Remember the iPhone troubles last year with Cisco? Or the "Rendezvous" networking technology that had to be renamed "Bonjour" in 2005 after a conflict with Tibco Software of Palo Alto, Calif.? And do I even need to bring up the long-running Apple Corps skirmishes with the Beatles?
But Apple might have an excuse this time. Knowing "Mighty Mouse" is a famous crime-fighting cartoon figure, Apple simply sought permission to use the name from the company that owned the rights to the cartoon – CBS Corp.
CBS agreed and licensed the term "Mighty Mouse" to Apple for use with its computer product. CBS Corp. and its subsidiary, CBS Operations are named as co-defendants in the suit.
Either no one bothered to research for a pre-existing use of the name or someone along the way decided a company as small as M&M wouldn't dare fight such corporate behemoths as Apple and CBS.
Far from frivolous, the M&M suit makes a strong case. Under U.S. trademark law, first use of a trademark generally carries the day. M&M could have saved itself a lot of trouble, however, had it filed for the "Mighty Mouse" trademark in 2004.
Instead, it no doubt contacted Apple to complain. Apple no doubt contacted its friends at CBS and lo and behold – CBS filed last July to trademark the term "Mighty Mouse" to describe a computer-pointing device.
When that trademark was published for opposition in December, M&M filed its own trademark application, citing first use as the basis for its counterclaim. The U.S. Patent and Trademark Office has yet to rule on the dispute.
The long-established existence of the cartoon character – Mighty Mouse debuted in 1942 – may be crucial to the outcome of the case.
Often companies in very different, non-overlapping businesses are permitted to use the same trademark. The main issue is whether customers of either company could be confused. Certainly no one would confuse the cartoon character with a computer mouse.
But very well known trademarks can fall under a broader rule that protects against another party's use of the mark if it "causes dilution of the distinctive quality of the mark." This rule holds even if the other party is using the mark in a completely different business.
In other words, CBS could argue the fame of "Mighty Mouse" should prevent its unauthorized use by almost anyone else for almost any commercial purpose. If the court agrees, Apple wins by its having licensed the name from CBS.
If the court sees things M&M's way, Apple will suffer more than CBS. In the suit M&M asks for a permanent injunction against Apple to prevent its use of the term "Mighty Mouse," and a requirement that Apple "destroy" all products and packages bearing the name.
M&M also asks for the usual court costs and attorney's fees, but the damages, if awarded, would amount to a paltry $75,000.
Then Apple will need to rechristen its mouse. If Steve Jobs wants to stick with cartoon mice, he has some less-than-ideal choices:
The Jerry Mouse (of Tom & Jerry) A long shot. It sounds slapped together.