Apple sued for callings its mouse Mighty
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.
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.
Comments
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.
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.
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).
Definitely not a Steve Jobs project.
...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.
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?
...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
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.
Fast forward to today and it appears that nothing has changed. Hopefully Apple will be able to diffuse this quickly.
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%.
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.
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.
cmon man.. its ridiculous.. everyday there is always a lawsuit.... its not helpful to society... we as the customer dont need this at all.
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/
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.