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).

Is a trademark battle brewing over KNUT?

There is an interesting trademark battle possibly brewing for fans of the famed polar bear cub KNUT (pictured above).

Knut was born at the Berlin Zoo in December 2006. After Knut was born, Knut’s mother rejected and abandoned the newly born cub. The Berlin Zoo had not had a polar bear cub survive past infancy in more than 30 years, so zookeepers opted to raise him. Knut’s story garnered international attention, however, after a German tabloid in March 2007 quoted an animal rights activist saying that Knut should have been killed rather than being raised like a domestic pet. This led to an outpouring of support in favor of keeping Knut alive, including a letter campaign to the Berlin Zoo and protests outside the zoo by children.

The Berlin zoo unveiled Knut to the public on March 23, 2007. That same day, the Berlin Zoo filed two German trademark applications for the mark KNUT for various goods (see Registration No. 30720102.3, registered May 29, 2007 and published June 29, 2007; and Registration No. 30720189.9, registered July 24, 2007 and published August 24, 2007) (click here for search engine to search German trademark filings). The branding of Knut led to a doubling of the Berlin Zoo’s stock on the German stock exchange.

Soonafter, in the United States, an enterprising company and an individual with no apparent connection whatsoever to the Berlin Zoo decided to file federal trademark applications on the name KNUT.

One application was a Section 1(b) intent-to-use application filed May 2, 2007 by an individual named Joseph Dominick Castano for the mark KNUT THE POLAR BEAR. The description of goods was the following: “Motion picture films about Knut the Polar Bear; Digital materials, namely, DVD featuring Knut the Polar Bear; Downloadable MP3 files, MP3 recordings, online discussion boards, web casts, pod casts featuring music, audio books and news broadcasts.” Not surprisingly, the U.S. Patent and Trademark Office (“PTO”) refused registration under Section 2(e)(1) on the grounds that the mark was merely descriptive: “Here, the mark ‘KNUT THE POLAR BEAR’ is descriptive of applicant’s goods because the goods presumably feature the famous Berlin Zoo polar bear, Knut.” The applicant did not respond to the office action and the application went abandoned.

However, the more interesting application is the one that was filed even earlier. On April 9, 2007, a Section 1(b) intent-to-use application was filed by a California corporation named Transpo Products for the mark KNUT for “Stuffed toy bears; Teddy bears”. After being published for opposition on September 19, 2007, a notice of allowance was issued January 1, 2008. The applicant’s first specimen was rejected by the PTO because it was a catalog page advertising the Knut teddy bear (promoting the “Official U.S. Knut polar bear stuffed toy animal”), but did not show the necessary ordering information. The second specimens, submitted March 18, 2008, were two pictures of what looks like a panda bear (one with a stitched-on label reading “KNUT” and the second with a price tag that reads “KNUT”). The specimens apparently satisfied the PTO, and the mark was registered last Monday, May 13, 2008.

Trasnpos's first specimen of use

Transpo's second specimen of use

What makes this particular registration interesting is that the Berlin Zoo, having branded the name KNUT in Germany, announced on May 1, 2007, that New York-based Turtle Pond Publications LLC (“Turtle Pond”) had acquired the world-wide publishing rights to Knut. Apparently, the deal may have been worked out a little sooner because on April 16, 2007, Turtle Pond filed with the USPTO five Section 1(b) intent-to-use trademark applications in its name directed to the KNUT mark including for prerecorded videotapes, electronic publications, motion picture films and computer games; children’s books; theme park services, motion picture productions, ongoing TV program and motion picture series and live performances; clothing; and, of course, stuffed toy animals. On July 19, 2007, Turtle Pond filed two additional applications for the KNUT mark for foods (later amended to cookies, candy, cereal, ice cream, chewing gum and cakes) and non-alcoholic beverages (later amended to carbonated beverages, bottled waters, vitamin waters and fruit juices). The applications do not claim any priority filing date to the foreign trademark application filed by the Berlin Zoo.

For Turtle Pond’s five April 2007 applications, non-final office actions were issued August 6, 2007. Transpo’s pending application was cited at the time as a possible grounds for refusal, so Turtle Pond certainly had notice of Transpo’s application and its earlier filing date before Transpo’s application was published for opposition. On February 14, 2008, the PTO suspended prosecution of these five applications pending the outcome of Transpo’s application noting that because Transpo’s effective filing date was subsequent to Turtle Pond’s filing dates, Transpo’s registration could be grounds for refusing Turtle Pond’s applications on the basis of likelihood of confusion.

As for Turtle Pond’s two July 2007 applications, non-final office actions were issued October 3, 2007; however, the Examining Attorney did not cite to Transpo’s then pending application. Both have received final actions, but the necessary changes relate to the identification of goods and not to any substantive refusals to register.

While the registration of Transpo’s KNUT mark now raises an issue for Turtle Pond’s five April 2007 application, the only application that is likely to be in serious jeopardy is Turtle Pond’s application for the mark KNUT for stuffed toy animals because Transpo’s registration for the mark KNUT for “stuffed toy bears” and “teddy bears” will certainly be cited as a grounds for refusing registration of Turtle Pond’s KNUT mark under Section 2(d) likelihood of confusion (identical marks, identical goods).

It will be interesting to see how far Turtle Pond is willing to go to assert its “legitimate” rights to the name KNUT against this company that got an advantage by being a little faster to file at the PTO. An investigation into Transpo’s “bona fide intent” to use the mark when it originally filed the application as well as its claimed date of first use in commerce (May 15, 2007) may be worthwhile if Turtle Pond desires to file a petition to cancel Transpo’s registration.

Of course, the bigger lesson here is that this entire situation could have been avoided had the applications instead been filed by the Berlin Zoo under Section 44(d) of the Lanham Act, 15 U.S.C. §1125(d). Under Section 44(d), foreign applicants can claim a priority date based on an earlier filed foreign application so long as the U.S. application is filed within 6 months from the filing date of the foreign application. Here, the Berlin Zoo could have filed trademark applications as late as September 23, 2007 (after Turtle Pond had received notice of Transpo’s pending application and even after Transpo’s application had been published for opposition) and still received a priority filing date before Transpo’s effective filing date.

A grown up Knut (not quite as cute)

A Trademark Battle of the Brains

Exodus Film Fund I, LLC (“Exodus”), under the name Exodus Film Group, is the producer of an animated motion picture titled “Igor” scheduled to be released in October 2008. One of the characters created by Exodus in connection with the movie is “Brian the Brain” (pictured below), described as “a scientific lab experiment consisting of a brain floating in a jar filled with liquid that sits on top of a base, who is frustrated because the label of the jar reads ‘Brian’ instead of ‘Brain,’ hence the name ‘Brian the Brain.’”

Exodus claims to have been using the BRIAN THE BRAIN character continuously since July 15, 2005, in connection with its animated motion picture and related collateral products and merchandise. On September 28, 2007, Exodus filed a Section 1(b) intent-to-use application to register the design mark for various goods related to its pending animated movie. That application is still pending.

On March 7, 2008, Exodus filed an opposition against Mega Brands International (“MBI”) opposing the registration of two of MBI’s pending trademark applications for the word mark BRIAN THE BRAIN (one for interactive electronic educational game machines and one for apparatus containing software featuring educational learning device). See Exodus Film Fund I, LLC v. Mega Brands International, Oppositions No. 91182864 and 91182865 (T.T.A.B.). Copies of the Notice of Opposition in each case can be downloaded here and here. MBI filed its two trademark applications as intent-to-use applications on March 9, 2007 -- one was published for opposition on September 11, 2007, while the other was published for opposition on March 4, 2008.

Exodus’ opposition notes that while MBI filed its trademark applications as intent-to-use and the applications are only for the word mark BRIAN THE BRAIN, MBI is actually currently using its mark in commerce by selling its BRIAN THE BRAIN educational toy (pictured above) through its own website as well as on Amazon.com and The Sharper Image. Exodus argues that MBI’s BRIAN THE BRAIN character of a brain in a jar sitting on a base is confusingly similar to Exodus’ own BRIAN THE BRAIN character.

Exodus argues that through its promotion of its animated film at conventions, to financiers, to distributors, and general publicity about the film, Exodus' BRIAN THE BRAIN character has come to be associated exclusively with Exodus. As such, Exodus argues that MBI’s applications should be refused registration based on Exodus’ priority of use (an alleged earlier use date of July 15, 2005) as well as likelihood of confusion based on the similarity in appearance and sound of the marks and similarity of goods sold under such marks (i.e., the electronic goods and toys on which MBI uses its mark are commercially related to the type of goods that Exodus asserts is likely to be potentially offered to consumers in connection with the release of its animated movie).