Apple v. Sector Labs: Battle over VIDEO POD goes to trial

After four long years of extensions and multiple motions for summary judgment, Sector Labs finally goes to trial with Apple this month over its trademark application for the name “VIDEO POD.” One of the first small companies targeted by Apple for its use of “pod” in a name, Sector Labs is the only company to go to trial against Apple for its applied-for trademark. A search of the Trademark Trial and Appeal Board (the “TTAB”), the US Patent & Trademark Office’s venue for handling opposition proceedings, reveals that Apple has filed over 100 opposition proceedings against various companies that include the word “pod” in their name. Of the seven opposition proceedings still pending, the one against Sector Labs is the only one that has entered the trial phase. Ana Christian, lead counsel for Sector Labs, says “Many entrepreneurs and start-ups just don’t have the emotional or financial resources to take on large corporations like Apple. For a small business owner, an attack on your name can be very intimidating and an opposition proceeding can completely consume your life.”

Sector Labs and its founder, Daniel Kokin, are too tenacious to give up. Kokin, an inventor, explains, “My team started working on the Video Pod [product] in 2000 and it took us years to go from prototype to funded. At that time, Apple didn’t even enter our minds as a competitor. Now it’s 2010 and I still don’t think Apple is interested in video projection, but I’m supposed to rename our product because Apple also uses ‘pod’?” Although this opposition has been a main focus in Kokin’s life, he doesn’t regret a moment: “I don’t think Apple expected me to fight back. I joke around that I should have gone to law school in the time it has taken this opposition to go to trial. I hope this case will motivate other entrepreneurs to defend themselves in similar situations.” After carrying the torch for seven years since he filed the intent-to-use trademark application for “VIDEO POD”, Kokin has gone from representing himself, having his previous attorneys withdraw, to now having two independent attorneys working on his case. Stewart Kellar, E-ttorney at Law, joined as co-counsel just prior to trial.

Sector Labs began developing a portable video projector in 2000, focusing on creating a projector for the masses in a sleek, futuristic form factor. Sector filed an intent-to-use trademark application for “VIDEO POD” in 2003. Apple filed an opposition to the application in 2007, alleging claims of likelihood of confusion and dilution of its famous mark “IPOD.” Although Apple’s actions are not unprecedented (the company is known for vigorously defending its intellectual property) they do give pause to small business owners trying to brand their products. As Kellar describes it, “Apple is attempting a common tactic among large corporations, which is to carve a niche of trademark protection around everyday language, be it a pod, a pad, or even a book. Businesses choosing trademarks that get close to words claimed by these large corporations should be wary of lawsuits, even in the absence of any consumer confusion. This causes problems for entrepreneurs who have neither the money nor the wherewithal to defend a trademark suit. In terms of motivation, Daniel [Kokin] is obviously the exception to the rule.”

Kokin may have reason to be enthusiastic. In April, 2010, the TTAB denied Apple’s last motion for summary judgment, forcing the parties to go to trial. A final decision on VIDEO POD could be reached by mid-2011 and if Sector Labs prevails, it would be a significant milestone for small businesses across the country. Sector Labs’ trademark rights in the VIDEO POD mark would be retroactively effective as of his application date of February 14, 2003, over two years before Apple released their iPod Video, now known as the iPod Classic. “The benefit of filing an intent-to-use trademark application is that once the mark is used and becomes registered, its protection reaches all the way back to the date of the application. That means if VIDEO POD is granted registration, it will receive protection pre-dating the iPod’s debut into the video realm.” says Christian.

You can follow the action here: http://ttabvue.uspto.gov/ttabvue/v?pno=91176027&pty=OPP

FOR IMMEDIATE RELEASE

9/21/2010

KILL DATE
1/2/2011
MEDIA CONTACTS:
Ana Christian, Esq.
Lead Counsel for Sector Labs
415-933-0533
ana@anachristianlaw.com
Stewart Kellar, E-ttorney at Law
Co-counsel for Sector Labs
415-742-2303
stewart@etrny.com