Isn't waiting two years to file lawsuit NOT exercising due diligence at protecting your trademark, and therefore proof you really don't give a damn? Not that I'm on anyone's side here, protect what is yours PROMPTLY. But where do these petty lawsuits stop? We all pay for them in the end because of backed up courtrooms and insurance premiums. Why didn't they advise Apple with a cease and desist order 2 years ago? Were they waiting till Apple had actually developed a market share for the device so they could sue for damages?

What the defendent has done before now. It's most likely that they _did_ say something to Apple and CBS, but didn't get satisfaction, and I believe that the statute of limitations is running out for the lawsuit. In any case, it's not likely that they suddenly appeared and decided to sue.

-Jon

Assumming I would buy a mouse from any company just because it was named Mighty Mouse is ridiculous, but even so, I wouldn't have bought any products from Man and Machine since I've never even heard of them. Add that to the previous post that the M&M (oops - can they use that trademark abreviation or would it be confused with Mars Co.'s candy?) waited two years to protect their trademark, and you have a Mighty Weak argument that Apple's use of the name significantly hurt M&M's (not the candy) sales. Still, there's nothing like suing a company with lots of money to make yourself feel better, right? (not).

If you look at Man-Machine's site and click on the products link for the Mighty Mouse, it's clearly marketed to industrial, medical, and marine applications, unlike Apple's product which is just a home/office consumer product. At $80 Man-Machine's Mighty Mouse is clearly specialized. It's doubtful that the name really makes that much difference. If the consumer is looking for a chemical and water-resistant mouse they wouldn't be looking at Apple's site for this type of peripheral. perhaps the court will order Apple to stop using the name and pay court and attourney's fees. Call it the Mightier Mouse.

"The name of [Apple's] mouse is used under license from CBS Operations, owner of the Mighty Mouse cartoon series." - Wiki

Does Man and Machine have such a license? Is it exclusive?

@algr

According to the article, M&M claims to own the trademark for computer peripherals, and says CBS doesn't, making this suit quite reasonable.

In 1969, the movie "2001" mentions the Pod bay door for pods capable of hooking up to a spaceship that is used for transportation between parts of the spaceship. The company PODS:

http://www.pods.com/

has a storage box used as a place to store outside of the home in the driveway personal valuables.

Apple's iPod has a similar sounding name.

One wonders why a trademark lawsuit hasn't come of that?

The M & M mouse looks like an old Apple ADB mouse, converted to two buttons. And it would've been courteous of Man & machine to get permission from CBS when they named their product, even though TerryToon's clairvoyance failed and they didn't seek trademark protection on applications that didn't exist.

If you do a trademark search, you'll see that M&M was silent on the issue. They never filed for a trademark, and never objected to Apple's use of the name.

Then on July 9, 2007, CBS filed a trademark application for Mighty Mouse to describe a computer mouse as a new trademark outside of those they already had or had filed for Mighty Mouse to describe the character and other character related products.

The filing was published for opposition on December 18, 2007. M&M must have seen this because they filed for their trademark on the exact same day. The M&M filing for the trademark is scheduled to be published for opposition on May 27, 2008. M&M may have had discussions with Apple/CBS which soured and then resulted in M&M realizing that if they want to be able to continue to sell their mouse under the name Mighty Mouse, they'll need to sue Apple.

Thus, their moves have only been defensive.

On the other hand, I can only imagine that if there is confusion, the confusion over the years has already occurred with M&M having done nothing about it. At this point the name is either fine for both to use, or damaged and as such M&M would need a new name. Live and learn M&M.

If you want to see how trademarked names can go wrong even after *many* years, check out the story of L' Chepeau aka El Cheapo Natural Organic Soy Sauce

The issue is the potential to confuse, so trademarks are limited to the type of product/service and geography. So for example you won't have two unrelated restaurants with the same name in an area. The internet has changed the geographical distinction, so now businesses need to get the best URL and the trademark. But categories still hold as a major distinction in trademark law. Except when you're talking about Apple, a leader among companies that devote significant resources to manipulating intellectual property laws while things are in disarray because of technological advances that the Trademark Office is struggling to adjust to.

Apple's end-run around trademark law is typical. They are bullies about trademarks, they do stomp all over smaller companies that hold trademarks they want, and they stomp on companies that use anything similar to their own name even when it's outside their category. For example Apple is challenging a trademark for a friends of the park organization in New York because they use an apple in their logo. The logos are very different, the categories are quite different, but Apple (the computer company) is trying to stop this little group and anyone else who might want to use an apple (the fruit) in logo or name.

I currently own several Macs, ipods, and Mighty Mouses (which have several known problems). Have used Macs since 1988. Love em. But Apple's trademark attorneys are sharp. Predatory. I believe they knew exactly what's wrong with licensing the cartoon Mighty Mouse trademark from CBS, because I believe they knew that Man & Machine had a registered trademark on the Mighty Mouse name in the category of computer peripherals.

You aren't likely to confuse a cartoon with a computer mouse, so the same names are allowable under trademark law. But you _are_ likely to confuse Apple's mouse with Man & Machine's mouse of the same name. Because Machine trademarked it first in the peripheral category, Apple has no right to use that name for the same thing.

Apple is very clever about trademarks, but their mongering is ruining the intent of trademark protection and making it tough for other businesses and designers (my profession) to know what is safe from legal exploitation by companies like Apple.

let me amend, given the other guest's research into the specifics of Man & Machine's later trademark filing:

If Man & Machine was using the name since 2004, they still have precedence rights to the name within their category. First use. It's certainly a weaker case though.

I think that, unlike many others, this lawsuit has merit. We don't know what happened between the two companies in the intervening 2 years, but if Man & Machine notified Apple early on, then they can wait almost forever, to pursue legal action.

In any case, put yourself in Man & Machine's shoes. You've busted your butt creating an innovative product that fits well in a niche. You give it a cool name and you use it to sell your product. Customers in your niche recognize the product by it's cool name and you're doing all right.

Then along comes a huge corporation with a similar product with the same name. What do you do? Well you might just say, hey, since I'm small, maybe people will confuse my product with Apple's and I'll sell more. That wouldn't work out for long because Apple will want to protect it's market and it would be suing YOU!

How is that fair you say? Well, even though you thought of it first and used it first, you didn't protect it and you will lose it. Happens all the time.

So you have to protect it. Just like Apple would have done.

The thing that's interesting in this case is just who registered what when. It seems that "Might Mouse" has been registered as a computer mouse several times starting in 1990. In 1990 a couple of guys calling themselves "Palmtree Instruments" registered it for "Remote control devices for providing position information to a computer." Sounds like a mouse to me. They abandoned it one year later.

In 2000 William T. Wilkinson registered Mighty Mouse as an "enhanced computer mouse". He hung on to it until 2004.

Then on July 9, 2007 CBS registered it as a "Computer cursor control devices, namely, computer mouse." claiming that it was first used in commerce on August 2, 2005 which, just so happens to be the date that Apple introduced it's "Mighty Mouse". This registration is made public on December 18, 2007.

On that very date, December 18, 2007 Man & Machine register Mighty Mouse as a "Computer cursor control devices, namely, computer mice." Claiming that it was first used in commerce on March 16, 2004.

Now, I'm not a lawyer, but I do know that you can claim a copyright or trademark without registering. (The "TM" symbol means that you're claiming this as a trademark but it's not registered. The circle R indicates that this trademark is registered.)

Given the fact that Man & Machine started selling a computer "Mighty Mouse" in 2004, a year before Apple it seems that they win.

So now lets guess what might have reasonably led up to this particular lawsuit.

Apple, covering it's butt, goes to CBS, the owner of the Might Mouse animated character and ask them if they can license the name for a computer mouse. There might not even be much if any money involved, just a signed agreement that when Apple calls their product a Mighty Mouse, CBS won't sue.

So they do and in 2005 the Mighty Mouse comes out and we're off to the races. Man & Machine see the announcement and their lawyer sends off a nice letter asking Apple to consider changing the name since they already have a computer mouse called Mighty Mouse.

Apple looks over the small company and says "no, yours is really a medical device, and no one is going to confuse the two." Also, they remember that they have an agreement with CBS who owns the character so they turn to CBS to "get this situation straightened out."

Or maybe Apple offered a buy out that Man & Machine didn't like. Or maybe they ignored the whole thing. In any event, 2 years later CBS goes about registering with the US Patent and Trademark office. You have to believe that at this point the companies are aware of one another because on the very day that CBS' registration becomes public, here comes Man & Machine with their registration.

Neither party has a registration number since the mark is being disputed. I'm not sure how the USPTO decides who "wins", but I'll bet instead of making a decision, they let the parties duke it out and the fight just started in earnest.

It seems to me however that since Man & Machine were selling a Mighty Mouse a year before Apple, they would have the upper hand, but maybe Man & Machine's ability to prove it is shaky or maybe Apple just feels it can "out lawyer" them. Unfortunately, courts are used as a business tool.

Changing the name of a product is not unprecedented however. Remember when Apple was pushing "Rendezvous"? Well a company called Tibco Software Inc. was already using that name. They tried to come to some sort of agreement and that didn't happen so they went to court. Since they settled out of court without publicity, you can't really call a "winner" in that case. But as a result of that settlement Apple did change the name from "Rendezvous" to "Bonjour".

In the Tibco case, it may have been an easy business decision to rename a "free" piece of technology and tell Tibco to go pound salt. Renaming a product that they currently sell will take more intestinal fortitude.

Although there are different categories of trademarks, in general, it is frowned upon to try to build your brand on the famous nature of another brand.

The original Mighty Mouse is obviously playing on the famous nature of the cartoon to build their brand. Even if the CBS trademark doesn't specifically cover computer peripherals, it might be claimed that the brand is famous enough to have over-reaching protection and that M&M was trying to stand on the shoulders of the CBS trademark. This is quite different than Rendezvous, because Mighty Mouse is not a generic term like Rendezvous.

You couldn't name your mouse Donald Duck, for example.

I think it would be up to CBS, however, to sue M&M, because otherwise they would be losing the right to license their mark.