The (Dead) Mouse that roared at Mickey

May 2014

All areas, artistes


It was reported in several news outlets  that Disney Enterprises, Inc. will likely oppose a U.S. trade mark application filed on behalf of Canadian DJ and electronic music artist Deadmau5 (aka Joel Thomas Zimmerman). Deadmau5’s U.S. Patent and Trademark Office (USPTO) published trade mark application includes the design of a mouse’s head, which might be viewed as slightly similar to Disney’s iconic Mickey Mouse character in as much as it IS a cartoon mouse. The two marks though portray very different images to each other – the ‘wholesome’ Mickey Mouse image – and the dance music orientated (with its drug connotations) DJ and dance music world.

One of Disney’s concerns may well be that the Deadmau5 application 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.  Disney has not commented as to why it filed the extension but Deadmau5’s application proposed registration of the design mark across nine classes of goods and services – and of course 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 so the trade mark will be critical to control and manage the ‘brand’ of Mickey Mouse. If Disney does object to the application under 15 U.S.C. § 1063, the IPKat suggests that it will likely do so based on damage to Disney’s brand, particularly the dilution of Disney’s multiple Mickey Mouse-related trademarks. 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.  However, the IPKat also notes 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) which Disney did not oppose – if it 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.

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