TMO Reports - TIBCO International Rendezvous Demand "Plainly Absurd" Says Developer

by , 10:00 AM EDT, October 13th, 2003

The controversy surrounding Apple's use of the name Rendezvous has extended to third-party developers. Just one week after TIBCO Software filed suit against Apple alleging trademark infringement, independent software developer Andrew Wellington received a cease-and-desist letter from TIBCO's law firm regarding Rendezvous for Proteus, a plug-in that enables users of the Alien Technology's Proteus messaging application to communicate with other users via Apple's Rendezvous technology, similar to iChat.

While the letter from TIBCO's law firm, Fish & Richardson P.C., notes that the State of California registered the Rendezvous trademark to TIBCO on August 14, 2003, both Apple and TIBCO have federal trademark registration applications pending in the US for Rendezvous. Wellington and his company's servers are located in Australia, however, where Apple owns the trademark for Rendezvous, while TIBCO in Australia only possesses the trademark for TIBCO Rendezvous.

"F&R's claims are to me plainly absurd and they didn't seem to have done any research before sending the letter in question," Mr. Wellington told The Mac Observer. He has responded to Fish & Richardson and informed them of his position but to date has yet to hear back from the firm, despite the fact that the firm's demand for him to remove the name within 10 days has passed.

"Trademarks are geographically limited; rights in one country does not mean rights in another," Lars S. Smith, assistant professor of law at the Louis D. Brandeis School of Law at the University of Louisville, told The Mac Observer. "What's interesting in this case is how TIBCO uses its trademark. On the TIBCO site, nothing is referred to as 'Rendezvous', everything is referred to as 'TIBCO Rendezvous.'"

That discrepancy may be enough for Apple to be granted the US federal trademark for Rendezvous, which it filed for in 2002--months before TIBCO applied for that same trademark. Apple's application for the federal trademark is also currently being challenged--presumably by TIBCO--although that information is not available. For its part, TIBCO maintains that it has used the name Rendezvous in its product since 1994.

Another point of contention could be TIBCO's own description of its trademark. In its US federal trademark filing for TIBCO Rendezvous, the company describes its product as "a messaging tool to be used by application developers and network systems managers to build scalable distributed applications." By so specifically identifying its target audience it could be difficult to prove that Apple's use of Rendezvous constitutes trademark infringement.

"In cases of trademark infringement, the names, products, consumers, and channels of trade must all be taken into account," Prof. Smith said. "Is it likely that TIBCO's customers--application developers and network system managers--would be confused between TIBCO Rendezvous and Apple's networking technology? TIBCO would have to prove that."

As far as Mr. Wellington goes, Prof. Smith sees him as only being vulnerable to litigation if TIBCO were to contest Apple's trademark in Australia and win. At that point, TIBCO could make a case for intentional trademark infringement against Mr. Wellington, were he to continue to ignore the cease-and-desist notice.

Other developers of applications that use the name Rendezvous were contacted by The Mac Observer, but none have received any correspondence from Fish & Richardson. Fish & Richardson did not return calls seeking comment.