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Friday, May 13, 2005

Court sides with Apple over "Tiger" trademark dispute

By Kasper Jade

Published: 07:00 PM EST

A judge has denied a request by computer retailer TigerDirect for a preliminary injunction against Apple Computer over allegations that Apple's nickname for its new operating system, "Tiger," infringes on the retailer's trademarked name.

The ruling was part of a 56 page opinion handed down on May 11th by Judge Joan Lenard of the United States District Court for the District of Florida. After weighing arguments from both sides, the Court found that "there is greater risk of damage to Apple from granting the injunction than any potential harm to TigerDirect from Apple's use of Tiger marks."

In the suit, filed last month, TigerDirect argued that Apple's use of the Tiger name alongside its Mac OS X 10.4 operating system was causing "confusion, mistake and deception among the general purchasing public." Specifically, the retailer contended that Apple's use of the name "Tiger" on the Internet had knocked it from the top of search results on Google, Yahoo and MSN.

TigerDirect's original motion for a preliminary injunction requested the court enjoin Apple from using the term "Tiger" in any matter -- a request that, if fulfilled, could have halted Apple's roll-out of the Mac OS X 10.4 operating system. However, at the May 5th preliminary injunction hearing, TigerDirect narrowed its request and asked the court to bar Apple from using the Tiger mark in any manner except in direct proximity to Mac OS X or Mac OS X 10.4.

To lessen the harm to Apple, the retailer said Apple could still use previously paid for advertising and promotion materials, but requested the Cupertino, Calif-based computer maker cease from using the Tiger mark anywhere on its web site or in any new advertising, signage, or packing; except when pertaining specifically to Mac OS X 10.4.

During the hearing, both parties provided slide presentations as exhibits. Apple also called Philip Schiller, Senior Vice Present of Worldwide Marketing, as a witness. Schiller was reportedly present when Apple selected the "Tiger" nickname for Mac OS X 10.4 and testified that Apple had no intention of trading on the goodwill built up by TigerDirect. He said Apple, over the last several years, had engaged in a practice of naming updates to Mac OS X after large predator cats in order to convey the strength and speed of the operating system.

Apple also entered into evidence a survey that revealed only 6% of consumers associated the name "Tiger" with TigerDirect. Meanwhile, the survey of 517 people showed that only 4 people associated the name "Tiger" with a company -- a result the Court found most interesting. Apple asserted that TigerDirect does not posses a protected family of Tiger marks, as defined by applicable trademark law, nor does it retain a valid Tiger mark for computer goods.

Furthermore, Apple disputed that its own use of 'Tiger' is confusingly similar to TigerDirect's use and provided evidence of over 200 federal registrations of marks containing the term "Tiger" -- including 24 companies, other than TigerDirect, which employ Tiger marks to promote computer products and services.

The Court ultimately sided with Apple, agreeing that TigerDirect was unable to meet the burden of proof necessary for a preliminary injunction to be granted.

"Turning to the overall impression created by the marks, in the context of each party's use thereof, the Court finds that the marks are distinctly different," Judge Lenard wrote in her opinion denying TigerDirect's motion. She said Tiger marks are frequent in the computer industry and that she saw no evidence that Apple adopted the Tiger name in bad faith or that it has caused any confusion in the market place.

And while TigerDirect and Apple share an overlapping consumer base, Judge Lenard said "any given customer who cross-shops TigerDirect and Apple, whether over the internet or in person at their retail local stores, will be able to distinguish their respective retail outlets due to the distinctive differences in their marketplaces' appearance and messages."

According to court documents, over the last year Apple has spent over $50 million to orchestrate a carefully planned marketing campaign and product launch of Mac OS X 10.4.

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