13 May 2013Trademarks

Disney withdraws Day of the Dead mark application

Disney has dropped its bid to trademark the term “Día de los Muertos,” it announced on May 7.

The film studio’s application for the mark sparked a flurry of online protest and petitions to stop the application after it was made on May 1.

The mark was to be used in merchandising around an announced Pixar movie about “Day of the Dead,” an ancient celebration mostly observed in Mexico, Central America and communities in the US that honours the deceased.

Disney made 10 individual applications for the mark, which cover goods and services including “Christmas tree ornaments and decorations,” “clothing, footwear and headwear,” and “frozen meals consisting primarily of pasta or rice,” as well as “education and entertainment purposes.”

Disney later released a statement explaining it withdrew its applications as the film’s title will change, and that the mark was to protect any potential title for the film and related activities.

Charles Colman, founder of Charles Colman Law PLLC, said that applying for marks to cover a variety of different goods and services in order to protect the movie’s name was “prudent from a trademark perspective,” and that it is not possible to register a trademark for a single artistic work.

He noted that other trademark registrations exist for either “Day of the Dead” or “Día de los Muertos.”

“There’s not an across-the-board prohibition on using holidays, whether religious or not, as trademarks in the US,” he said. “There is a more general prohibition on using words or pictures in connection with goods or services in a way that falsely suggests a connection with a particular group of people or cultural institution.”

Companies that sell goods in connection with the Day of the Dead may have been concerned that if Disney’s applications were successful, they would be put out of business.

“Generally, you can’t stop people who are already using a phrase in a certain way from continuing to use it,” he said, adding that if an application is successful, it is possible to “freeze” to existing use, though in most instances, it is not possible to retroactively claim rights to a phrase stop existing commercial activity.

Even parties that weren’t using the term before may be able to use it under statutory or nominative fair use, he added.

Disney did not respond to a request for comment.

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