Wednesday, September 3, 2014

Disney Not "Mousing" Around!: Mickey Mouse Creator Files Notice of Opposition Against DeadMau5

On Tuesday September 2, 2014, Disney showed the music and legal communities that it was no longer "mousing" around with respect to earlier threats it had directed at musician DeadMau5 over the DJ's popular use of his "ear silhouette" logo.  (Click HERE for a link to the official Notice of Opposition filed by Disney against DeadMau5 before the USPTO's TTAB)

While many news outlets have claimed improperly that DeadMau5 is being sued by Disney, it should be noted that Disney has only up to this point instituted an Opposition proceeding before the TTAB and has not filed a Complaint in Federal District Court for trademark infringement.   As this is often a source of confusion for news outlets and those unversed in the technicalities of USPTO proceedings,  it is a good opportunity to dispel some of the misconceptions associated with Opposition proceedings and the differences between these hearings and Federal lawsuits for Trademark Infringement.

First, an important point to raise in covering TTAB Opposition Proceedings is that it is often not the intent of the Opposer/Plaintiff to bring an action against the Applicant/Defendant but rather a matter of procedural timing that dictates the filing of a Notice of Opposition (Complaint).  Because a trademark application is published for opposition for a period of 30-days, an Opposer only has this window of time, barring a submission of a request for a 30-day-90-day extension, to file and oppose a trademark application prior to the trademark application maturing into an official trademark registration.

Second, when news reports attempt to portray Disney as taking aggressive legal action, it is actually quite the opposite.  By filing a Notice of Opposition, as opposed to a Federal Trademark Lawsuit, Disney is actively choosing a less aggressive option by which to adjudicate its dispute with DeadMau5.

This point leads to another important distinction between Opposition Proceedings before the TTAB and trademark infringement lawsuits before a Federal District Court.  When trademark opposition disputes are held before the TTAB, the Opposer/Plaintiff has a very narrow set of remedies afforded to it as opposed to those available to a Plaintiff in Federal Court.

In an Opposition Proceeding centered on an alleged Likelihood of Confusion between the Opposer's Trademark Registrations and the Applicant's applied for Trademark Application, the TTAB Board Panel only decides on several central issues:
  • Assuming the Opposer's Registrations are not challenged themselves by way of a counter-claim filed by the Applicant, does the Opposer have superior trademark rights when analyzing the claimed first use in Opposer's Registrations and the Applicant's claimed Date of First Use (if any is claimed in the Applicant's Application);
  • If the Opposer has superior trademark rights, are the trademarks in the parties' respective registrations/applications likely to cause confusion amongst consumers based on an analysis and weighing of the DuPont Factors;
  • If the Applicant's Trademark is deemed likely to cause confusion with the Opposer's Registrations, the TTAB must then decide if the Application should be allowed to register.

As detailed above, the TTAB only decides on issues relating to the validity of trademark applications/registrations and issues relating to rightful ownership of trademark applications/registrations.  The TTAB does not have the jurisdictional authority to assess monetary damages to either party, to issue temporary or permanent injunctions, nor does it have the authority to issue declarative binding judgments on matters of law.

The limited authority of the TTAB combined with its limited ability to offer relief in the form of monetary judgements or injunctions leads many clients and attorneys to questions the purpose and usefulness of Opposition Proceedings.  There are several significant reasons a client may want to engage in an Opposition Proceeding as opposed to filing a Federal lawsuit for trademark infringement.

  •  Opposition Proceedings cost significantly less than Federal Trademark Infringement Suits
    • Whereas Federal Lawsuits can cost in excess of $100,000 to have a decision reached by a judge or jury, TTAB Opposition Proceedings can often cost less than six figures to get to a similar phase in the proceeding
  • No risk of monetary damages for either side and no potential for attorney fees being awarded
  • No physical appearance required for the attorneys or the parties
    • Unless a rare Oral Hearing is requested at the conclusion of an Opposition Proceeding, the entire proceeding is handled by electronic paper submissions through the USPTO website
  • Opposition Proceedings have less media exposure and less potential for negative publicity for both sides
  • The decision is looked upon by Federal Courts but it is not technically binding if a trademark infringement lawsuit is later filed

If Disney were to allow for the DeadMau5 trademark application to register without objection, future third parties might successfully argue that their "mouse ear" logo should be allowed to register based on the existence of third party registrations such as those owned by DeadMau5.

If Disney wants to ensure that the DeadMau5 Application is not used as evidence for future third-party trademark examinations, it will need to proceed with its current objection and work to either settle or overturn the USPTO's allowance of the DeadMau5 Application so that the scope of protection afforded to the Disney Marks is maintained for future trademark application examinations.

Another important component of Disney's filing yesterday is rarely reported but nevertheless central to the motivations behind its filing of a Notice of Opposition.  As trademark rights are the responsibility of the trademark owner to maintain, Opposition Proceedings are often filed not to obstruct the commercial activities of the Applicant, but rather to ensure that the strength and scope of protection afforded to the Opposer's Trademark Registrations are maintained. 

Disney has long been deemed a major player in the world of copyright law and the way copyright law is used to protect the rights of intellectual property owners.  In fact, it was the copyright held in the very first Mickey Mouse graphic that led to the Sonny Bono expansion of copyright protection which extended the copyright term Disney held in its very first "Mouse Ear" illustrations.

Now that Disney has taken notice of the potential for third parties to trade commercially on what it deems design logos similar to those it has long held rights in, it is likely Disney will look to use trademark law to its advantage just as it did years earlier with Copyright Law.  The one question we are particularly interested in is whether Disney will rely on its vast arsenal of Copyrights in its dispute with DeadMau5 as several recent high profile trademark logo disputes have shown the advantage of asserting copyright protection in a trademark dispute.  

1 comment: