jragosta said:
Actually, it doesn't pass the straight face test for several reasons:
1. They don't use 'Tiger' alone any more - and probably never have. They use "Tigerdirect" and "TigeronTV" and similar things, but never 'Tiger'. That alone is enough to stop enforcement.
Actually, they (Systemax, Inc, the parent of Tiger Direct, Inc.) have a federal registration for TIGER. That's enough to get an injunction under federal law.
By that logic, if I open a store called 'Joe's Jazzy Musical Instruments', I could stop Joe's Catering from using the name.
Actually, it's much more involved in that. You'd have to have used the mark first. In addtion, the court would have to consider factors such as how well known your mark was, how similar the goods and services were, whether the goods/services were sold in the same/similar channels of trade, were there any instances of actual confusion of consumers, whether Joe's Catering had acted in bad faith, and whether it was likely you were going to go into the catering business. It's not a mathematical determination, and just one or two factors can be outcome determinative. For example if they opened up next door in the same strip mall, using the same style font in their sign, that likely would have you peeved.
2. Their complaint is just plain silly. Look at how they put 'UNLEASHED' in all caps - as if it was so horrendous. It also looks petty.
Common practice by trademark lawyers to capitalize trademarks. That's what the USPTO does.
3. There's no risk of confusion.
Hard to handicap, in my opinion. I agree with you, but, given that Apple was aware of tigerdirect.com, and chose the mark anyway, could sway the judge. But Apple has good counsel, I believe, and should be able to argue that consumers of each party's respective products are savvy enough to know the difference.
4. Apple's Tiger is an operating system which can't be confused with a mail order outfit - and doesn't conflict with the Tiger trademark.
You sound like Apple's lawyer
. Actually, that's a bit of a mischaracterization. They're an online computer sales company that sells directly to retail consumers. So is Apple. They sell software, including operating systems. So does apple. Now, Apple is also much more than that, but you can be sure that's how tigerdirect will argue it.
5. A company has a legal obligation to try to minimize disruption to the marketplace. Their stunt of waiting until the day before Tiger is released opens them for all sorts of extortion and tortuous interference claims.
They didn't. They've been trying to negotiate with Apple for a while (according to their filings, at least), and they filed a challenge to the Apple TIGER registration in December, 2004.
Tiger's going to lose - big time.
Assuming you mean Tiger Direct, we all hope you're right. My copy of Tiger is on order from Amazon as we speak.
