Wednesday, May 21, 2008

Computer Company Sues Apple and CBS over MIGHTY MOUSE computer mouse

On March 20, 2008, Man & Machine, Inc. (“M&M”), a Maryland-based computer accessories provider, filed a trademark infringement lawsuit Apple, Inc. (“Apple”), CBS Corporation, and CBS Operations Inc. (“CBS Operations”) over the word mark MIGHTY MOUSE to identify a computer mouse. See Man & Machine, Inc. v. Apple, Inc. et al, Case No. 08-cv-01311 (D. Md. May 20, 2008). A copy of the complaint can be downloaded here.

According to the complaint, M&M began selling a waterproof, chemical-resistant computer mouse using the mark MIGHTY MOUSE on or before March 16, 2004.

M&M's MIGHTY MOUSE computer mouse

On August 2, 2005, Apple announced and began selling a new computer mouse with multiple buttons (breaking a long-standing Apple tradition of computer mice with only a single button) under the name MIGHTY MOUSE (see also Wikipedia write-up on Apple’s Mighty Mouse).

Apple's MIGHTY MOUSE computer mouse

CBS Operations is the owner of several registrations directed to MIGHTY MOUSE including for watches and tee shirts; dolls, jigsaw puzzles, and plush toys; and toy vehicles. The oldest registration for the MIGHTY MOUSE trademark (for film series of animated cartoons for motion pictures and television, for comic magazines and color books, and toy puzzles) expired in July 1999 when the registration was not renewed. CBS Operations also still holds a design mark registration for the famed “Mighty Mouse” cartoon character – the well-recognized cartoon mouse with the red cape and yellow tights.

The Real Mighty Mouse

At some point, Apple entered into a license agreement with CBS Operations to use the phrase MIGHTY MOUSE on its computer mice. It is not clear whether Apple recognized from the outset that CBS Operations’ had trademark rights to the MIGHTY MOUSE mark (albeit not necessarily for computer mice) or whether CBS Operations staked its claim against Apple soon after sales began.

On July 9, 2007, CBS Operations filed a §1(a) use-in-commerce trademark application to register the MIGHTY MOUSE mark for computer cursor control devices, namely, computer mouse (claiming a first use in commerce date of August 2, 2005). For reasons not entirely clear, the application was initially based on a claim of acquired distinctiveness under §2(f), for which CBS claimed the following: The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). 1533890.” The registration cited by CBS Operations is for the design mark of the Mighty Mouse cartoon character (pictured above). The goods for which such design mark remains active are “film series of animated cartoons for motion pictures and television; sunglasses; watches; tee shirts; and sweatshirts.” However, an Examiner’s Amendment was later entered that removed the Section 2(f) claim; instead, CBS Operations disclaimed the word MOUSE. The mark was published for opposition on December 18, 2007.

Someone must have notified M&M about CBS Operations’ pending application because that same day (December 18, 2007), M&M filed a §1(a) use-in-commerce trademark application to register the MIGHTY MOUSE mark for computer cursor control devices, namely, computer mice (claiming a first use in commerce date of March 16, 2004). This mark is scheduled to be published for opposition May 27, 2008.

In addition, on December 26, 2007, M&M filed an opposition against CBS Operations’ application. See Man & Machine, Inc. v. CBS Operations Inc., Opposition No. 91181500 (TTAB Dec. 26, 2007). A copy of the opposition can be downloaded here.

In M&M’s current complaint, M&M claims trademark infringement and unfair competitions under §43(a) of the Lanham Act (15 U.S.C. §1125(a)) against Apple for its use of the MIGHTY MOUSE mark in connection with computer mice. In addition, anticipating an obvious trademark dilution counterclaim by CBS Operations under §43(c) of the Lanham Act (15 U.S.C. §1125(c)), M&M also seeks a declaratory judgment of non-dilution against CBS Corporation and CBS Operations.

While the basis for M&M’s contention that its use of the MIGHTY MOUSE name does not dilute CBS Operations’ MIGHTY MOUSE mark is not entirely clear from the complaint, a review of M&M’s opposition provides some insight. In opposing CBS Operations’ MIGHTY MOUSE application, M&M cites to a TTAB opposition filed by Viacom International, Inc. (CBS Operations’ predecessor-in-interest) back in 1995 against a company that sought to register the mark MY-T-MOUSE THE SOFTWARE THAT MAKES YOUR MOUSE A MOUSE THAT TYPES! (and Design). See Viacom International, Inc. v. Komm, et al., Opposition No. 91098994 (TTAB Feb. 5, 1998).

In that decision, the Board found no likelihood of confusion between the Applicant’s mark and Viacom’s MIGHTY MOUSE mark. In analyzing one of the du Pont likelihood of confusion factors (fame of the mark), the Board stated the following:

However, MIGHTY MOUSE is not a famous mark in the legal sense that other marks have been found to be famous. The evidence shows that MIGHTY MOUSE achieved its fame as a cartoon character of the 1940s, '50s and early '60s. Opposer has provided little evidence of the extent of the use of the mark in the United States since that time. For example, although there was testimony that the mark was used on toy puzzles and vitamins, there was no evidence as to the amount of sales of these products. Ms. Petrasek gave only the copyright date shown on the labels of the packaging. Nor did opposer provide evidence of how often, or where, the MIGHTY MOUSE cartoon programs were shown when they were in syndication. As opposer itself has recognized, MIGHTY MOUSE is one of its nostalgic television properties, and its appeal is to adults because it is they who remember the first television series.

M&M will apparently be relying on this determination by the Board to support a finding that CBS Operation’s MIGHTY MOUSE mark is not famous for dilution purposes, and therefore, M&M’s use of the mark for its computer mice does not dilute CBS Operations’ “famous” MIGHTY MOUSE mark.

In M&M’s opposition, M&M also attacks CBS Operations’ application on the basis of misstatements to the PTO – specifically CBS Operations’ §2(f) claim that its MIGHTY MOUSE mark (for computer mice) has become distinctive of such goods as evidence by CBS Operations’ ownership of the not-so-same mark for goods that are not related to computer mice. However, given that this claim of acquired distinctiveness was deleted from the application before publication, it is not likely to help M&M with its opposition.

M&M seeks injunctive relief to stop Apple and CBS Operations. M&M specifically notes that Apple, through its monstrous marketing efforts, has made it virtually impossible for M&M to market its MIGHTY MOUSE mark online (any search engine search for MIGHTY MOUSE will find Apple’s mouse, but not M&M’s mouse).

Vegas™Esq. Comments:
Looks like M&M, anticipating an opposition by CBS Operations against its own pending application, decided to be proactive and file a lawsuit instead – possibly bringing the matter into a more convenient forum.

This case illustrates once again the importance of businesses applying for federal trademark registration as early as possible. Had M&M filed an application for the mark back in 2004 when it first began selling computer mice under the mark, it may have been in a better position with respect to its MIGHTY MOUSE computer mouse. Either M&M would have acquired a federal registration and would have the exclusive right to use the mark nationwide or CBS Operations would have filed an opposition to the M&M's application to register the mark and the parties would be battling it out now – in either case, Apple would have been put on notice of the conflict and may have been more inclined not to use the name in the first place. Instead, M&M did not file any application until CBS Operations own application (which also, in my opinion, was not filed in a timely manner) was published for opposition.

As it stands, M&M will have to rely upon its common law rights to the name, which will entail a showing by M&M of its market penetration with respect to its MIGHTY MOUSE mark before Apple began selling a mouse with the same name (an uphill battle given that M&M acknowledges that it has only sold tens of thousands of its computer mice).

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