The (Mighty) Mouse that Roared

A tiny tech company based in Landover, Md. stirred the Mac blogosphere yesterday by filing a lawsuit against Apple over, of all things, the use of the name "Mighty Mouse."

Man & Machine Inc., a private company with 20 employees, has sold a specialty mouse (it's waterproof and chemical resistant) under the name "Mighty Mouse" since March 2004.


Apple, of course, introduced its own "Mighty Mouse" in August 2005. Trouble followed for M&M, which soon discovered its product vanishing from Web searches.

Because M&M started using the name "Mighty Mouse" first, it has a valid trademark claim. Hence the lawsuit.


Since Apple seems to get in frequent legal scrapes over trademarked names, you'd think they'd start checking these things more carefully.

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.

The Mickey Mouse Steve has the clout to license name. Ears could serve as buttons.

The Minnie Mouse Better suited for a throat lozenge-sized mouse.

The Fievel Mouse Makes no sense, but that's part of its appeal.

The Danger Mouse My personal favorite. Would appeal to college students.

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