Disney is no stranger to intellectual property issues and trademark infringement lawsuits. The company recently prevailed in a decade-long trademark dispute, halting United Trademark Holdings Inc. from registering trademarks for its “Teen Tink” and “Teen Tinker Bell” dolls. In a 14-page decision, the Federal Circuit agreed with the Trademark Trial and Appeal Board (TTAB), holding that if the trademarks were granted, consumers would likely be confused — and associate them with Disney’s version of the character.
Although Disney is perhaps most well-known for its depiction of Tinker Bell, the character first appeared in J.M. Barrie’s 1911 novel Peter Pan and is now in the public domain under trademark law. However, Disney holds a registration for “Tinker Bell” as a standard character mark for a various assortment of goods, including dolls and toys. Disney has used the trademark “Tinker Bell” in connection with its dolls since 1994, along with “Tink” since 2007.
United launched what it referred to as its “Fairy Tale High” collection of dolls in 2013 which included public domain fairy tale characters such as Snow White, Little Mermaid, Cinderella, and Tinker Bell as teenagers. The company added features to the dolls to alter their traditional presentation, including colored hair streaks, accessories, and makeup.
United argued that it created a new version of Tinker Bell, similar to what Disney did many years ago. But after United attempted to register the marks “Teen Tink” and “Teen Tinker Bell” in connection with its dolls, Disney opposed the applications pursuant to the Lanham Act on the grounds of priority and the likelihood of confusion.
In considering the inherent and commercial strength of the mark as applied to the dolls, the TTAB held that Disney’s mark was entitled to an “ordinary scope of protection” on the spectrum of “very strong to very weak.” Although Disney isn’t necessarily known for selling dolls, the Board noted that Disney has used the “Tinker Bell” and “Tink” marks in commerce since 1994 and 2007, respectively. It also presumed that the channels of trade and classes of consumers for the goods were the same since the registrations were “identical.”
Further, the TTAB found that both of United’s proposed marks conveyed “similar commercial impressions” to Disney’s mark. Since consumers are accustomed to seeing the mark on Disney’s products — and might purchase these types of goods on impulse — the Board determined that consumers would be likely to think the dolls originated from Disney.
On appeal, the Federal Circuit affirmed the TTAB’s findings. The court reviewed the TTAB’s analysis and held that United failed to demonstrate Disney’s mark would evoke the public domain version of Tinker Bell. In evaluating the multiple factors set forth in the landmark case, In re E.I. DuPont de Nemours & Co., the court also found that United did not establish that there was no likelihood of confusion between its proposed mark and Disney’s registered mark.
Notably, the court remarked that United’s mark only differed from Disney’s in that it included the word “teen” before “Tinker Bell.” Thus, it was reasonable for the TTAB to determine that the two marks were similar in both appearance, sound, and commercial impression. In its reasoning, the court drew a distinction by referencing a trademark proceeding for an application for “Zombie Cinderella.” In that case, the Board found that “Zombie Cinderella” and “Walt Disney’s Cinderella,” left different commercial impressions, which was not the case with adding the word “teen” in front of “Tinker Bell.” The Board also found that since “Cinderella” was used by many throughout the years, it was not a strong source identifier for Disney according to trademark law.
The Federal Circuit held that United recognized that “creative works can be protected as trademarks when they identify the origin of the producer of services or tangible goods.” However, the company was unable to show how Disney’s use of “Tinker Bell” was a “misuse or extension of a trademark.”
Trademark matters are complex and extremely nuanced. If you are facing trademark litigation, it is imperative to have an experienced attorney by your side to advocate for your right to register your mark or continue using it in commerce. Located in Ann Arbor, Michigan and serving clients nationwide, the Trademark Lawyer Law Firm, PLLC helps business owners with a wide variety of trademark matters, including trademark litigation. Contact us today to schedule a complimentary 15-minute consultation to learn how we can assist you.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.