Texas Trademark Lawyer Tamera Bennett

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MIGHTY MOUSE FLIES TO COURT

by: Tamera H. BennettMay 21, 2008

Man and Machine, Inc. sued Apple, along with CBS, for trademark infringement over the name of its wireless "Mighty Mouse" device.

The Houston Chronicle reports today:

Apple started selling computer mice under the name "Mighty Mouse" more than a year after Man & Machine Inc. began selling waterproof and chemical-resistant computer mice to labs and hospitals under that name in 2004, according to the suit filed Tuesday in Greenbelt, Maryland. Man & Machine claims its earlier use trumps Apple's, even though Apple sells more products.

According to the USPTO records CBS Operations, Inc. is claiming a date of first use in interstate commerce of August 2, 2005 for Computer cursor control devices, namely, computer mouse. CBS filed the application on July 9, 2007. The mark was approved for publication and Man & Machine filed an opposition to the registration. The opposition proceedings were suspended April 26, 2008 pending settlement negotiations. Guess those talks were not working out.

Man & Machine, Inc. filed an application with the USPTO on December 17, 2007 for Computer cursor control devices, namely, computer mice. Man & Machine claims a date of first use in interstate commerce of March 16, 2004. The date of publication of this application is scheduled for May 27, 2008.

I am confused how did the USPTO let an identical mark, with an identical description of goods, through the review process without issuing an office action or at least suspending the application until the pending TTAB proceeding is resolved?

This is one of those great cases where the Senior user is the second to file the trademark application. Lesson to learn: File the application when you launch the product or prior to launch. It will save you heartache and money.

On a side note, CBS allowed their two registrations for the animated Mighty Mouse character to expire.