Disney and Canadian DJ Spar Over U.S. Mouse-Head Design Trade Mark

Katfriend and occasional guest blogger Lucas Michels (Ironmark Law Group PLLC) has taken time out from his busy IP practice and blogging activities for the IP Exporter to do some serious mouse-watching for us.  This is what he saw:

It was reported in several news outlets this week that the U.S. media behemoth Disney Enterprises, Inc. will likely oppose a U.S. published trade mark application filed by an agent of Canadian DJ and electronic music artist Deadmau5 (aka Joel Thomas Zimmerman). Deadmau5’s U.S. Patent and Trademark Office (USPTO) trade mark application includes the design of a mouse’s head, similar to Disney’s iconic Mickey Mouse character. The published application (Serial No. 85972976) covers a broad range of goods and services including electronic devices (IC 009), off-road bicycles (IC 012), printed publications (IC 016), leather goods (IC 018), clothing (IC 025), toys (IC 028), food preparations (IC 030), beverages (IC 032), and entertainment services (IC 041). 

The application was accepted by a USPTO examining attorney and published on March 4, 2014. Less than a week from being granted registration, counsel for Disney filed a 90 day Extension Request pursuant to 37 C.F.R. 2.102, in order to examine the application for possible grounds of opposition. The USPTO’s Trademark Trial and Appeal Broad granted the motion on March 28, 2014.

This dispute concerns only Mickey
Mouse, not Minnie, on the basis of
the legal maxim "de Minnie
Mouse non curat lex"

Although Disney has not commented as to why it filed the extension, it is likely that it did so because the application’s design mark bears a resemblance to Disney’s famous cartoon character Mickey Mouse. Disney maintains dozens of character mark and design mark registrations for Mickey Mouse in the U.S. and throughout the world. Although Deadmau5’s design mark is arguably different and distinct from these Mickey Mouse trade marks, Deadmau5’s application proposed registration of the design mark across nine classes of goods and services. Such registration is broad enough to have likely caused Disney’s trade mark counsel to be justifiably concerned, especially as U.S. copyright protection for Mickey Mouse has expired in some of Disney’s early cartoons of the famous mouse, with more cartoons and images of the same expected to enter the public domain in the coming years.

Topo Gigio: representing the interests
of European mouse-ears since 1959

If Disney does object to the application under 15 U.S.C. § 1063, it will likely do so based on damage to Disney’s brand, particularly the dilution of Disney’s multiple Mickey Mouse-related trade marks. As dilution requires showing that an opposing party’s mark was famous prior to the opposed application (15 U.S.C. § 1125(c)), Disney would likely be able to convincingly satisfy these requirements. Mickey Mouse is one of world’s most famous children’s cartoon characters and has been in use by Disney since 1928, 83 years before Deadmau5’s U.S. trade mark filing. Plus, Deadmau5’s electronic music that is often played at festivals and clubs where drugs are made available is easy prey for Disney’s counsel to show that use of the application’s mouse image by Deadmau5 would tarnish Disney's wholesome image with children and families.

What is interesting about this story, besides the juxtaposition between the wholesome Mickey Mouse and drug-fuelled electronic music, is that there is no indication that Disney attempted to enforce its rights against the same Deadmau5 trade mark in other countries. The application in the U.S. was based on a prior foreign registration filing (Section 44(e)) in Australia in 2009 (Registration 1330112). If Disney had opposed Deadmau5’s Australian registration in 2009, the application would have likely never been filed in the U.S., much less accepted by the USPTO, or published for potential registration. 

There is no indication as to why Disney did not oppose Deadmau5’ Australian trade mark registration. It is an assumption of trade mark practitioners like myself that major multinational media brands such as Disney monitor trade mark registrations throughout the world, and especially in major markets such as Australia, in order to protect their most cherished brands. After all, what is a more famous and prized brand than Mickey Mouse? Yet, Disney’s apparent inaction towards Deadmau5’ Australian trade mark registration shows that a failure to oppose a trade mark registration in one market can create a negative precedent in other markets.

We wait with interest to see how Disney’s potential U.S. opposition will proceed.