic devices" in class 9. Based on the marks, your client's applications, and its current use of these marks, it is clear that the goods are intended for use with Apple's IPOD and IPHONE brand products. Apple is concerned that your client's use of the marks for such goods - which are identical, substantially related, and/or complementary to Apple's own IPOD brand products - will confuse consumers into believing Apple is associated with your client's products,
when it is not.
Apple has used its IPOD mark since at least as early as October 2001. Since that time, the IPOD trademark has become famous. Moreover, the term POD has also been adopted and used extensively in the marketplace by consumers as an abbreviation to refer to Apple's IPOD player. The IPOD and POD marks indicate to consumers that a broad range of products, including portable electronic devices, computer software, and related goods and services bearing those marks and marks similar thereto originate from or are sponsored or endorsed by Apple. Apple owns U.S. Trademark Registration Nos. 2,835,698 and 3,089,360 for its IPOD mark covering digital electronic devices and computer software. Apple also owns U.S. Trademark Registration No. 3,341,191 covering a full line of electronic and mechanical parts and fittings for digital electronic devices, as well as other goods. In addition, Apple has filed trademark applications for IPOD worldwide, with registrations covering more than one hundred international jurisdictions. Apple also owns a pending application for POD and international registrations and applications for POD. In sum, Apple has expended a great deal of time and money to build up considerable worldwide recognition and goodwill in its IPOD mark.
FLYPOD and PODIUM.consist in substantial part of the dominant suffix of Apple's IPOD mark and incorporate Apple's POD mark in their entirety. In light of the nature of Procreate Inc. 's goods, there can be little doubt that Apple's IPOD mark is known to your client and that the "POD" component of Procreate's marks is a direct reference to the IPOD mark. Your client's website expressly advertises "the ultimate iPhone experience." Moreover, the stylization of Procreate's website and product designs are reminiscent of Apple's own brand stylization. The shape of the PODIUM product itself even mimics the trade dress and design of the supports for certain models of Apple's iMac computers. (See Application No. 77/402,800.) Because FLYPOD and PODIUM are similar to Apple's IPOD and POD trademarks and your client's products are all either identical or closely related to Apple's IPOD brand products, use of these marks will inevitably confuse consumers into mistakenly believing your client's products are associated with Apple, thereby infringing Apple's trademark rights. Such use of your client's marks also dilutes the distinctive quality of Apple's IPOD mark, in contravention of Apple's rights under the Federal Trademark Dilution Act. The law provides for injunctive relief and recovery of monetary damages and attorneys' fees by Apple under such circumstances.
We imagine that it was not your client's intent to create consumer confusion or otherwise affect Apple's trademark rights. However, as a trademark owner, Apple has a duty to protect its consumers and its valuable intellectual property. We ask, therefore, that your client abandon the above applications and agree to cease all use of FL YPOD and PODIUM or any other mark similar to or dilutive of any of Apple's marks, expressly including, but not limited to, any mark or name containing "IPOD" and/or "POD."
Apple hopes that this matter can be resolved quickly and amicably. If it has your client's cooperation in immediately abandoning the pending applications, ceasing all use of FLY POD and PODIUM, including as a domain or business name, and in providing the assurances requested above, we believe Apple would be willing to provide a reasonable period oftime for your client to phase out use of the FL YPOD and PODIUM marks. If those issues can be resolved quickly, Apple would be inclined not to pursue possible claims relating to the configuration of your client's products, although it would reserve its rights to do so should confusion related thereto appear likely. That period of time and Apple's position on Procreate's product configuration would not be made available if Apple is forced to escalate this matter. We ask that you contact us with your response by March 25,2009. We have taken a 90-day extension of time to oppose the FLYPOD and PODIUM applications in order to pennit the parties to resolve this matter informally. Of course, nothing in this letter should be construed as limiting Apple's rights or remedies, all of which are expressly reserved.
Very truly yours,
TOWNSEND AND TOWNSEND AND CREW LLP
Alexandra M. Sepulveda
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