David Canton – for the London Free Press – October 24, 2006

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Apple Computer has come under fire for attempting to stop others from using certain “pod” words. Trade-mark owners are often in the position of risking the loss of rights to trade-marks if they don’t prevent others from using those marks.

If a trade-mark becomes a generic term for a product, it ceases to be a trade-mark. Trade-marks are valuable. No business wants to lose them.

Some critics suggest Apple is going overboard by aggressively pursuing anyone using the term “Pod” through cease and desist letters.

Apple is the registered owner of the iPod trade-mark. Sales of the portable multi-media device have been wildly successful — giving rise to an entire community that shares, listens and watches their media using the iPod. In the wake of Apple’s success with iPod, the term “podcasting” has developed to mean the recording of an audio file made available on the Internet for downloading to a personal audio/video player.

Apple recently sent a trade-mark cease and desist letter to a site called Podcastready, claiming trade-mark violations. It took the position that the term “myPodder” infringed on its trade-marks and that it causes confusion.

The difficulty is that while legal tests can be cited to determine when a trade-mark is not distinctive in the first place or loses its distinctiveness, they are not always easy to apply in practice.

The response from the podcasting community has been extremely critical of Apple’s approach, suggesting podcasting is not a trade-mark of Apple as it has become part of the vernacular.

Many podcasters suggest any publicity for the term “pod” only serves to bolster the reputation of Apple and Apple products. They suggest any action to dissuade individuals from increasing the popularity of the Apple product only prejudices Apple in the podcasting community.

Whether this particular instance is an Apple trade-mark violation is an important issue for Apple. It faces a real danger in allowing its trade-mark to become part of the vernacular.

The bigger question is whether it is time to reconsider the law in this area.

Perhaps it should be modified to consider the way the Internet and business have developed. Principles restricting use by others that may have made sense decades ago, may not be as workable today.

A trade-mark should clearly not be useable by others for similar wares and services and it’s not in any trade-mark owner’s interest for their trade-mark to become generic or descriptive of a product.

The conundrum the law puts a business in over the need to clamp down on use despite the consequences is not a welcome one.