Apple sued for callings its mouse Mighty

[AppleInsider]

A small accessory maker is taking Apple and CBS to court because it wants the Mac maker to stop calling its standard desktop computer mouse the "Mighty Mouse."

Landover-based Man & Machine, Inc. (M&M) filed the 14-page formal complaint in a Maryland district court on Tuesday because it claims to have introduced a computer mouse under the same name in March of 2004, more than a year before Apple's device hit the market.

M&M's mouse is different from Apple's in that it is water resistant or water-proof, which has made it particularly well suited for use in hospitals, medical laboratories and industrial environments. However, the accessory maker argues that since the device is similar in appearance to Apple's version, there could be confusion in the marketplace.

The little known firm goes on to further accuse Apple of intentionally buying up search keywords on the phrase "Mighty Mouse" and proliferating the code on its webpages with the trademark in an effort divert customers looking for M&M version of the Mighty Mouse and website to its own internet properties.

"Because of Apple's size, fame, and large advertising budget, Apple's use of the Mighty Mouse trademark has and will continue to overwhelm M&M's use of its Mighty Mouse trademark and will cause M&M to lose the value of that trademark, including the goodwill and reputation resident therein, and will hinder M&M's ability to move into additional markets and/or further into those markets in which it already conducts commerce," attorneys for M&M wrote in the lawsuit.

Since Apple licenses the Mighty Mouse name from CBS, which owns trademarks associated with the Mighty Mouse cartoon character, M&M has also named the television network as defendant in its complaint



Although CBS has a pending application to extend its trademark to "Computer cursor control devices, namely, computer mouse[s]," the dates of first use claimed on the application are substantially later than when M&M first began selling its own Mighty Mouse, the accessory maker argues.

"It thus appears that Apple purports to have received from CBS Operations a license to use the Mighty Mouse trademark in connection with computer mouses," the suit says. "Any such purported trademark license is invalid due to M&M's preexisting, superior rights to use the Mighty Mouse trademark in connection with computer mouses."

M&M, whose own application for the Mighty Mouse trademark is still pending, is seeking an injunction barring Apple from further use of the mark, damages, and attorneys' fees.

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[walkerdarin2003]

Just throw in the iMouse and they are set, end of case. The mighty mouse has been out for some time, why all the commotion now?

[htoelle]

You have to be kiddinghttp://forums.appleinsider.com/images/smilies/lol.gif

[htoelle]

You have to be kidding

[darthraige]

If Apple were to lose this case, in spite, they should call it the Mitey Mouse or Mightier Mouse. People are such babies these days with branding. Why is this coming up 2 years later? This is like a stupid news story, for example, this is what I heard on the news: "Study showing bras most likely cause for breast cancer." Ok, and you're finally bringing this up 50+ years later? Mannnnnn. lol

[zinfella]

Originally Posted by walkerdarin2003

Just throw in the iMouse and they are set, end of case. The mighty mouse has been out for some time, why all the commotion now?

Did you read the complaint? It's because M&M is suffering now. They are quite likely to prevail if they can prove that they marketed the name first.

[rg_spb]

perhaps we should give the Mars candy people a call, M&Ms have been around a lot longer than mice makers! The company has a case, but why wait 3 years to complain?!

[Lafe]

Okay, one more to cross off of the list.

Next up:

- MacDonalds sues for infringement on "Big Mac" concept. "iMac" is too close.
- Any guy named "Mac" sues. (Class-action, maybe.)
- PETA sues for use of the word "Mouse", which should be reserved for furry rodents.
- Amazon or some League of Librarians sues because MacBooks aren't really "books".
- Anyone who breathes air sues because the "MacBook Air" product is confusing to them.

And so on. Until every creature on the planet has sued Apple at least once, we'll keep
hearing about these, I guess.

[skottichan]

Originally Posted by zinfella

Did you read the complaint? It's because M&M is suffering now. They are quite likely to prevail if they can prove that they marketed the name first.

Actually, it looks like Apple is very much in the right here. They followed the proper channels, licensed the name from CBS (which amuses me that M&M is suing CBS as well for not giving them the license).

[bdkennedy1]

Mighty Mouse sucks anyway, I dumped it after 2 years or squeezing the damn thing. Why Apple thought squeezing a mouse is easier than pressing a button is beyond me.

Definitely not a Steve Jobs project.

[warnergt]

Originally Posted by zinfella

...M&M is suffering now. They are quite likely to prevail if they can prove that they marketed the name first.

They need to do more than prove they marketed the name first. They need to prove that they had the right to use the MIghty Mouse trademark when they used it.

If I sold a mouse today called "the Chevrolet" and Apple sold a mouse a year from now with the same name, that doesn't mean I have case. In fact, I could quickly change from complainant to defendant over this name.

[Tivor]

For once, I actually feel teensy bit of sympathy toward the company that's suing Apple. Their case seems to have more merit than the usual "omg i patented/trademarked it first" lawsuits, since they actually have a product and apparently had that product on market before Apple did.

Having said that, I must agree with other posters, why wait until now? And why is their application for trademark still pending? Does it take that long for trademark applications to get processed?

Also, seeing as how Apple is licensing the Mighty Mouse name from CBS, couldn't CBS sue that M&M company for the use of the name?

[Clive At Five]

Originally Posted by AppleInsider

...CBS has a pending application to extend its trademark to "Computer cursor control devices, namely, computer mouse[s]," ...

What? Why? That makes no sense at all!

Neither Apple nor M&M should have to license the name "Mighty Mouse" from CBS as their products bear no relation whatsoever to the steroid-using cartoon mouse and could not, under any cicumstances be confused for one another.

If M&M filed for a trademark before Apple did, or before they started using the name Mighty Mouse, I could see there actually being a case...

...though timeliness and brevity seem not to be M&M's strengths... a fourteen-page report on the name "Mighty Mouse" two years ex post facto?!

-Clive

[Abster2core]

This is off topic. But there is normally a bunch of Canadians around here.*

Heading up to Vancouver tomorrow. Just in time to check out the new Apple Store opening on the 24th.*

If the dollar is right and I could get away from paying sales taxes (non-resident), this may become a bonanza.†

*Apple Store, Pacific Centre
701 West Georgia Street
Vancouver, British Columbia V7Y 1G5

†Providing I can get away from the wife.

[gnushell]

I worked for him years ago. Our paychecks were bouncing and all deliveries were COD. His basically ruined a nice third party depot repair company, since we couldn't get parts. The cars we drove for service shouldn't have been able to pass inspection. Plus, his wealthy parents always bailed him out.

Fast forward to today and it appears that nothing has changed. Hopefully Apple will be able to diffuse this quickly.

[melgross]

Originally Posted by zinfella

Did you read the complaint? It's because M&M is suffering now. They are quite likely to prevail if they can prove that they marketed the name first.

This kind of dispute isn't that simple.

CBS owns the trademark. This is a very old trademark. There is a presumption that the original trademark owner will retain the rights. It isn't 100%, but it's normal.

The same thing has happened to web sites. When the trademark owner sues the "owner" of that website, they almost always win, even if the website is legitimate.

Since M&M hasn't received their own trademark for this use as yet, they can't claim to own it either.

It's easier to receive the right to extend one's use of their own trademark, than it is for another to be granted that right in opposition.

But, as I say, it's not 100%.

[jragosta]

Originally Posted by zinfella

They are quite likely to prevail if they can prove that they marketed the name first.

Not a chance. Apple had a license from CBS. M&M did not have a license to use the name. At the time Apple released the Mighty Mouse, M&M did not have an application pending. M&M is now claiming that CBS's trademark doesn't apply to computer devices. It's possible that M&M might win that argument, but since Apple was innocent at the time they launched the product, damages would be minimal.

Of course, what M&M fails to mention is that there was an earlier trademark for 'Mighty Mouse' as applied to computer devices. Serial No. 76171657, filed in 2000, but later abandoned. There's an even earlier one (Serial No. 76171657, filed in 1990, later abandoned).

That leaves Apple with 3 options:

1. Argue that the CBS / Viacom trademark is valid and this is a simple line extension - supported by the fact that they've used the trademark for anything from t-shirts to puzzles to toys to plastic molds.
2. Argue that the earlier abandoned trademarks make it impossible for M&M to get a trademark. This would likely lead to Apple having to change the name of their product or accept that 'Mighty Mouse' is generic.
3. Pay M&M off.

In all likelihood, they will stick with #1. M&M has a huge uphill battle to win anything from Apple.

[melgross]

Originally Posted by Tivor

For once, I actually feel teensy bit of sympathy toward the company that's suing Apple. Their case seems to have more merit than the usual "omg i patented/trademarked it first" lawsuits, since they actually have a product and apparently had that product on market before Apple did.

Irrelevant.

[ros3ntan]

500 lawsuits in the last 2 years.. the government should do something about this stupid kind of lawsuits.. maybe the winner can sue back and take over the company???

cmon man.. its ridiculous.. everyday there is always a lawsuit.... its not helpful to society... we as the customer dont need this at all.

[Tokolosh]

Originally Posted by darthraige

People are such babies these days with branding.

There is good cause for people and corporations to get uppity about similar use of their own trademarks and brands (this is not a branding issue though, it's an issue of trademark). Branding is very important and Apple is a prime example of that... here's a blog with several examples of what branding can and can't do for a company.

http://brandstory.typepad.com/writer/

[SpamSandwich]

Originally Posted by zinfella

Did you read the complaint? It's because M&M is suffering now. They are quite likely to prevail if they can prove that they marketed the name first.

I don't think so. CBS should have immediately sued M&M (and there's another trademark infringement) for infringement when their so-called "Mighty Mouse" was introduced, or offered them to license the name. CBS was lax in enforcing their trademark.

[melgross]

Originally Posted by SpamSandwich

I don't think so. CBS should have immediately sued M&M (and there's another trademark infringement) for infringement when their so-called "Mighty Mouse" was introduced, or offered them to license the name. CBS was lax in enforcing their trademark.

If they are very small, and sell into an industry that CBS isn't familliar with, they may not have known about its use, until M&M filed on their own.

Also, CBS does have to apply for the extension. Until they receive it, they may feel as though suing isn't viable. small companies don't always feel that way. Often, they believe they have to strike first.

[Chris_CA]

http://www.man-machine.com/mightymouse.htm

If you look here -> http://www.man-machine.com/products.htm
the Mighty Mouse is the only product with TM after the name.
Is it the only product name they have trademarked?
Looks like they hurried and added the TM (for the lawsuit) but if all products are TM, they should have added it to those also.

[jragosta]

Originally Posted by Clive At Five

What? Why? That makes no sense at all!

Neither Apple nor M&M should have to license the name "Mighty Mouse" from CBS as their products bear no relation whatsoever to the steroid-using cartoon mouse and could not, under any cicumstances be confused for one another.

Depends on the recognizability of the name and the type of product. If I released a 'Dove' mouse, there is little chance that P&G would be able to stop me (I think they're the owners of the Dove soap trademark). There is no risk of confusion and a person hearing the word 'Dove' is not likely to immediately think of the soap.

OTOH, if I created a mouse called "Mercedes Benz", I'd be stopped.

In this case, 'Mighty Mouse' is immediately recognizable as CBS property. Virtually anyone over the age of 30 who hears 'Mighty Mouse' is going to immediately think of the cartoon character. That means that any unlicensed use of the name dilutes CBS's trademarks.

It's not that simple and it's possible that CBS would lose their registration, but that doesn't seem likely.

[solipsism]

Originally Posted by darthraige

If Apple were to lose this case, in spite, they should call it the Mitey Mouse or Mightier Mouse.l

Or Apple's Mighty Mouse. Always stating it with the associated company should be enough keep it from being confused with a mouse we've never heard of.

Originally Posted by skottichan

Actually, it looks like Apple is very much in the right here. They followed the proper channels, licensed the name from CBS (which amuses me that M&M is suing CBS as well for not giving them the license).

Does CBS have right to the name if the product can't be confused? If not, then why is Apple paying them?

The wiki link below has some interesting info on TM rights. One that stands out is that M&M would have had to inform Apple of this infringement. I'm assuming Apple isn't too worried about this, though that doesn't mean they won't have to pay.

• http://en.wikipedia.org/wiki/Tradema...ademark_rights

Originally Posted by gnushell

I worked for him years ago. Our paychecks were bouncing and all deliveries were COD.

WE never get to hear the inside scoop on these companies. Welcome to AI.

[wilco]

Originally Posted by gnushell

I worked for him years ago. Our paychecks were bouncing and all deliveries were COD. His basically ruined a nice third party depot repair company, since we couldn't get parts. The cars we drove for service shouldn't have been able to pass inspection. Plus, his wealthy parents always bailed him out.

M&M house sat for me one weekend, and when I got home all my cooking sherry had been drunk, and my cat was pregnant.

[JeffDM]

Originally Posted by jragosta

Depends on the recognizability of the name and the type of product. If I released a 'Dove' mouse, there is little chance that P&G would be able to stop me (I think they're the owners of the Dove soap trademark). There is no risk of confusion and a person hearing the word 'Dove' is not likely to immediately think of the soap.

OTOH, if I created a mouse called "Mercedes Benz", I'd be stopped.

But the MM does look a lot like a bar of Dove soap. I certainly don't think of the bird.

In this case, 'Mighty Mouse' is immediately recognizable as CBS property. Virtually anyone over the age of 30 who hears 'Mighty Mouse' is going to immediately think of the cartoon character. That means that any unlicensed use of the name dilutes CBS's trademarks.

I'm not sure if that really applies as much. Trademarks of the same word can apply over several dozen different categories. Animation and the related merchandising wouldn't apply to computer peripherals.

[solipsism]

Originally Posted by melgross

they may feel as though suing isn't viable...

Furthuring your statement, the wiki link i supplied above clearly states that suing without basis or intent can work against you. I wish that were moved to other area of our judicial system

"Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action. In this situation, the party receiving such a threat may seek from the Court, a declaratory judgment; also known as a declaratory ruling."

[SpamSandwich]

Originally Posted by wilco

M&M house sat for me one weekend, and when I got home all my cooking sherry had been drunk, and my cat was pregnant.

Stupid candy!

[SpamSandwich]

Originally Posted by JeffDM

But the MM does look a lot like a bar of Dove soap. I certainly don't think of the bird.



I'm not sure if that really applies as much. Trademarks of the same word can apply over several dozen different categories. Animation and the related merchandising wouldn't apply to computer peripherals.

Just try calling your next product "Star Wars (Anything)" and see how well that works out.

[JeffDM]

Originally Posted by SpamSandwich

Just try calling your next product "Star Wars (Anything)" and see how well that works out.

That's quite true. Whether or not you're in the right legally, you can still be sued.

[solipsism]

Originally Posted by SpamSandwich

Just try calling your next product "Star Wars (Anything)" and see how well that works out.

If apple referred to the mouse as being mighty. For instance, "Apple's iMouse is one mighty mouse" they would be okay. I can't find a legitimate sentence for Star Wars.

PS: If anyone cares, Lucus trademarked Droid.

[JeffDM]

Originally Posted by bdkennedy1

Mighty Mouse sucks anyway, I dumped it after 2 years or squeezing the damn thing. Why Apple thought squeezing a mouse is easier than pressing a button is beyond me.

Definitely not a Steve Jobs project.

It's too random too, on some of them, they trigger the side buttons almost without pressure, on others, you need a near iron grip to activate. I've never used that feature. The scroll ball jamming is higher on my list of dislikes. The ball rolls, but the computer doesn't respond until I clean it again.

[drblank]

I don't know about this one. I've NEVER heard of Man & Machine or knew about [I]their[I] mouse. I guess their marketing isn't that good or they just market to a niche market.

When I think of Might Mouse, I think of the cartoon. I guess I am showing my age.

Either way, this is just a really childish situation. I think Man & Machine should just remove their trademark paperwork since it hasn't been approved and just call their mouse something else.

Just my 2 cents.

[Haggar]

Originally Posted by bdkennedy1

Mighty Mouse sucks anyway, I dumped it after 2 years or squeezing the damn thing. Why Apple thought squeezing a mouse is easier than pressing a button is beyond me.

Definitely not a Steve Jobs project.

Round hockey puck mouse rules!

[JustJJ]

I'd imagine that Apple licensed the Mighty Mouse trademark from CBS because they intended to capitalize on the existing image. M&M probably wanted the association to the Mighty Mouse character, but didn't license the trademark.

That would likely be the argument. I don't see how M&M could win, but the American legal system never fails to amaze.

[maxmann]

Originally Posted by rg_spb

perhaps we should give the Mars candy people a call, M&Ms have been around a lot longer than mice makers! The company has a case, but why wait 3 years to complain?!

Mzzz had to go through the pay-the-lawyers task of writing letters first before a formal suit could be put into motion. Apple knew about this a long time ago and now we find out with a formal suit being presented. merit or no merit these kinds of complaints have a legal process that can take years to set into motion.

[Haggar]

Originally Posted by Lafe

Okay, one more to cross off of the list.

Next up:

- MacDonalds sues for infringement on "Big Mac" concept. "iMac" is too close.
- Any guy named "Mac" sues. (Class-action, maybe.)
- PETA sues for use of the word "Mouse", which should be reserved for furry rodents.
- Amazon or some League of Librarians sues because MacBooks aren't really "books".
- Anyone who breathes air sues because the "MacBook Air" product is confusing to them.

And so on. Until every creature on the planet has sued Apple at least once, we'll keep
hearing about these, I guess.

But it's ok for Apple to sue every creature on the planet who uses the word "pod".

[JeffDM]

Originally Posted by skottichan

(which amuses me that M&M is suing CBS as well for not giving them the license).

I don't think that statement is an accurate interpretation.

BTW: is anyone else getting HIV google ads on this forum? I don't get it, it's not relevant to me, to the discussion, the general content of the site or any site I've been to.

[NOFEER]

some of this patent suing is defensive, i quess if you don't go after it, i guess the patent office says you are not defending your patent and legally you lose ground, as per the lawsuit of apple against nyc.
also i thought apple paid the comic "mighty mouse" for that..what give.s