Arik Hesseldahl

Recent Posts by Arik Hesseldahl

Cisco “Surprised” at Trademark Lawsuit From University

lucy-surprisedIn response to a lawsuit over the use of the phrase “Tomorrow Starts Here” in a marketing campaign, networking giant Cisco Systems says it is “surprised.”

I just received the following statement from a Cisco spokeswoman:

“We were surprised to learn that East Carolina University filed a complaint this morning. Cisco takes intellectual property rights very seriously, and we are confident that our new campaign does not create any confusion in the marketplace.”

Cisco is being sued in federal court by East Carolina University, the second-largest institution of higher learning in North Carolina (UNC is the biggest). ECU objects to Cisco’s use of the phrase in a branding campaign launched late last year.

ECU registered a trademark on the phrase in August of 2010. In its filing with the U.S. Patent and Trademark Office, it claims use of the phrase in connection with “education services in the nature of courses at the university level.”

Cisco registered to use it in December of 2012 for the following purposes:

Computer hardware and software; computer hardware and software for interconnecting, managing, securing and operating local and wide area networks and telephony systems; computer hardware and software for transmitting, securing, storing, uploading, posting, displaying, tagging, editing, organizing and processing data, audio and video; computer hardware and software for conferencing services; computer hardware and software for instant messaging and presence identification; telephones; wireless communications devices, namely, wireless hardware and software for the transmission of data, audio, and video; call processing software for the transmission of data, video, and audio; downloadable electronic instructional materials, namely, manuals, guides, test materials, and magazines in the field of technology; computer software for use in social networking; electronic devices and software for recording, organizing, transmitting, storing and/or reviewing voice, audio, video, and/or data files; routers; switches; computer network adapters; computer servers; communications servers; computer hardware containing network security functionality, including firewalls, data encryption, and/or interoperability with network security protocols; set-top boxes.

Proving infringement generally means proving that the use of a trademark hurts the ability of one party who has registered for the right to use it will be compromised or that the marketplace will be confused. While ECU was certainly the first one — two prior trademark registrations, including one dating to 1995 by Time Warner, have been abandoned — Cisco will apparently argue in court that its use of the phrase to sell networking and computing gear shouldn’t be seen as interfering with the university’s ability to recruit students. Of course, that’s assuming the case ever gets that far.

Certainly ECU has the right and the duty to defend against the infringement of trademarks it owns. But here’s another consideration that can’t be discounted: ECU has by luck of the draw found an opportunity to sue one of the richest companies in the world.

Cisco had a combined $45 billion in cash and investments on its balance sheet at the close of its most recent quarter.

Meanwhile, ECU is a state school, and like most state institutions in the country, it’s facing a budget crunch. Chancellor Steve Ballard said the school is facing the “worst budget crisis in its history.” The school ran a $286 million operating loss in the 2011-2012 fiscal year. In 2011 the state of North Carolina cut ECU’s budget by 16 percent.

A successful trademark infringement lawsuit might just help close that budget gap. So would a settlement.

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The problem with the Billionaire Savior phase of the newspaper collapse has always been that billionaires don’t tend to like the kind of authority-questioning journalism that upsets the status quo.

— Ryan Chittum, writing in the Columbia Journalism Review about the promise of Pierre Omidyar’s new media venture with Glenn Greenwald