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.  

The Brand News Report

• Victoria's Secret loses Trademark Battle Over the "Pink" Brand in the UK.  

•  Ethiopia seeks to brand, trademark signature coffee.

• New warning from the USPTO regarding Non-USPTO Solicitations that resemble official USPTO Communications. 

• Major changes announced to the Canadian Trademark System.   

•  In Singapore, Angry Birds makers Rovio loses TM dispute against Angry Bite snack maker. 

•  In China, Telsa reaches settlement to end China TM dispute.

The End of The United Stated Patent and Trademark Agency?

Brand Ventures IP Law's Blog is back to weekly postings, and ideally, we will be cross-linking content with our other social media platforms (Brand Ventures IP Law's Facebook Page, Brand Venture's Twitter Feed, and the admittedly long overdue monthly release of the Brand Central IP Newsletter) to the point where we will soon look to have new content daily. 

As for recent reports that a New York law firm has taken the role as Plaintiff against the almost unanimously frustrating and oft despised entity known as the United Stated Patent and Trademark Agency, this news could only be described as welcome and long overdue; however, what is curious is the fact that over the US government by way of the USPTO or a class of defendants, it was a law firm that brought suit. 

Don't get me wrong, it has crossed my mind to do something to bring about the end to the companies beyond official looking solicitations and requests for fees from new trademark applicants, and I knew something would be done eventually, I just never imagined it would take a law firm itself to bring about an end to the frustration this entity brings without exception every time a client receives one of the notices seen above.  Once the logic of a law firm acting as Plaintiff set in, as they are arguably the party most harmed by the time wasted explaining the nature of the requests and to assure clients no response is necessary, I then began to wonder if a second action in California would help, and if so, if anybody knew a good affordable litigator.

The root of the problem exemplified and most notably practiced by the USPTA is with the free and unbridled access the public has to the information on the USPTO's TESS database, a useful and necessary tool that nonetheless is ripe for abuse from those looking for some angle to profit off of the information contained in an Applicant's public trademark application.  To provide a quick overview of the aforementioned practice, it is necessary to delve into the procedures involved with a US trademark application.

First, once an application is submitted to the USPTO, the information then becomes publicly viewable after a weeks time.  Given the access to the address, phone number and sometimes the email address of the Applicant, the USPTA sends out thousands of notices that appear to be a bill for services rendered, when in fact, the fine print will show it is actually a pre-populated invoice for the USPTA's trademark watching services.  Once a client sees that they apparently owe an additional $375 never before disclosed to them, a confused sometime upset client will call their attorney for an explanation, or if unrepresented, they will often place a call to the USPTO directly.

Invariably, these conversations begin and end with one general questions:  Do I owe more money for the trademark application you claimed was paid for in full?  Once the nature of the solicitation is explained, I typically feel compelled to reiterate the utility and purpose of some trademark watching service, although whether out of spite or an inherent distrust of any company who promotes themselves in this manner, I tend to recommend other companies if the client appears interested.  So, is this a scam that is a violation of trademark law itself, is this company preying off of the close proximity and association its name has with the USPTO?  Well, even if the DuPont factors led to a neutral finding, there is no getting around the most important and persuasive factor, which is that consumers are actually being confused, a fact that should make the finding of confusion much more plausible.

Now, having established that there could very well be a finding of confusion, which party has the ability or standing to bring such a claim? Is the USPTO the only party with such a right given its monopoly over the agency name that ironically is universally synonymous with US trademarks?  This it would seem will be a crucial part of the eventual analysis, but given the fact that the USPTO is well aware of the USPTA's activities, as demonstrated by the notices attached to filing receipts and in the information section of the USPTO's website, it is unclear whether the party most likely to have a claim for confusion is even interested in invoking itself in such a lawsuit.  This may be immaterial and the reason a law firm moved forward anyway, as the USPTO will undoubtedly be called as the key witness in the now ongoing lawsuit. 

#TrademarkNews: The #USPatentTrademarkAgency sued by #IPfirm in NY for misleading solicitations to #TMclients w/apps: domainnamewire.com/2013/05/01/law…
— Brand Ventures IP(@brandventuresip) May 6, 2013

That being said, with the number of calls the USPTO themselves have had to handle when pro se Applicants receive such letters, it is likely they will jump on this opportunity and inject themselves into this case in some meaningful way, but perhaps, they too are unsure of the strength of the claim that the USPTA's practices are on their face in violation of trademark, unfair competition statutes or other business torts that could be easily asserted but less easily proven.  Regardless of the eventual outcome, the publicity and threat of a judgment could have the intended effect without even reaching a final judgment, as the USPTA may deem their era of opportunistic role playing to have reached its inevitable end.  

While just another lawsuit to outsider onlookers, I know that the Plaintiff firm is likely enjoying a revered status at this years INTA.  Doing something many of us have thought necessary and many have been tempted by the prospect of, we may very well be close to being back to the days where client's are confused by the USPTO's own set of "hidden fees" and opaque procedures.  The days of transparency and clarity with respect to the examination of US trademarks may yet still be far far away, but at least hope can be had that if somebody is going to confuse applicants for trademark registrations, it will once again be a power back into the sole possession of the USPTO.  And yes, given the experience a practitioner can have with the sometimes questionable wisdom of the USPTO's own examination process, it is only fair that they do all they can to ensure that they themselves possess the power to create a system likely to confuse.