First off, I think it's a silly lawsuit, pinned this late before the startdate simply to try to pressure Apple (a very wealthy company) into shelling out a "go away" settlement, but there is some logic behind their claim. Or at least enough logic to not make a settlement seem farfetched.
Please realize I'm only in law school, so I'm not a lawyer, but I've taken my share of IP courses. Anyway... here goes..
You are correct in your assumption that trademarks do not need to be registered to be enforced. Acquisition of trademark rights happens when you use a mark in commerce. The use has to be more than a token use (like say, an email sent between two employees that refers to TigerDirect as Tiger). Also , the courts are currently split as to whether or not the use of a term as a search word in a search engine like google or yahoo constitutes a "use in commerce". Likely that doesn't hold true.
At that point it falls to Tiger Direct to show use in commerce that precedes that of Apple. As far as other companies that have trademarks for the term Tiger, those companies are likely not as closely related to Apple's or TigerDirect's market. Trademarks are not primarily there for the protection of the company. They are there to protect the consumer from being misled. The threshhold for this is only likelihood of confusion (not necessarily evidence of actual confusion, though that would really help in a close case.)
As far as companies like Tiger Games (LCD games), the market is still different, because Tiger Games probably doesn't sell those themselves. They use distributors like Toys'R Us, or whoever else. In this case both Apple and TigerDirect are in the business of selling products. It would depend on how willing the courts would be to segment or thin-slice the markets in order to find that they are in substantially different markets so that there could be NO likelihood of confusion. That's a high hurdle. And the burden would likely be on Apple (as long as TigerDirect can show a preceding use in commerce).
The reason for this is because Apple does not own a trademark for the word Apple in all of its uses. That would just be silly. But since Apples (the fruit) are fairly uncommon in the world that Apple (the company) conducts its business, they are given the trademark. This, like some have noted, is also the reason why Apple got in trouble with the their use of the world Apple in the music world, because someone already owns that mark.
So let's say, I wanted to open up a Scuba line and call it Apple, Apple (the company) would not have a trademark infringement claim against me. They would only have a dilution claim against me. Dilution merely means that my use of the term Apple for my Scuba line, would have a derogatory effect on the the Apple's (the company) mark. For dilution the mark that is allegedly being diluted, has to be famouse, but both TigerDirect and Apple would pass this standard easily.
Also, for all you people out there that think TigerDirect should just get rights to derivatives of TigerDirect, and not Tiger because that's too common a word, by your logic you would be saying it should be fine to start a new computer brand called AppleDirect. And if you're saying that AppleDirect is a derivative of Apple, then I'll tell you that a lawyer worth his salt should be able to argue that Tiger is just a derivative of TigerDirect, at least for that market. I remind you that non-registration has no bearing here, only use in commerce.
In the end, most everything ends up in settlements. It's just cheaper that way. And let's not forget that Apple isn't the pristine good guy anymore. They lost a lot of browny points with me, when legally went after them bloggers for releasing "tradesecrets". I'd find the link on that story, but I'm too lazy, and any Slashdotter worth his salt will know what I'm talkin bout anyway...
Yay for procrastination from studying for law school finals... ugh.
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First off, I think it's a silly lawsuit, pinned this late before the startdate simply to try to pressure Apple (a very wealthy company) into shelling out a "go away" settlement, but there is some logic behind their claim. Or at least enough logic to not make a settlement seem farfetched.
Please realize I'm only in law school, so I'm not a lawyer, but I've taken my share of IP courses. Anyway... here goes..
You are correct in your assumption that trademarks do not need to be registered to be enforced. Acquisition of trademark rights happens when you use a mark in commerce. The use has to be more than a token use (like say, an email sent between two employees that refers to TigerDirect as Tiger). Also , the courts are currently split as to whether or not the use of a term as a search word in a search engine like google or yahoo constitutes a "use in commerce". Likely that doesn't hold true.
At that point it falls to Tiger Direct to show use in commerce that precedes that of Apple. As far as other companies that have trademarks for the term Tiger, those companies are likely not as closely related to Apple's or TigerDirect's market. Trademarks are not primarily there for the protection of the company. They are there to protect the consumer from being misled. The threshhold for this is only likelihood of confusion (not necessarily evidence of actual confusion, though that would really help in a close case.)
As far as companies like Tiger Games (LCD games), the market is still different, because Tiger Games probably doesn't sell those themselves. They use distributors like Toys'R Us, or whoever else. In this case both Apple and TigerDirect are in the business of selling products. It would depend on how willing the courts would be to segment or thin-slice the markets in order to find that they are in substantially different markets so that there could be NO likelihood of confusion. That's a high hurdle. And the burden would likely be on Apple (as long as TigerDirect can show a preceding use in commerce).
The reason for this is because Apple does not own a trademark for the word Apple in all of its uses. That would just be silly. But since Apples (the fruit) are fairly uncommon in the world that Apple (the company) conducts its business, they are given the trademark. This, like some have noted, is also the reason why Apple got in trouble with the their use of the world Apple in the music world, because someone already owns that mark.
So let's say, I wanted to open up a Scuba line and call it Apple, Apple (the company) would not have a trademark infringement claim against me. They would only have a dilution claim against me. Dilution merely means that my use of the term Apple for my Scuba line, would have a derogatory effect on the the Apple's (the company) mark. For dilution the mark that is allegedly being diluted, has to be famouse, but both TigerDirect and Apple would pass this standard easily.
Also, for all you people out there that think TigerDirect should just get rights to derivatives of TigerDirect, and not Tiger because that's too common a word, by your logic you would be saying it should be fine to start a new computer brand called AppleDirect. And if you're saying that AppleDirect is a derivative of Apple, then I'll tell you that a lawyer worth his salt should be able to argue that Tiger is just a derivative of TigerDirect, at least for that market. I remind you that non-registration has no bearing here, only use in commerce.
In the end, most everything ends up in settlements. It's just cheaper that way. And let's not forget that Apple isn't the pristine good guy anymore. They lost a lot of browny points with me, when legally went after them bloggers for releasing "tradesecrets". I'd find the link on that story, but I'm too lazy, and any Slashdotter worth his salt will know what I'm talkin bout anyway...
Yay for procrastination from studying for law school finals... ugh.