A legal battle may be brewing between media conglomerate Disney and electronic music producer and performer Joel Zimmerman, better known by his stage name, deadmau5 (pronounced: deadmouse).
On March 28, Disney announced that it would be investigating an attempted registration of Zimmerman’s mark. Last year, Zimmerman’s corporation, Ronica Holdings Limited, filed an application with the United States Patent and Trademark Office (PTO) to register a mark that Disney may find hits a little too close to home. The mark, which “consist[s] of a caricature of a mouse head with black ears, black face, white eyes and white mouth” would “cover classes including electrical and scientific apparatus, vehicles (specifically BMX bikes), paper goods, leather goods, toys and sporting goods, staple foods (like coffee), light beverages and entertainment services.”
Just in case you are unfamiliar with the marks, here is a picture of the deadmau5 logo:
And here is the iconic Mickey Mouse mark:
While Zimmerman’s filing was made last year, Disney is only now looking into the matter. The company “has requested and been granted 90 days to investigate the claim and file a notice of opposition.” So while we may have to wait and see whether an opposition will be filed (spoiler alert: it will), we can still learn a little something about how the trademark registration and opposition process works.
For marks already being used in commerce (as opposed to those marks that are being filed based of intent to use), the application process consists of 5 stages: 1) application, 2) examination, 3) publication in the PTO’s Official Gazette, 4) opposition, and 5) registration. The application process is fairly simple, and involves the party submitting an online application indicating which class(es) of goods and/or services the mark is being used for, a drawing of the work (in color if the mark claims color), and a specimen showing use of the mark (this can be packaging, etc., showing use in commerce).
The examination process involves an initial ex parte examination by a PTO examining attorney, whereby the mark can be refused for a number of reasons, including immorality, being geographically misdescriptive, or where the mark consists of or comprises a mark which so resembles a mark registered in the PTO (for this type of refusal, the same elements for the likelihood of confusion test for infringement are used, but this time it is the PTO (and not the courts) that are making the decision). In this case, it seems Zimmerman’s mark was not rejected, for either substantive or technical reasons (in which case an Office Action would have been issued, allowing Zimmerman to potentially correct the error). This then brings us to the publication phase.
During publication, if the examining attorney deems mark entitled to registration on Principal Register (the primary Federal Trademark Register, where most marks are listed), the mark is then published for opposition in the PTO Gazette. Publishing in the Gazette enables the public to review marks up for registration and to oppose these marks for a variety of reasons.
Any notice of opposition has to be filed within 30 days of publication; likewise, if a party is requesting an extension on the time to file an opposition (what Disney did here), they must make this request within 30 days as well. If this deadline is missed, or there is no extension made, the ability to oppose has been lost and the would-be opposer must then wait until the trademark registers to then file what is known as a “petition to cancel” the mark. As just mentioned, Disney filed for, and was granted, an extension on the time allowed for opposition, enabling them to extend past the normal 30 day timeline for such action.
So what exactly is an opposition? It is “a proceeding, allowed in most trademark jurisdictions, in which a party seeks to prevent a pending application for a mark from being granted registration.” It is “similar to a proceeding in a federal court, but is held before the TTAB [Trademark Trial and Appeal Board].”
Once an opposition has been made, the opposer must plead and prove that: (1) it is likely to be damaged by registration of the applicant’s mark (this is known as the standing requirement), and (2) there are valid legal grounds why the applicant is not entitled to register its claimed mark. The opposer has the burden of proving that the applicant has no right to register the contested mark.
The most common grounds for opposition are priority (being the first in time to be used as a mark), likelihood of confusion, bad faith, descriptiveness and genericness. In the case of Zimmerman’s mark, Disney could (and most likely) would argue likelihood of confusion, given the potential similarity between the iconic mouse ears. The entertainment giant could also argue that Zimmerman’s mark would cause dilution of the Disney brand, as those consumers who come into contact with the mark would call to mind two (very) different sources, instead of just one. This type of dilution is referred to as dilution by blurring; Disney could also argue dilution by tarnishment as well, which is where there is an association arising from similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. Disney could argue that Zimmerman’s electronic music style, and the culture associated with it, negatively impacts the squeaky-clean image that Disney has achieved over the years.
In the event that no opposition is filed or if the opposition filed is unsuccessful, the application then enters the next stage of the registration process. If (and when) Disney decides to go forward with an opposition, they may have success in blocking the mark. The company is no stranger to filing (and winning) oppositions: for example, back in 1995, they successfully blocked a golf instructional company called “The Magic Swingdom” from obtaining a trademark on the basis of likelihood of confusion.
Since Disney successfully requested an extension of time to investigate the mark in order to determine whether they will file an opposition, we have some time until we see how things shake out. But in the meantime, be sure to brush up on your trademark registration and opposition basics with these helpful resources and let us know your thoughts below!