Customers who buy a Treo in retail stores better check it twice.
Two different companies will release handheld digital products called Treo early next year.
The Treó 10, a pocket-size digital music jukebox that stores up to 3,000 songs, is sold online for $249. The Treó's creator, e.Digital Corporation, plans to bring the device to retail stores the first quarter of next year.
Meanwhile, Treo (pronounced with a long "e") communicators are combination personal digital assistants, text pager and cell phone devices by Handspring that aren't on the market yet. The Treo 180 communicator comes out early in 2002 and will sell for $399 in stores. The Treo 270, which comes with a full-color screen, arrives in the middle of next year and will cost $599.
Both companies acknowledged each other's existence, but deny any bad blood.
Trademark attorneys, however, don't rule out a future legal rumble.
Under federal trademark law, one of the companies could make the case that consumers were "confused" by the name on the package and bought their competitor's product instead, said Glenn Spencer Bacal, a trademark attorney in Phoenix, Arizona. As for the accent marks and macrons the companies inserted to differentiate the products, in a courthouse that "won't carry a heck of a lot of weight because nobody is going to voice those accents in the marketplace," Bacal said.
Bacal sees potential conflict: When a customer calls a Best Buy and asks if the store carries "Treos," how will the clerk respond? Will the clerk know which Treo the customer is referring to?
Other attorneys echoed Bacal, who called Handspring's and e.Digital's decisions to sell products with the same name a "minefield."
"The law says a trademark is considered an infringing trademark if there is a likelihood of confusion," said Daniel Kirshner, a trademark attorney in East Brunswick, New Jersey. "It sounds to me in this particular circumstance the trademark is identical. It sounds like they're fairly related goods and services."
Neither company has raised the issue in a courthouse. But if either one of them did, which would a judge say owns the right to call a product Treo?
It isn't clear. Both Handspring and Hy-Tek Manufacturing, the company originally poised to bring the Treó player to market, claim rights to the trademark "Treo."
"I think the facts are the Treo name we have for our product was trademarked prior to Handspring," said Steve Ferguson, vice president of sales and marketing for e.Digital Corporation.
Hy-Tek Manufacturing, which decided not to promote the Treó player because it was late to market, filed an application for the trademark on Oct. 18, 2000, according to the U.S. Patent and Trademark Office. Handspring didn't apply for the same trademark until Aug. 29, 2001.
While Hy-Tek's earlier filing gives the company priority to the name, it doesn't mean the company can successfully sue Handspring, Bacal said.
According to the U.S. Patent and Trademark Office, both Hy-Tek's and Handspring's requests for the trademark Treo were "suspended," which means neither company was granted the name, Bacal said.
"The people who have pending the other application, dated to October 2000, they have no basis for going to court and saying, 'You can't do this,'" Bacal said. "But at this point, Handspring is in an inferior position in priority in the trademark office."
Hy-Tek Manufacturing declined comment. But e.Digital's Ferguson insists the two companies are on good terms.
"The partnership between us and Hy-Tek still exists," he said. "We wanted to fulfill bringing this product to market."
Ferguson also denies any conflict with Handspring, which he says owns the Treo trademark, too.
Handspring spokesman Brian Jaquet echoed him, although he admitted Handspring knew about e.Digital's Treó player before his company unveiled the Treo communicator.
"We believe that this product, our Treo product, the communications product, is sufficiently different and differentiated from the other product so it's not going to cause confusion in the marketplace," he said.
Bacal, the trademark attorney in Phoenix, suspects Handspring released its product in good faith that no other company would challenge its use of the name "Treo." He considered it a bold move.
"It is clearly one of those instances that will raise eyebrows among trademark lawyers," Bacal said. "Unless they have other information that is not public, it is a very aggressive trademark strategy, and it may work or it may backfire."
