August 15, 2006
Apple’s Attempts to Monopolize “Pod” Show Need for Congress to Restrict Trademark Dilution Law in Favor of Free Speech
Statement of Paul Alan Levy, Attorney, Public Citizen Litigation Group
At a time when consideration of the Trademark Dilution Revision Act has stalled in Congress because of concerns about undue impact on free speech, the recent news that Apple is trying to gain monopoly control over the use of the word “pod” could not have come at a more opportune time. This new Apple campaign points out the problems with dilution law and the reasons why Congress should be thinking about containing it instead of expanding it.
As consumer advocates, we support the prohibition on trademark infringement because trademarks play a vital role in helping consumers distinguish between the goods and services that come from businesses on which they have learned to rely to supply what they want in the marketplace from impostors who are trying to trade on some other company’s hard-earned reputation. Dilution law is far less defensible because it extends protection to trademarks as an asset apart from their sole function of protecting consumers against confusion and is used to suppress completely truthful and non-confusing commercial speech by other merchants. The Trademark Dilution Revision Act would overrule a line of cases from the U.S. Court of Appeals for the Second Circuit that bar dilution claims for descriptive trademarks whose “distinctiveness” is only acquired and not inherent in the product’s name. Apple’s demand letters against other companies’ use of the word “pod” invoke both infringement and dilution claims.
Trademark rights in the word “pod” ought to be limited to cases of real confusion, not dilution cases in which nobody is confused. In Apple’s case, the company chose a product name that attached the letter “i” to a word in common usage that refers generally to storage containers, drawing its meaning from plant parts such as peapods. The word “pod” has come into more general use for detachable compartments or casings in a variety of contexts. One could understand Apple’s being upset about another company’s use of the term “iPod” to describe similar products. But now Apple is laying claim to the underlying word “pod” itself, potentially depriving other companies – not to speak of the general public – of the right to use this term to describe their activities or their products.
Reports of Apple’s legal challenge to the use of the term “TightPod” to describe a tight-fitting fabric case for laptop computers – very close to the core meaning of the word “pod” – suggest that the small business owner who invented this name is ready to surrender because she just can’t afford to fight a big company like Apple. Like any business person, she needs to make a decision about what is best for her company, but the general public would be poorer if Apple can set the precedent that it is entitled to exclusive use of “pod.”
If the term “pod” can no longer be used for a tight-fitting carrying case, one supposes that moving or transportation companies would have to stop using storage pods, and Star Wars fans would have to stop talking about podracing or All Terrain Attack Pods. The Association for Computing Machinery would have to rename their annual Symposium on Principles of Database Systems (PODS). Also off-limits would be the Pipeline Open Data Standard (PODS) group. And would Giant Food have to come up with a new name for its online shopping service, peapod.com?
Members of the public should urge Congress to write the trademark laws in a way that makes such abusive trademark claims more difficult, not easier.
To read more about unintended consequences of the Trademark Dilution Bill (H.R. 683), click here.
To read a letter Public Citizen and other consumer groups sent to the House Committee on the Judiciary regarding H.R. 683, click here.