Re: Apple, CBS sued over use of “Mighty Mouse”
takes off Mac user hat... puts on IP lawyer hat
Trademarks don't require "obvious confusion" as one person stated, but "actual confusion" and "likelihood of confusion" (legal standard used) are evidence of trademark infringement. The name is sufficient. If two companies offer a product called "mighty mouse" there is a problem. No question about that. The issue is, which product get the trademark.
Trademarks are done by class of goods. If you're budweiser, and you want to market an automobile under that name, you need to file a separate application for automotive goods. You can claim priority back to your old beer trademark saying that your business has expanded into a new arena. However, just because you don't already own a mark in the class of automobiles, doesn't mean that some bozo can come in and register budweiser in the automotive class without your permission. That sort of activity (just like this case) will almost always lead to an opposition, and the owner of the famous mark (that is being hijacked by the squatter) will 999 out of 1000 times be denied the registration.
Thus, M&M is attempting to register "Mighty Mouse" without CBS' permission, an endeavor that is likely to lead to failure. This is why Apple was brilliant to license the name first, then make the product second. M&M's activity amounts to trademark cyberquatting.
If I were CBS, i would counteract M&M's registration not just by the use in commerce represented by the first sale of an Apple MightyMouse, but also with the signing (and negotiation) of the license agreement. That was when the use of Mighty Mouse in computer peripherals was actually first used, not when Apple sold the first unit.
