Apple sued for callings its mouse Mighty

12346»

Comments

  • Reply 101 of 118
    jeffdmjeffdm Posts: 12,946member
    Quote:
    Originally Posted by TX65 View Post


    Fact #3 M&M applied for a trademark which STILL HAS NOT been granted specific to computer pointing devices.



    Fact #4 CBS has applied to extend their long established trademark "Mighty Mouse" to other devices.



    Fact #5 M&M has a product on the market using the name "Mighty Mouse" which is a trademark of CBS, (M&M has only applied for a trademark,, it has not been granted).



    You didn't make clear whether or not CBS's request to extend the trademark has been granted, denied or the procedure isn't finished. That too is an important piece of information. To leave that out but to clearly state that M&M hasn't been granted the trademark but neglecting to state the status of CBS's application seems to suggest a bias. Another key piece is whether M&M's application has been denied or not. "not been granted" can mean it's been denied or the process isn't done yet.



    I think attorneys in the US can be sanctioned for frivolous or antagonizing lawsuits (see Jack Thompson), but enforcement is slow at best. It looks like there has to be a strong pattern of abuse before anyone will act.
  • Reply 102 of 118
    solipsismsolipsism Posts: 25,726member
    For those wondering why CBS or M&M may not have sued earlier...
    It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential. This is designed to prevent owners from continually being tied up in litigation for fear of cancellation. An owner can at any time commence action for infringement against a third party as long as it had not previously notified the third party of its discontent following third party use and then failed to take action within a reasonable period of time (called acquiescence)
    PS: There is an interesting list of genericized tradmarks at Wikipedia...
  • Reply 103 of 118
    melgrossmelgross Posts: 31,507member
    Quote:
    Originally Posted by JeffDM View Post


    You didn't make clear whether or not CBS's request to extend the trademark has been granted, denied or the procedure isn't finished. That too is an important piece of information. To leave that out but to clearly state that M&M hasn't been granted the trademark but neglecting to state the status of CBS's application seems to suggest a bias. Another key piece is whether M&M's application has been denied or not. "not been granted" can mean it's been denied or the process isn't done yet.



    I think attorneys in the US can be sanctioned for frivolous or antagonizing lawsuits (see Jack Thompson), but enforcement is slow at best. It looks like there has to be a strong pattern of abuse before anyone will act.



    It doesn't really matter. What does matter is that until, and unless, M&M is granted the trademark, CBS is assumed to own that trademark, esp as they have also applied. At any rate, Apple licensed it from CBS, they didn't just take the use of it as did M&M.



    It's interesting that, as others have pointed out, it wasn't until fairly recently that M&M began to even use the trademark at all for the name.



    In a counter lawsuit, that will be pointed out as evidence that M&M knew it didn't have the rights. In my experience, that will be damaging to their own lawsuit.
  • Reply 104 of 118
    melgrossmelgross Posts: 31,507member
    Quote:
    Originally Posted by solipsism View Post


    For those wondering why CBS or M&M may not have sued earlier...
    It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential. This is designed to prevent owners from continually being tied up in litigation for fear of cancellation. An owner can at any time commence action for infringement against a third party as long as it had not previously notified the third party of its discontent following third party use and then failed to take action within a reasonable period of time (called acquiescence)
    PS: There is an interesting list of genericized tradmarks at Wikipedia...



    This is what I was saying earlier. That companies don't always bother to sue. but they do have to be careful.



    CBS probably didn't bother to apply for an extension because they didn't think there would be a reason to. When Apple approached them (or the other way around), they then saw that there could be money in those hills, and so applied. Whether they even knew about M&M at the time is questionable. It is pretty obscure as a product. And that's also why they may have little chance.



    Remember Tiger Direct? They had a somewhat similar lawsuit. They claimed that Apple's use of the name Tiger was obscuring their own chances in the search engines, and that they were in the same business.



    This mouse is a closer product though, but the markets still seem apart, and has been pointed out, can still easily be found if someone is looking for it. At any rate, the way the law works, if a minor mark can obscure a major mark, the minor mark loses, not the other way around.



    This is the best site I've found so far {I found it after typing this!) that dissects the case, as well as some other famous cases of this type.



    The first case is a Victoria's Secret case. The next is the M&M case. There are more after.



    It seems that M&M did not file until after CBS filed—earlier the same day!



    As it's pointed out on the site (by Ryan Gile, a trademark and intellectual property attorney), someone must have told M&M about the application by CBS.



    http://www.vegastrademarkattorney.com/
  • Reply 105 of 118
    melgrossmelgross Posts: 31,507member
    I just spoke to my wife on this (she's an attorney with CitiGroup, and does this work along with other).



    She thinks that M&M's opposition filing and subsequent suit is simply defensive in that they may be afraid that in case of a successful filing by CBS they would be prevented from using the mark at all, and that they really aren't interested in getting CBS or Apple to stop using it.



    The statements about obscurity on Google may therefore be again defensive, and may actually be used to prove that they aren't well known enough to interfere with the mark. That may also work against them though.



    She thinks that it may have been better if they had not used that in the case as it may show the "triviality" of their mark {look to the Victoria's Secret" case in the above link posted to Solipsism.
  • Reply 106 of 118
    melgrossmelgross Posts: 31,507member
    Just a couple of extra thoughts.



    The mere use of a term as a name is not a reason to receive a trademark. There must be an actual filing and grant.



    But if the name is used for some time, and is recognized by many, it could prevent others from filing for trademark status later.



    If the first company then does file, they will likely not get the grant.



    The fact that M&M was using the name is not recognition of a trademark. A filing is the intent, and as CBS filed first, and it is M&M that is filing in opposition, that weakens their case.



    But unless one side drops a suit, this could go to 2015 and beyond.
  • Reply 107 of 118
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by melgross View Post


    She thinks that M&M's opposition filing and subsequent suit is simply defensive in that they may be afraid that in case of a successful filing by CBS they would be prevented from using the mark at all, and that they really aren't interested in getting CBS or Apple to stop using it.



    That is the most reasonable explanation we've heard. Though I was under the impression that trademark lawsuits are one of the few types of cases in which the courts scold heavily for if the plaintiff has no way of winning and is obviously trying to litigate for other winnings. (I have no source)
  • Reply 108 of 118
    seek3rseek3r Posts: 179member
    Quote:
    Originally Posted by warnergt View Post


    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.



    AFAIK, trademarks are industry specific. It's *why* CBS has filed a seperate application for the trademark in association with computer mice. If M&M beat them to the punch there, with a product no less, they are very much in the right.



    Doesnt matter either that apple licensed the mark from CBS if it wasnt CBS' to license
  • Reply 109 of 118
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by seek3r View Post


    AFAIK, trademarks are industry specific. It's *why* CBS has filed a seperate application for the trademark in association with computer mice. If M&M beat them to the punch there, with a product no less, they are very much in the right.



    Doesnt matter either that apple licensed the mark from CBS if it wasnt CBS' to license



    As stated in ths thread, I think that it's on an individual basis. If a trademark is well known enough others can't use it. I certainly can't make a line of computers called Pepsi and get away with it. But, as with a post to a wiki page I have above, a trademark can become too common to be protected. I recall Xerox fitting very hard to prevent this from happening.
  • Reply 110 of 118
    melgrossmelgross Posts: 31,507member
    Quote:
    Originally Posted by seek3r View Post


    AFAIK, trademarks are industry specific. It's *why* CBS has filed a seperate application for the trademark in association with computer mice. If M&M beat them to the punch there, with a product no less, they are very much in the right.



    Doesnt matter either that apple licensed the mark from CBS if it wasnt CBS' to license



    That's not quite correct.
  • Reply 111 of 118
    davidwdavidw Posts: 967member
    Quote:
    Originally Posted by seek3r View Post


    AFAIK, trademarks are industry specific. It's *why* CBS has filed a seperate application for the trademark in association with computer mice. If M&M beat them to the punch there, with a product no less, they are very much in the right.



    Doesnt matter either that apple licensed the mark from CBS if it wasnt CBS' to license



    This may be true if the trademark involves a "generic" name. Like Apple Computer and Apple Studios.



    But it's completely false if the trademark is a character whose name is not a common name. Superman, Batman, Donald Duck, Spiderman, Bugs Bunny, Wonder Woman, Luke Skywalker, Underdog, Yogi Bear, Fred Flintsone, Mighty Mouse, etc.. These are exclusive trademarks of DC Comics, Warner Bros., Disney, Lucas Studios, Marvel, Hanna-Barbera, etc..



    You can not have a "Superman Weight Lifting Gym", "Wonder Woman Clothes Shop", "Bugs Bunny Hair Salon", "Skywalker Shoe Store" or "Donald Duck Hunting Supplies". Unless you get a license from the owner of the trademarked character. .
  • Reply 112 of 118
    melgrossmelgross Posts: 31,507member
    Quote:
    Originally Posted by DavidW View Post


    This may be true if the trademark involves a "generic" name. Like Apple Computer and Apple Studios.



    But it's completely false if the trademark is a character whose name is not a common name. Superman, Batman, Donald Duck, Spiderman, Bugs Bunny, Wonder Woman, Luke Skywalker, Underdog, Yogi Bear, Fred Flintsone, Mighty Mouse, etc.. These are exclusive trademarks of DC Comics, Warner Bros., Disney, Lucas Studios, Marvel, Hanna-Barbera, etc..



    You can not have a "Superman Weight Lifting Gym", "Wonder Woman Clothes Shop", "Bugs Bunny Hair Salon", "Skywalker Shoe Store" or "Donald Duck Hunting Supplies". Unless you get a license from the owner of the trademarked character. .



    That's correct. It goes to the suit that Victoria's Secret brought against Victor's Little Secrets several years ago. They weren't even using the same name, but it was deemed to be close enough to be confusing, and so to dilute the major mark so as to bring disfavor upon it.
  • Reply 113 of 118
    davidwdavidw Posts: 967member
    Quote:
    Originally Posted by seek3r View Post


    AFAIK, trademarks are industry specific. It's *why* CBS has filed a seperate application for the trademark in association with computer mice. If M&M beat them to the punch there, with a product no less, they are very much in the right.



    Doesnt matter either that apple licensed the mark from CBS if it wasnt CBS' to license



    There are two main reasons why companies goes through great lengths to protect their trademarks across all industries. One is brand recognition and the other is revenue recognition.



    Apple wants you to think of "Apple Inc." whenever you hear or see their "iPod" trademark being used.. Apple don't want you to think of shoes, toothpaste, soap, cereal or any other products by any other comapany when you hear or see "iPod". And Apple don't want you to think of just any MP3 player but an Apple Inc. brand MP3 player. Apple don't want to have their "iPod" trademark go the way of "Walkman" (for any portable cassette player) ScotchTape (for any cellophane tape) and Clorox (for any household bleach).



    A while back, Coca-Cola had a campaign in which they sent scouts to resturants that weren't serving Coca-Cola products and requesting a "Coke" with their meal. If they were not informed that they would be getting a "Pepsi" (or any other brand cola), the restirant soon heard from a Coca-Cola attorney. This even though most people ordering a "Coke" didn;t really care which brand of cola they got. So now, beacise of this campaign, when you request a "Coke" from a resturant that don't serve Coca-Cola products, the waitress/waiter (is suppose to) will ask "Will "Pepsi" do? And I've yet to hear anybody answer, No. But Coca-Cola got other people, working for them fpr free, in reminding cola drinkers that "Coke" is a trademarked name for a cola made by Coca-Cola.



    For companies like Disney, trademarks are also revenue generating cash cows. Their trademark characters have appeard on everything from a toothbrush to cereal boxes to coloring books and vitamins. And every company that uses a trademarked Disney character to promote their products must pay Disney for a license to do so. So Disney is not about to let some Joe Shmoe company trademark and market a "Snow White Toothpaste". Not when they're charging some other toothpaste company ten of thousands of dollars for a license to use their trademarked "Snow White" character. Letting Joe Shmoe Company get away with it would not only diminish their brand recognition but also their ability to command top dollors for a license to use their trademarks.
  • Reply 114 of 118
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by DavidW View Post


    So now, because of this campaign, when you request a "Coke" from a resturant that don't serve Coca-Cola products, the waitress/waiter (is suppose to) will ask "Will "Pepsi" do? And I've yet to hear anybody answer, No.



    I'm one. Coke tastes great; Pepsi, not so much. if you worked in the restaurant business where that was required you would have heard it too. Most people don't care, but some do on both sides of that fence, thiygh Coke does seem to be the more preferred of the two.
  • Reply 115 of 118
    melgrossmelgross Posts: 31,507member
    Quote:
    Originally Posted by solipsism View Post


    I'm one. Coke tastes great; Pepsi, not so much. if you worked in the restaurant business where that was requires you would have heard it too. Most people don't care, but some do on both sides of that fence but Coke does seem to be the more preferred of the two.



    I care, and when I'm in the mood for a Coke, a Pepsi doesn't quite make it for me.



    But if Pepsi is the only choice, and I'm REALLY in the mood for a cola, I'll take it.
  • Reply 116 of 118
    davidwdavidw Posts: 967member
    Quote:
    Originally Posted by solipsism View Post


    I'm one. Coke tastes great; Pepsi, not so much. if you worked in the restaurant business where that was required you would have heard it too. Most people don't care, but some do on both sides of that fence, thiygh Coke does seem to be the more preferred of the two.



    I also much prefer a "Coke". But only if it's from a can or bottle. When it's from a fountain, I really can't tell much of a difference in colas. Since most fountains don't mix it right in the first place. But I always request a "Coke". Even if I know I'm going to get a Pepsi. Just to see if the waitress/waiter is going to ask me "Is Pepsi O.K.?" And surprisingly, 8 out of 10 times they do. And 10 out of 10 times, I answer, "Yes".
  • Reply 117 of 118
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by DavidW View Post


    I also much prefer a "Coke". But only if it's from a can or bottle. When it's from a fountain, I really can't tell much of a difference in colas. Since most fountains don't mix it right in the first place.



    I prefer a 12oz can over 20oz or 2 liter* bottle. But there are some fountains I prefer over all of those. McDonalds is the number one choice for me. They almost always a perfect mix, and clean lines, or something. It's just great. Chinese restaurants always have very flat soda; mom and pop places tend to be flat too. Some gas stations/corner stores have really good fountains but sometimes it's poorly mixed too, though usually you can tell as your filling it.





    * I think the 2 liter bottle is one of the only common items that is measured in the metric system that Americans are sold and refer to comfortably. I know there are no 1L bottles, fancy water, some beauty products, and more things list the metric next to the American standard, but the 2L bottle is the only well known by the metric volume. I don't think most people could tell you how many ounces it is even though it is listed right next to it. Was anyone else told as child in school that they needed to learn the metric system because we'd be changing over to it soon?
  • Reply 118 of 118

    Quote:

    Originally Posted by jragosta View Post





    Yet Chrysler has a valid trademark for 'Jeep' and has for many years (they purchased it from Willys who registered it in 1943), so they have every right to enforce it. It sounds like they agreed that there was no risk of confusion, so they dropped it.



    Simply having a nickname does not absolve you from trademark laws. If I called my daughter 'Michelle Pfeiffer' and she grew up to be an actress, she could not use the name 'Michelle Pfeiffer' even if I had called her that for years. His parents calling him 'jeep' is a red herring (want to bet that they called him that after hearing about the WIllys vehicle, anyway?).


    you know the cool thing, jeep molnar is my grandpa, my middle name is jeep.

Sign In or Register to comment.