APPLE sues those who use "Podcast" term

[Vision]

Below is the article from MicroPersuasion.com.....looks like the appealing term "vidcasting" will now gain alot in popularity

Apple Wants to Own "Podcast" Trademark
Apple has issued a cease and desist to Podcast Ready, claiming that the terms "Podcast Ready" and "myPodder" infringe on Apple's trademarks, and that they cause confusion among consumers. Wired notes that Apple has been cracking down on use of the word "pod" by lots of different people.

Clearly this means that Apple is trying very hard to own the podcast trademark and I would not be surprised to see a lot of different products and sites change their names. However, like with Google, the genie is out of the bottle here. Podcast is in the dictionary and part of the vernacular. Still, I am not a lawyer nor do I play one on TV so it's hard to say what's right here by law. From the naked eye it seems very aggressive to me.

 

[hugegrowth]

I think podcast is too familiar a term now for them to trademark.

 

[Theo]

Excerpt from a denied application to register the name "podcast" - not by Apple:

Here applicant seeks registration for the term PODCAST for “SOUND RECORDING FEATURING AUDIO INFORMATION FOR DOWNLOAD-SPOKEN WORD AND MUSIC.”

The term PODCAST may be defined as:

A free, downloadable audio file that can be listened to on your computer--where you can burn it to a compact disc--or on an MP3 player or iPod to enjoy on planes, trains and automobiles. Podcasts were originally thought of as amateurish audio versions of blogs, but no longer; ESPN, NPR, the BBC, Newsweek, news commentators and other highly respected people have podcasts readily available.” (See attached definition from www.netlingo.com)


Or



An audio programme in a compressed digital format, delivered via an RSS feed over the Internet to a subscriber and designed for playback on computers or portable digital audio players, such as the iPod. (See attached definition fromhttp://en.wiktionary.org)


The mark immediately describes and names the characteristics and features of the goods. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1) of Trademark Act.

Additionally, the examining attorney submits that the term PODCAST may be unregistrable because it is generic or informational for applicant’s services. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142. Applicant’s mark is so common in the field that it appears to be unregistrable. (See attached evidence from a search of the Internet). The attached sample of the Internet evidence submitted is evidence of the public’s perception of the term.

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following.

 

[whitebark]

I do see why they want to protect their intellectual property rights in some cases but in others they do themselves a dis-service. Let's say I started a site called podcasting.com and it was all about how to podcast using apple's product. It didn't say it was a site built and maintained by apple, just a site on how to use their product. Shutting such a site down, especially if popular makes little sense. It is marketing their product for free. Sure the site could have links to buy the product and thus be profiting, but again, so would Apple.

Some of these decisions surely must come from the law departments vs the marketing departments of these large corporations. They should imho look at each case individually and judge the merits of the use of the TM.

 

[labrocca]

Applicant’s mark is so common in the field that it appears to be unregistrable

Let's see Apple try to get around that precedent.

 

[dotbidz]

apple is a little late for this...