Mark Chally, creator of the PodPod portable device stand, currently faces the wrath of Apple's legal department due to his attempt to trademark the word "PodPod." This is part of Apple's ongoing effort to trademark the word "pod," which could result in the company having an unfair advantage in the podcasting market – assuming that's what it ends up being called. (If you don't know what this is about, click here and here for some background.)
Here's his letter to me, minus the introduction:
In brief, I filed the mark "PodPod" September 8, 2004, having first used it March 18, 2003. I have since successfully defended it from other potential users. Thus, it appears I have the rightful "first use" claim. PodPod may be essentially the same as "pod," though I was initially unaware of that. Although obtaining "pod" was not the aim of the trademark, it may have led to considerable controversy. It would appear that Apple has subsequently asserted it wishes to own the "pod" mark, perhaps due to the success of the term "podcasting," which I have never used in any product context, nor did I anticipate would become an issue.
Owner of a newly-announced 2nd generation iPod, I chose to create the PodPod acrylic easel , which allows the user to tastefully display personal electronic components upright. I worked out of my garage to fulfill a demand for a product that I believed had not yet been supplied by the marketplace. This was before Apple had created the iPod dock, so it was then difficult to use in an office environment without scratching the stainless steel surface. Had the dock existed, I would not have created the PodPod–a product which adds value to any device which rests on it, and thereby, to the stock of any company which produces such a product. Since creating it, I have been forced to successfully defend the PodPod mark, which I believe I legally own and have the moral right to use.
In response to your query, I can say that Griffin Technology announced a product they called "PodPod" around summer 2004. I am libertarian, and had not been zealous to file for trademark protection, but had been advised by legal counsel that if I did not protect the mark, I could lose the right to use it, and might otherwise be forced to defend it in the opposition's legal venue. My legal counsel asked them to stop using the "PodPod" mark. As a result of discussion between my counsel and theirs, Griffin agreed to stop using it. I am aware of no "ill will" between our parties.
Much later, I received a letter from legal counsel for Apple, requesting that I abandon my claim to the PodPod mark. I have since repeatedly made generous offers to release my claim to the mark, in exchange for adequate compensation for the costs associated with developing the product, defending and transferring the mark, and destroying existing inventory. These offers have been refused. I believe common sense suggests that any company in their position would have already spent several times my offers–solely in compensating legal counsel in this matter–which I find disturbing.
Apple claims there may be "confusion" between the iPod and PodPod marks. I consider this claim absurd. No one would confuse my web site or my hand-crafted product with any endeavor by Apple. Apple has also sold products bearing the syllable "pod" in their names–online and in their retail stores–both well before and well after approaching me in regard to the mark. I doubt they approached any of the manufacturers of these and other products bearing "pod" in their marks, before approaching me. One might suspect that they were unable to obtain the "pod" mark because of the earlier application for the PodPod mark, as some have claimed the trademarks are essentially the same.
Why would a company whose executives believe it owns "pod" stock items from other companies bearing it in their trademarks? Why would they apply for the mark if they believed they already owned it? An astute observer might suspect that Apple themselves do not believe they own the mark–until its rightful owner is forced to surrender it. Apple similarly struggled with another word in the past. I doubt their claim to the syllable "Mac" was resolved to their liking, and other parties use it with impunity today, with no confusion that they are selling Apple products.
I find it disturbing that this matter was approached in the way that it was, and that it has not been resolved, even though I have repeatedly attempted to facilitate generous and amicable resolution. As the founder of an enterprise started in my personal garage to another which started that same way, I wish to appeal to Steve Jobs and Apple to reconsider their stance on this issue.
Sincerely,
Mark Chally
Creator of the PodPod acrylic easel
