Property, intangible

a blog about ownership of intellectual property rights and its licensing

UPDATE: Who Owns Thunderbolt? I Thought Apple and I Was Wrong

Apple and Intel appear to have dueled over ownership of the Thunderbolt trademark for “dual protocol I/O [input/output] technology,” i.e., some combination of port, connector, cable and underlying technology (not to be confused with this Thunderbolt – application here – which Apple is set to oppose). Reportedly, Intel had technology by the name of “Intel Light Peak” and was approached in 2009 by Apple to modify it, with the result being the current Thunderbolt technology.

Apple filed applications for the Thunderbolt trademark, filing the first application in Jamaica on November 9, 2010.  It then filed Canadian and U.S. applications on February 24, 2011 and May 6, 2011 respectively, claiming priority to the Jamaican application.  Apple also filed an application for an International Registration, claiming the U.S. as the base application and asking for extension of protection to China, Liberia and Syria.  In fact, it has filed more than a few applications:

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Meanwhile, on February 24, 2011 (the same day as Apple’s Canadian filing) Intel announced the availability of its Thunderbolt technology, including at the bottom of the page a statement that “Thunderbolt and the Thunderbolt logo” are Intel trademarks:

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It also lists the Thunderbolt on its Trademark page as one of its trademarks, but Intel does not appear to have filed its own applications.

On Wednesday, May 18 electronista tumbled to the Apple trademark applications (interestingly, Patently Apple found the Canadian application back in March, but there didn’t seem to be much uptake on the story at the time).  Bright Side of News contacted Intel about the situation and Dave Salvator, Senior Communications Manager at Intel, had this to say:

As part of our collaboration with Apple, they did some of the initial trademark filings.  Intel has full rights to the Thunderbolt trademark now and into the future. The Thunderbolt name will be used going forward on all platforms, irrespective of operating system.

Bright Side of News, AppleInsider and MacStories characterize this as a statement that “Apple did the original trademark work but will be transferring it back to Intel,” but I’m not so generous in my reading. It really doesn’t say so; I read it as a license, like Apple has done with “Firewire.”

But mostly what this story shows is that even the most sophisticated parties with presumably well-thought out agreements can still flub it (or else couldn’t agree).  It appears that in a joint development situation, presumably covered by a formal agreement, no one thought about who would own the trademark name for the new technology.  The land was up for grabs and Apple was the first to the high ground, filing its first application off the radar in Jamaica well before any public announcement.

But it looks like there may be more to come on the story. Sony is reportedly going to also have a Thunderbolt port, although using a USB connector instead of the Mini DisplayPort used by Apple. Which adds more confusion about what “Thunderbolt” actually is, including, in my mind, whether it is a trademark or simply the generic name of a technology like “USB,” “Ethernet,” or “S-video.”

UPDATE:  Intel is now saying:

Apple filed for the original trademark and is now transferring that trademark to Intel. At the same time, Apple will continue to have unrestricted use of the technology. 3rd party implementations such as Sony’s desire to use USB Connector instead of DisplayPort and the eventual change of technology branding (Sony’s IEEE1394 a.k.a. Firewire implementation was named i.LINK) will have to be ironed out as the time passes by.

News reporting here, here, here, here, here, here, here, here and here.

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