April 29, 2005 8:19 AM PDT

Lawsuit could grab Tiger by the tail

Apple Computer has been hit with a trademark infringement lawsuit, alleging that its newly released Mac operating system, nicknamed Tiger, encroaches on the name of online computer reseller Tiger Direct.

Tiger Direct, a subsidiary of Systemax, filed the suit Thursday and is seeking a temporary restraining order and injunction when it goes before a U.S. District Court in Florida for a hearing Tuesday.

Should Tiger Direct, which also sells Apple products, prevail in its case, it could grab Apple's extensive marketing and promotions for Mac OS X 10.4 by the tail.

Apple plans to debut its Tiger OS at 6 p.m. Friday amid much fanfare at its retail stores. The computer maker plans to close its stores at 5 p.m., only to reopen them an hour later for Tiger's launch with a celebration that will continue through midnight.

Tiger Direct, however, will not be celebrating.

In its lawsuit, Tiger Direct alleges Apple's infringement on its trademark has had far-reaching implications.

"Apple Computer's use of the term 'Tiger' has also affected search results in Internet search engines. Before?an Internet search for the term 'tiger' would result in Tiger Direct being the sole provider of computers, computer software and computer related products. Tiger Direct would also almost always appear in the first three responses to such a search," the lawsuit states.

But now, Tiger Direct alleges, Apple's Tiger OS is at the top of the search listing on Yahoo and Microsoft's MSN, as well as inundating search results on Google.

And as other Apple resellers begin to carry the Tiger OS, more competition is expected to follow when it comes to computer-related Tiger searches, Tiger Direct claims.

Tiger Direct is asking the courts to issue preliminary and permanent injunctions against Apple to prevent its future use of the name "Tiger" in its products, as well as seeking damages in excess of $75,000.

Apple declined to comment, citing the pending litigation with Tiger Direct.

53 comments

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...and that's not all. Then goes zoo, then circus and a golf champion...
Poor Apple. ;-)
Posted by (5 comments )
Reply Link Flag
Give me a break...
So should Kellogs and Amaco sue Tiger Direct? Why did they
wait so long to file anyhow?
Posted by edgedesign (290 comments )
Reply Link Flag
They're in the same industry, duh
Tiger Direct sells computer equipment, and so does Apple. It's an open and shut case.
Posted by Chung Leong (111 comments )
Link Flag
New Lawsuit trend...
I think these rinky dink companies are starting a new trend of
Public relations schemes that involves suing big and known
companies in order to get free publicity, they are the new
"remoras of the industry" parasitic jerks that are out to flood the
system for wicked purposes, I hope they and there lawyers are
destroeyed in court and made to look like fools in the eyes of
the industry.
Posted by (3 comments )
Reply Link Flag
Art Thou "Rinky Dink?"
SysteMax, the owner of TigerDirect has had...
practically $2 billion dollars in sales in 2004 (that's BILLION).

By the way Apple's sales for the same period were higher, but only about four times higher coming in at $8.24 billion and that includes subsidiaries like Apple UK and Filemaker.

So I don't know how the first qualifies as Rinky Dink and not the second. 8*Rinky Dink should be at least "Dink" if not "somewhat less Rinky Dink"
Posted by sanenazok (3449 comments )
Link Flag
ridiculous!
i used to shop at tiger direct on occasion but this is a really lame and low blowing publicity stunt to try to ride on the coattails of something bigger.
Tiger Direct grow up. Your store is a mess, the staff pretends to know everything under the sun when it comes to computers and technology, and it's just plain chaotic and disorganized. Thanks for giving me a reason not to shop there anymore.
Posted by kaotica (10 comments )
Reply Link Flag
OK I play both sides of the fence...
When it comes to Apple vs. PC...but I have to say in complete defense of Apple...this is the stupidest gawddamn thing I've ever heard of. What next? Tiger Direct going after Tyan for make a motherboard called Tiger? What about Tiger Electronics the makers of those cheap 'o handheld games? Or how about Tony the Tiger?

Apple corp's employees need to visit the campus site of Tiger Direct with brass knuckles, numchucks, and pry bars and do some damage. Normally this would be bull **** worthy of just getting pissed over. But considering they pulled this the DAY before the release of Tiger I consider this pummel worthy BS.
Posted by Jonathan (832 comments )
Reply Link Flag
Merit?
I don't know if the case has merit and maybe it doesn't matter, but isn't Tiger just a Code name that Apple is using? I don't know how trademark laws work, but it seams to me that if the name was an "internal" name used to refer to OS X.4 then wouldn't it really not fall under a trademark?
Posted by System Tyrant (1453 comments )
Link Flag
Nice publicity stunt
But guess who won't be carrying MacOS in the future. What a way to shoot themselves in the groin!
Posted by frankz00 (196 comments )
Reply Link Flag
Oh so true!
eom :-)
Posted by Thomas, David (1947 comments )
Link Flag
They don't sell Mac stuff.
They only sell iPods. If you search tigerdirect.com for "Tiger" you
will find a mouse pad, two cheap PC's, and a Tiger Woods golf
game. That's it.
Posted by open-mind (1027 comments )
Link Flag
Not quite
Their brand is Tiger DIRECT first of all. And as far as I know, Tiger Direct makes no software to speak of so how brand confusion figures in is beyond me. This suit is a joke.
Posted by frankz00 (196 comments )
Reply Link Flag
Open Mouth Insert Foot!
I don't recall the Automaker filing suit when Apple released their Jaguar OS back in 2002 or even raised a stink for that matter. Maybe because Jaguar had more class! Maybe they thought it was free extra publicity for them. Maybe they thought it was the sincerest form of flattery.

Maybe Tiger Direct should stop wasting everyone's time!
Posted by (1 comment )
Reply Link Flag
Different field
Jaguar didn't sue because they make cars not computers...

It's the same reason why Apple didn't sue a business like "Apple Vacations"
Posted by sanenazok (3449 comments )
Link Flag
Bulk-mail protest?
I wonder what would happen if everyone here got a bulk-mailing app, and bulk emailed 500 messages each in protest to Tiger Direct, if that would over-load their servers and shut them down for a day?

Hmmmm.

And besides, Tiger Direct, to my knowledge, doesn't even sell the Mac OS or hardware. What the f- are they complaining about?

Wake up...time to die!
Posted by (461 comments )
Reply Link Flag
You must be an Apple fanatic
C'mon it's a lawsuit - a way for people to resolve their issues without resorting to threats and violence. TigerDirect spent money advertising their brand and placing it on search engines.

Anyways, I get about 300 pieces of junk e-mail in my throw-away yahoo account, and it has hardly brought the yahoo service to its knees. So you would need to send about 500,000 messages each not just 500.
Posted by sanenazok (3449 comments )
Link Flag
Stupid Totally
Lawyers and CEOs, are slowly but surely taking this country right down the drain. Does any judge need to spend more then 5 seconds on this issue, before he throws it right out of court?
Posted by als (154 comments )
Reply Link Flag
This article has got to be a joke!
How can someone attempt to grab a "Tiger" by its tail without considering the consequences of dangers of the "Jaws - Teeth.." and the "Paws" of such an ferocious animal being loose - is this a "Bengal" one or what ;-)? I seem to have heard so little of Tiger Direct this has got to be some sort a publicity stunt or something like that. If this is the way things go then Orion "Pictures" should commence a suit against Orion "Computers" for copy right infringement...
Posted by (187 comments )
Reply Link Flag
"Tiger Direct" versus "Tiger"
Is "Tiger Direct" trademarked? Is "Tiger" trademarked?

I have a funny feeling that both are. If Tiger Direct did not
trademark "Tiger", they have no case. However, they may have a
case with the search engines.

The case won't stand.
Posted by Thomas, David (1947 comments )
Reply Link Flag
Has anyone Google'd "Tiger"?
TigerDirect placed before Apple & Tiger OS .... Actually "5
Tigers" (about saving 5 species of Tigers) beat them both....
TigerDirect was #2 and Apple was #4.

Funny...
Posted by (1 comment )
Reply Link Flag
Why didn't they object after the mark was published for opposition.
Apple registered the Tiger trademark (see below), which was published for opposition on August 17, 2004. If they thought the mark infringed, why didn't they challenge it then?

Word Mark TIGER
Goods and Services IC 009. US 021 023 026 036 038. G & S: computer operating system software
Mark Drawing Code (1) TYPED DRAWING
Serial Number 78269988
Filing Date July 2, 2003
Current Filing Basis 1B
Original Filing Basis 1B
Published for Opposition August 17, 2004
Owner (APPLICANT) Apple Computer, Inc. CORPORATION CALIFORNIA 1 Infinite Loop Cupertino CALIFORNIA 95014
Attorney of Record John Donald
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE
Posted by (1 comment )
Reply Link Flag
Because they don't have to
They would only have to file an opposition if it's about to become "incontestable" but that takes years (at least three I think).
Posted by sanenazok (3449 comments )
Link Flag
It's Apple's fault
Before you pick a name and publicise it nationally, you should bother to check if someone else isn't using it.

I went to the PTO website and searched for "tiger computer" and guess what came up?? Tiger Direct has TigerPC registered.

It's like me using Apple for a video card (that's a part of a computer) and then claiming it's just a regular object.

Sorry there's no excuse for this mistake on Apple's part.
Posted by sanenazok (3449 comments )
Reply Link Flag
Devil's advocate
Of course this particular lawsuit is utterly ridiculous, but I remember reading something that said that unless you sue every time there is a *potential* infringement on your copyright, you could lose all rights to it completely. In other words, you can't selectively enforce it.

Maybe that's what Tiger Direct is doing. I don't know.
Posted by TimeBomb (70 comments )
Reply Link Flag
Not here
For sure not in the US. The person suing would first have to consent to the "infringement" and then sue in order for there to be any sort of bar (this is trademark and not copyright by the way).

Maybe something like this happens in Europe...but that's also unlikely.
Posted by sanenazok (3449 comments )
Link Flag
Funny, "TigerDirect" was one word until now...
TigerDirect has NEVER used separate words for their company name until this lawsuit. Now, in the legal filings they never refer to themselves without breaking it into two words.

Just more fuel to the "litigation for self-promotional purposes" fire...
Posted by M C (598 comments )
Reply Link Flag
That's it!
"TigerDirect" (or "Tiger Direct") is actually registered. The same
with Apple. What they registered, I believe, is "Mac OS X Tiger".

I'm not a lawyer, plus I don't live in US, but I sometimes deal
with logos and brand names. So I believe it's not a problem to
register an ordinary word, like "apple", "tiger" or "window".
What's more difficult it's to lay claim to the exclusive use of it.
That's why I'm often pushed not to use plain words but invent
something new instead. Or at least to add something to the
word. Like in "Apple Computer" or "MS Windows".

I believe you can register a company name with just one letter,
say "T". But it doesn't mean that since then every brand name
with "T" (e.g. "Tiger"), is banned.
Posted by (5 comments )
Link Flag
TRO DENIED because they didn't follow the basic rules
Macmerc has some of the docs on their site.

Under Rule 65(b) of the Fed. Rules of Civil Procedure, before a
TRO can be issued, the plaintiff must certify in writing what
efforts were taken to give notice to the other party or reasons
notice is not required.

TigerDirect did not do this, so their TRO was denied. This is,
literally, 1st year law school stuff.

So, either:
1. their lawyers are so bad they flubbed this totally basic
requirement for any TRO, or

2. they knew full well what they were doing and the whole
motion for a TRO was bogus
Posted by mvora (38 comments )
Reply Link Flag
Many other possibilities beyond those two
Rule 65(b) motions are always made but almost never granted.

Other than the notice requirements you mention, the moving party (in this case Tiger Direct) has to show things that are very difficult to show such as immediate injury.

So their lawyers aren't as bad as you think they are.
Posted by sanenazok (3449 comments )
Link Flag
Tiger Direct v. Apple
About Tiger Direct v. Apple. I've been thinking about how Tiger Direct could sue Apple over its release of the Tiger Operating System for Mac computers. Then, after spinning in my office chair, it dawned on me. When one of the grandmothers of one founders of Tiger Direct was in her mid-twenties, she went to India and traded with a British governor the name "Tiger" for two cases of gin. This may seem unlikely, but it is probably Tiger Direct's best chance of winning this trademark infringement case.

That is because there is between slim and no chance that people are going to confuse the company Tiger Direct and Apple's new operating system, Tiger OS. A trademark is any word, name, symbol, etc. or any combination used in commerce to identify and distinguish the goods of one manufacturer or seller from others and to show the source of goods. In short, trademark is a brand name.

I have purchased computer-related products, printers, software, etc., from Tiger Direct. It seems to be a good company. Good price, reliable, fast shipping. But, the test under trademark law is the "likelihood of confusion." There is no way that Tiger Direct can assert without giggling or on-the-floor laughing that an average buyer is going to confuse Tiger Direct, an online computer parts store with Apple's new version of its Mac operating system. There is no similarity in the overall impression created by the two marks except they both use the word "Tiger." And, I am sure that Apple and its lawyers did not intend to illegitimately trade on the reputation of Tiger Direct and intend to siphon off business from Tiger Direct, which sells Apple products, by the way.

But, business is business. Maybe Tiger Direct wants the spotlight on them at Apple's expense. What is most telling is that Tiger Direct complains that it is no longer at the top of the "hits" when Tiger is entered into Google, Yahoo or other search engines. I was trying to think how Tiger Direct could complain and I took a couple of spins in my office chair and remembered about a guy I was introduced to a few years ago who was real talented at singing songs or tunes without opening his lips or forming words. Everybody called him "Hummer" and he really liked it. But, then the US military started ordering vehicles also called Hummer and pretty soon he wasn't third or fourth on Yahoo or Google, he wasn't even there at all. But & our Hummer didn't sue &

Evan Shirley
Honolulu, Hawai'i
Posted by EShirley (1 comment )
Reply Link Flag
Hawai'i is sunny
isn't it?
Posted by sanenazok (3449 comments )
Link Flag
Looks Like
There going to have to change the name to something like "Mac OS X 10.4 Tiger-Less"
Posted by simcity1976 (136 comments )
Reply Link Flag
They'll just settle
If the lawsuit has any merit they'll settle. If it doesn't it will be dismissed in a few months. End of story. Should Apple be forced to change the name of the OS, which is extremely unlikely, they can just pick any other big cat, but I'll bet they will do a trademark search next time.
Posted by sanenazok (3449 comments )
Link Flag
TigerDirect never trademarked 'Tiger'
And, as noted, their own name was one word 'TigerDirect', which
they DID trademark. And it's one word because any half-way
competent trademarl attorney would have made it clear to them
that 'Tiger' alone is not a trademarkable item

On the same basis, MS's trademark on 'Windows' is totally
fraudulent. 'Microsft's Windows' is a legitimate trademark, but
'Windows' alone is a totally generic term. Of couse, Ol' Bill's legal
staff will raise all sorts of futile smoke on this one, and
eventually, MS dollars tend to 'win' the argument. But, 'Lindows'
remains a perfectly good product name.
Posted by Earl Benser (4310 comments )
Reply Link Flag
Nope, "Tiger" is a trademark for many products
If what you said is true, no trademark could ever include a non-made up word. That would make "Apple" generic as well since it's just a "generic" word.

Now a trademark can become "generic" which is something you must have heard of. For example, at one time "elevator" was a trademark belonging to Otis. However, Otis used it to describe their people mover product in a way that caused it to become a generic name for the product.

So there's no reason why someone can't get a trademark on the word "tiger." It depends on the context. Actually the following "tiger" words are trademarked:
tiger (lighting products)
black tiger (comic books)
eye of tiger (paint brushes)
red tiger (flowering plants)
and a few thousand more.

And don't worry - Windows is a valid trademark. Just ask the people who made an overpriced product called Lindows, or whatever became of it. What do you think their first defense was, of course that "Windows" is not a valid trademark, and yet they lost. Let me guess, that means that the courts are all in the grasp of Bill...or maybe it's a valid trademark.

HAPPY MAY DAY
Posted by sanenazok (3449 comments )
Link Flag
Ridiculous & laughable
How in the world does Tiger Direct ever expects to win this ridiculous lawsuit is beyond my wildest imagination. How does Tiger OSx infringe on Tiger Direct ? Tiger Direct has never developed nor sold a computer software program much less an Operating System. If it had or did, it might have some legal grounds to infringement. If I call my next litter of kittens, Tiger and market them would I be infringing on Tiger Direct ? I'd say Tiger Direct is a pathetic company reaching desperately for straws and hope Apple counter sues for all costs this wrongful lawsuit entitles them to. Tiger is also the brand name of a beer, established and produced long before Tiger Direct or the computing business was even thought of. Does this mean Tiger Beer has the right to sue Tiger Direct for infringement ? How low does Tiger Direct go to get $ 75,000 ?
Posted by intrepi (67 comments )
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