Systemax Inc. subsidiary Tiger Direct Inc.
has filed suit
against Apple to prevent the company from using the word “Tiger” to describe its new Mac OS X v10.4 operating system, which goes on sale worldwide at 6 p.m. local time on Friday, April 29, 2005. The company claims that Apple is creating brand confusion by marketing Mac OS X v10.4 as “Tiger” and has asked the United States District Court for the District of Florida for a temporary restraining order and injunction.
Tiger Direct Inc. is claiming trademark infringement, trademark dilution and false designation of origin under separate federal codes, and has also cited trademark dilution and deceptive and unfair trade practices under Florida statutes, in copies of the court documents obtained by MacCentral.
Tiger Direct Inc. isn’t expecting Apple to yank Mac OS X v10.4 off store shelves, but is asking the court to impose an injunction to make Apple cease using “Tiger” on its Web sites and advertisements and to pull any advertisements that use the word “Tiger” from its stores or resellers; issue a press release stating that it has ceased use of the word “Tiger” and request the press do the same; and stop printing boxes, manuals or software referencing the word “Tiger.” It’s also asking for damages. A preliminary injunction hearing is scheduled for Tuesday, May 3, 2005.
Both companies have Tiger trademarks
Tiger Direct Inc., based in Miami, Fla., was established in 1987. The company has had a series of “Tiger”-related trademarks on file with the US Patent and Trademark Office going back to 1987, registering everything from the word “Tiger” to “TigerTV.com,” an has filed applications to register addition “Tiger”-based marks as well. It also lays claim to several “Tiger”-based “common law trademarks” in commerce.
In fact, Apple was also granted its own trademark serial number by the US Patent and Trademark Office for “Tiger” in 2003, used as a description of “computer operating system software.” An opposition against Apple’s filing is now pending at the Trademark Trial and Appeal Board, according to records filed with the office.
Apple’s basis as a retailer of computers, computer software and computer-related products is at the core of Tiger Direct Inc.’s complaint. Since mid-April, the company alleges, Apple has “created and launched a nationwide media blitz” containing “a sea of Tiger references,” including using phrases like “Tiger Unleashed,” “Tiger Center” and “Tiger World Premiere” on its Web site and in marketing materials.
With Apple’s announcement that Mac OS X v10.4 would be released on April 29, 2005 made earlier this month, the new operating system release has certainly gained public exposure, but Apple’s public use of the word “Tiger” to describe Mac OS X v10.4 goes back further than April, which has left some to wonder why Tiger Direct Inc. waited until now to file suit.
The new version of the Mac OS X operating system was first unveiled in June, 2004 during Apple’s Worldwide Developers Conference in San Francisco, Calif. Mac OS X v10.4 and “Tiger” have been synonymous since then, both in Apple’s press releases and in printed and online media exposure.
Systemax spokesman Steve Goldschein refused to comment on the timing of Tiger Direct Inc.’s lawsuits, but added that trademark infringement cases “… are all about the likelihood of confusion.”
“There’s a higher likelihood now than before” that consumers will be confused by Apple’s use of Tiger, Goldschein told MacCentral.
Bumping from search engines
Tiger Direct Inc. is displeased that the proliferation of Mac OS X v10.4-related information on the Internet has displaced it from popular Web search directories, according to the complaint filed with the court.
“Apple Computer’s use of of the term ‘Tiger’ as the primary term of reference for the Mac Os X 10.4 operating system has been picked up and repeated extensively by numerous media outlets,” said the company. “In turn Apple Computer’s use of the term ‘Tiger’ has also affected search results in Internet search engines.”
“Apple Computer now inundates the results of Google searches and has become the first result in a search for ‘Tiger’ in the Yahoo and MSN search engines,” said Tiger Direct Inc., which expects things to only get worse once Tiger hits the streets today.
Apple routinely refuses to comment on issues related to pending litigation.
Updated 11:10 AM 04/29/05: Comments added from Systemax spokesman.