Judge sides with Apple, denies TigerDirect's motion for preliminary injunction in trademark dispute
A judge has denied a request by computer retailer TigerDirect for a preliminary injunction against Apple Computer over allegations that Apple's nickname for its new operating system, "Tiger," infringes on the retailer's trademarked name.
The ruling was part of a 56 page opinion handed down on May 11th by Judge Joan Lenard of the United States District Court for the District of Florida. After weighing arguments from both sides, the Court found that "there is greater risk of damage to Apple from granting the injunction than any potential harm to TigerDirect from Apple's use of Tiger marks."
In the suit, filed last month, TigerDirect argued that Apple's use of the Tiger name alongside its Mac OS X 10.4 operating system was causing "confusion, mistake and deception among the general purchasing public." Specifically, the retailer contended that Apple's use of the name "Tiger" on the Internet had knocked it from the top of search results on Google, Yahoo and MSN.
TigerDirect's original motion for a preliminary injunction requested the court enjoin Apple from using the term "Tiger" in any matter -- a request that, if fulfilled, could have halted Apple's roll-out of the Mac OS X 10.4 operating system. However, at the May 5th preliminary injunction hearing, TigerDirect narrowed its request and asked the court to bar Apple from using the Tiger mark in any manner except in direct proximity to Mac OS X or Mac OS X 10.4.
To lessen the harm to Apple, the retailer said Apple could still use previously paid for advertising and promotion materials, but requested the Cupertino, Calif-based computer maker cease from using the Tiger mark anywhere on its web site or in any new advertising, signage, or packing; except when pertaining specifically to Mac OS X 10.4.
During the hearing, both parties provided slide presentations as exhibits. Apple also called Philip Schiller, Senior Vice Present of Worldwide Marketing, as a witness. Schiller was reportedly present when Apple selected the "Tiger" nickname for Mac OS X 10.4 and testified that Apple had no intention of trading on the goodwill built up by TigerDirect. He said Apple, over the last several years, had engaged in a practice of naming updates to Mac OS X after large predator cats in order to convey the strength and speed of the operating system.
Apple also entered into evidence a survey that revealed only 6% of consumers associated the name "Tiger" with TigerDirect. Meanwhile, the survey of 517 people showed that only 4 people associated the name "Tiger" with a company -- a result the Court found most interesting. Apple asserted that TigerDirect does not posses a protected family of Tiger marks, as defined by applicable trademark law, nor does it retain a valid Tiger mark for computer goods.
Furthermore, Apple disputed that its own use of 'Tiger' is confusingly similar to TigerDirect's use and provided evidence of over 200 federal registrations of marks containing the term "Tiger" -- including 24 companies, other than TigerDirect, which employ Tiger marks to promote computer products and services.
The Court ultimately sided with Apple, agreeing that TigerDirect was unable to meet the burden of proof necessary for a preliminary injunction to be granted.
"Turning to the overall impression created by the marks, in the context of each party's use thereof, the Court finds that the marks are distinctly different," Judge Lenard wrote in her opinion denying TigerDirect's motion. She said Tiger marks are frequent in the computer industry and that she saw no evidence that Apple adopted the Tiger name in bad faith or that it has caused any confusion in the market place.
And while TigerDirect and Apple share an overlapping consumer base, Judge Lenard said "any given customer who cross-shops TigerDirect and Apple, whether over the internet or in person at their retail local stores, will be able to distinguish their respective retail outlets due to the distinctive differences in their marketplaces' appearance and messages."
According to court documents, over the last year Apple has spent over $50 million to orchestrate a carefully planned marketing campaign and product launch of Mac OS X 10.4.
The ruling was part of a 56 page opinion handed down on May 11th by Judge Joan Lenard of the United States District Court for the District of Florida. After weighing arguments from both sides, the Court found that "there is greater risk of damage to Apple from granting the injunction than any potential harm to TigerDirect from Apple's use of Tiger marks."
In the suit, filed last month, TigerDirect argued that Apple's use of the Tiger name alongside its Mac OS X 10.4 operating system was causing "confusion, mistake and deception among the general purchasing public." Specifically, the retailer contended that Apple's use of the name "Tiger" on the Internet had knocked it from the top of search results on Google, Yahoo and MSN.
TigerDirect's original motion for a preliminary injunction requested the court enjoin Apple from using the term "Tiger" in any matter -- a request that, if fulfilled, could have halted Apple's roll-out of the Mac OS X 10.4 operating system. However, at the May 5th preliminary injunction hearing, TigerDirect narrowed its request and asked the court to bar Apple from using the Tiger mark in any manner except in direct proximity to Mac OS X or Mac OS X 10.4.
To lessen the harm to Apple, the retailer said Apple could still use previously paid for advertising and promotion materials, but requested the Cupertino, Calif-based computer maker cease from using the Tiger mark anywhere on its web site or in any new advertising, signage, or packing; except when pertaining specifically to Mac OS X 10.4.
During the hearing, both parties provided slide presentations as exhibits. Apple also called Philip Schiller, Senior Vice Present of Worldwide Marketing, as a witness. Schiller was reportedly present when Apple selected the "Tiger" nickname for Mac OS X 10.4 and testified that Apple had no intention of trading on the goodwill built up by TigerDirect. He said Apple, over the last several years, had engaged in a practice of naming updates to Mac OS X after large predator cats in order to convey the strength and speed of the operating system.
Apple also entered into evidence a survey that revealed only 6% of consumers associated the name "Tiger" with TigerDirect. Meanwhile, the survey of 517 people showed that only 4 people associated the name "Tiger" with a company -- a result the Court found most interesting. Apple asserted that TigerDirect does not posses a protected family of Tiger marks, as defined by applicable trademark law, nor does it retain a valid Tiger mark for computer goods.
Furthermore, Apple disputed that its own use of 'Tiger' is confusingly similar to TigerDirect's use and provided evidence of over 200 federal registrations of marks containing the term "Tiger" -- including 24 companies, other than TigerDirect, which employ Tiger marks to promote computer products and services.
The Court ultimately sided with Apple, agreeing that TigerDirect was unable to meet the burden of proof necessary for a preliminary injunction to be granted.
"Turning to the overall impression created by the marks, in the context of each party's use thereof, the Court finds that the marks are distinctly different," Judge Lenard wrote in her opinion denying TigerDirect's motion. She said Tiger marks are frequent in the computer industry and that she saw no evidence that Apple adopted the Tiger name in bad faith or that it has caused any confusion in the market place.
And while TigerDirect and Apple share an overlapping consumer base, Judge Lenard said "any given customer who cross-shops TigerDirect and Apple, whether over the internet or in person at their retail local stores, will be able to distinguish their respective retail outlets due to the distinctive differences in their marketplaces' appearance and messages."
According to court documents, over the last year Apple has spent over $50 million to orchestrate a carefully planned marketing campaign and product launch of Mac OS X 10.4.
Comments
Originally posted by MacCrazy
Well this was the sensible decision - TigerDirect just wanted money and free advertising.
And they got it (advertising), but was more harm done than good? Many [Mac] people said they'll never use TigerDirect after this.
Originally posted by AppleInsider
According to court documents, over the last year Apple has spent over $50 million to orchestrate a carefully planned marketing campaign and product launch of Mac OS X 10.4.
[ View this article at AppleInsider.com ]
I guess they didn't do many TV commercials, huh?
Chris
Originally posted by chabig
I'm shocked that the judge actually wrote 56 pages to announce this decision. You'd think it would be simple.
Chris
A judge is nothing more than a lawer in a gown, lawers stay in business by confusing the hell out of normal people...but hey, so do most tech/computer people...so we have a lot in common
<ducks for cover>
Originally posted by a_greer
A judge is nothing more than a lawer in a gown, lawers stay in business by confusing the hell out of normal people...but hey, so do most tech/computer people...so we have a lot in common
<ducks for cover>
Actually, there is a very practical reason for an opinion as such. The decision is appealable, and if there isn't any factual and legal basis for the decision, there is a good chance it will be appealed. Because of the depth of the legal ground that this judge was standing on, there isn't much chance that he'll be appealed.
Besides, judges don't write opinions, law clerks do....
Originally posted by AppleInsider
And while TigerDirect and Apple share an overlapping consumer base, Judge Lenard said "any given customer who cross-shops TigerDirect and Apple, whether over the internet or in person at their retail local stores, will be able to distinguish their respective retail outlets due to the distinctive differences in their marketplaces' appearance and messages."
Doh! It doesn't take 6 years of law school to figure that out.
Originally posted by MacCrazy
Well this was the sensible decision - TigerDirect just wanted money and free advertising.
Yeah, they got some free advertising. Mostly negative in my opinion. TigerDerelict
Originally posted by coolfactor
And they got it (advertising), but was more harm done than good? Many [Mac] people said they'll never use TigerDirect after this.
Yeah, I am one of those people that will never use TigerDirect again, that entire situation was completely bs in my opion. What I liked is how there are 24 other companies with the Tiger marks also associated to the products and who do TigerDirect go after, the company that uses it and has the most money. I'm sorry, but going to court for that is just stupidity.
TigerDirect.com recommends Microsoft® Windows® XP.
Fokkers.
--B
Originally posted by bergz
I went to TigerDirect and did a normal search for Macintosh and this is what I got:
Fokkers.
--B
Well recommending Windows XP isn't going to do much for their reputation.
Originally posted by a_greer
A judge is nothing more than a lawer in a gown, lawers stay in business by confusing the hell out of normal people...but hey, so do most tech/computer people...so we have a lot in common
<ducks for cover>
That's a pretty silly statement. I'm sure you know better.
An opinion is facts tempered with the knowledge necessary to come to a reasoned conclusion.
A judge has to state the reference to law, precedent, acknowledge the facts, and tie it together with logical reasoning.
Just because something seems obvious doesn't mean that it's supported by law, or precedent. That has to be shown.
And the case isn't over. This simply decried the injunction, though it laid the groundwork for a decision.
Originally posted by bergz
I went to TigerDirect and did a normal search for Macintosh and this is what I got:
Fokkers.
--B
That's a standard phrase used for pc resellers who use microsoft's products. It's in their contract... Same goes for Dell.
Originally posted by Matthew Yohe
That's a standard phrase used for pc resellers who use microsoft's products. It's in their contract... Same goes for Dell.
Dell results in lots of products for Mac - photoshop, quark, floppy drives etc.
Oh wait - at the top of the page it says dell recommends Windows XP pro
Originally posted by OBJRA10
watch your language please......
Awwww, when did that rule kick in? Anyhow, I find your "imaginitive" substitution quite witty, and has inspired me to be more "imaginative" in my use of cussing.
Originally posted by MacCrazy
Dell results in lots of products for Mac - photoshop, quark, floppy drives etc.
Oh wait - at the top of the page it says dell recommends Windows XP pro
Actually it's true.
It's too bad that it's true, but it is.
Here in NYC, the Board of ED has it's contract with Dell as it's computer supplier.
Guess where it buys it's Macs from?
Yup! DELL!
How's that?
Right has triumphed.
I will take great pleasure in taking the trash out from now on. For some reason I'm on TigerDirect's mailing list.
V/R,
Aries 1B
Originally posted by hardeeharhar
strength and speed... heh.
Gotta love Phil Schiller hehe