Disney Trademark Oppositions

Hiya, pal! Good to see ya! Walt Disney has undeniably created some of the most iconic fictional characters of today.  (Dare I say ever?)  Mickey Mouse and Donald Duck are classics.  As are the Disney Princesses, such as Belle from Beauty and the Beast, Ariel from the Little Mermaid, and Snow White from Snow White and the Seven Dwarfs, which are just a few among  the many other princesses Disney has created.   Even newer characters like Nemo from Finding Nemo and Woody from Toy Story are a few memorable characters in today’s contemporary culture.

Iconic characters are not just huge money makers (Mickey Mouse alone is estimated to bring in $5.8 billion annually–yes, billion) for the company the characters are also Disney’s most coveted pieces of intellectual property.

Disney protects its characters through trademark and copyright registrations.  A trademark will protect a brand name or logo, while a copyright will protect an original work like a book or movie.  The owner of a trademark or copyright registration for a character can prevent others from using that character without the owner’s permission.  

Given the amount of money at stake,  Disney is notorious for protecting their intellectual property.  Disney vigorously polices their trademarks in order to ensure that no one is infringing on their valuable intellectual property.   The company will not tolerate anyone or any entity attempting to trademark a character or name that is even remotely similar to a character in the Disney brand, and they file numerous trademark oppositions every year opposing trademark applications.   And by opposing trademark applications, Disney is attempting to thwart any potential trademark registration.

Some may even go as far as calling  Disney a “Bully”! *Gasp*  Disney a bully? No. Never. Not Disney!  But it is true.  Disney’s arguably overzealous enforcement of its intellectual property has made them known in the IP world as a “brand bully.”  Undoubtedly the company is standing up for their legal rights when they file trademark oppositions.  But they file so many that it often makes people wonder if they cross the the line from Trademark Enforcer Extraordinaire to Trademark Bully.

Trademark enforcement is an important part of running a successful business. And even though Disney may be over aggressive at times, Disney attorneys understand that failing to enforce a trademark can seriously hurt their profitability and brand.

Here are some of Disney’s more fascinating trademark oppositions.

deadmau5 disney
John Ueland

(1) Disney’s “Mickey Mouse” vs.Joel Zimmerman’s “Deadmau5” – September 2014

Mickey Mouse is that lovable rodent who sports circular ears, a big smile, humongous yellow shoes and bright red shorts.  And boy, has Mickey achieved another level of fame.  Market researchers believe that his brand awareness is 97%–more than Santa Claus.   He even has won an academy award, something no other animated character in history has ever done!  Forbes has named Mickey the world’s “richest fictional billionaire.”

Even Walt Disney once famously said, “I love Mickey Mouse more than any woman I have ever known.”  Bottomline Mickey symbolizes Disney.  The two are almost synonymous and Disney will do whatever it takes to protect their beloved mouse.

Enter EDM DJ Joel Zimmerman, better known by his stage name “Deadmau5.” (Pronounced “dead mouse.”) In September 2014, Disney filed a trademark opposition against Zimmerman for a mark that Disney felt hit too close to home.  Disney felt there were too many similarities between Zimmerman’s stage headgear and Mickey Mouse.

Zimmerman’s mark which “consists 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, specifically BMX bikes), paper goods, leather goods, toys and sporting goods, staple foods (like coffee), light beverages and entertainment systems.”  Disney argued that mouse’s black ears, black face, white eyes, and white mouth would “cause confusion” among consumers, being “nearly identical in appearance, connotation and overall commercial impression to Disney’s mouse ears.”

Disney Deadmau5

During the dispute Zimmerman, who is notorious for being vocal on Twitter, tweeted “lawyer up Mickey.” He also tweeted, “Disney thinks you might confuse an established electronic musician/performer with a cartoon mouse.  That’s how stupid they think you are.”

Eventually, the mice figured a way out of the maze.  In June 2015, Zimmerman’s attorney stated, “Disney and Deadmau5 [have] amicably resolved their dispute.”

Disney Animation Studios

(2) Disney “Moana” vs. Epic Stone Group Inc.’s “The Moana” – September 2016

Disney filed a trademark opposition in September 2016 against Epic Stone Group Inc. over the Epic Stone’s attempt to register “The Moana.”  Moana is the name of the young Polynesian heroine, who is the star of the Disney’s Fall 2016 animated feature, “Moana.”  

(Side Note: Many consider Moana a Disney Princess even though she is not literally a royal princess — she’s the daughter of the village chief.  Yet the movie’s writers did not skip a beat to include a self-aware and clever remark about it in the movie.  Demigod Maui quips at one point, “If you wear a dress and have an animal sidekick, you’re a princess.”)

In the opposition Disney stated that Epic Stone had a history of similar “bad faith trademark filings,” such as attempting to register “The Independence Day” and “The Ugly Betty.”  

However, Epic Stone was unnerved by Disney’s language.   And the company instead filed its own opposition back at Disney, stating that Disney’s movie was confusingly similar to their own “The Moana” and not the other way around.  Bold move.

“Applicant [Disney], knowing the opposer’s [Epic Stone] rights in ‘The Moana’ mark, nonetheless began actively marketing its ‘Disney Moana’ mark in anticipation of a film set to be released in November 2016,” the filing said.  “Opposer has priority over applicant’s mark due to its prior use and application for its ‘The Moana’ mark.”

Epic Stone was correct in stating that they did, in fact, file an intent-to-use application before Disney.  Disney did not file the trademark for Moana until November 2014, a month after Epic Stone had filed.  And more than a year after news of the new movie was released.  


Eventually, Epic Stone buckled under Disney’s pressure and abandoned their mark on October 14, 2016.

Disney Tomorrowland
Disney’s Tomorrowland

(3) Disney’s “Tommorrowland” vs. ID&T’s  “TomorrowLand”  -2005

In the United States if you  say the word “Tomorrowland” most people think Disney  But say it in Europe, and “Tomorrowland” to most people is a well-known electronic music festival that takes place in different countries.

TomorrowLand
ID&T’s TomorrowLand

In 2005, Disney filed a trademark opposition against European music festival promoter,  ID&T.  The  music promoter  wanted to bring its  well-attended Tomorrowland music festival to the United States.  However, in filing the opposition Disney made clear that the company had owned the name “Tomorrowland” since the 1970s.   (Disney’s Tomorrowland was a “themed” area in each of each amusement parks round the world.)

Disney was stern and refused to let ID&T use the name for its music festival in the United States.  So the music festival had to change its name to TomorrowWorld in the United States.

(Fun side note: But, oh how the tables turned for Disney.  Disney may have owned the rights to the name “Tomorrowland” in the United States, but not in every country. For the release of Disney’s 2015  film, “Tomorrowland” starring George Clooney and Hugh Laurie, Disney had to change the movie’s title in England, Wales, Scotland, and Northern Ireland because “Tomorrowland” had already been trademark protected in these countries by the music festival ID&T, and was called   Tomorrowland: A World Beyond instead.)

Disney is definitely the big mouse in the house when it comes to trademark oppositions.

 

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