15 March 2018Trademarks

Disney attempts to dethrone princess TM registration

Disney has opposed a princess-related trademark registration, claiming that the mark would create a likelihood of confusion.

US-based United Trademark filed trademark applications for ‘The Toon Studio Fairytale Princess’ at the US Patent and Trademark Office in 2016.

The applied-for trademarks (US numbers 87,273,335 and 87,273,325) cover clothing and apparel, and amusement park rides.

Disney’s opposition, filed at the Trademark Trial and Appeal Board on Monday, March 12, said that the applied for design marks are “highly similar” to its own ‘Disney Princess’ trademarks.

“Moreover, applicant’s proposed marks reference the very same characters that the opposer has made famous as part of its ‘Disney Princess’ franchise for use on a wide variety of goods and services,” said the opposition.

Disney said that the 1937 animated film “Snow White and the Seven Dwarves” spawned numerous other movies featuring “admirable female characters”.

United Trademark’s ‘325 trademark features five princesses, including a mermaid.

These include “Cinderella” (1950), “The Little Mermaid” (1989), “Pocahontas” (1995) and “Mulan” (1998).

The entertainment company formed the Disney Princess franchise in 2000 to celebrate female characters that have been “crowned” as princesses.

Disney said that it often uses its ‘Princess’ marks on their own and with well-known images of its associated characters.

“With such a long and enormous commercial success, substantial advertising and promotion of films and merchandise, and extensive media attention and public exposure of the Disney ‘Princess’ marks and design marks, Disney has developed valuable goodwill in such marks, which have long been famous.”

Disney’s claimed that United Trademark’s mark is a bad-faith attempt to “move closer” to Disney, its ‘Princess’ trademarks and goods and services related to them.

According to the opposition, the applicant’s use of ‘Toon Studio’ in its trademark is also likely to cause confusion. Disney has used its “Toontown” trademark (1,768,253) in connection with amusement park services for over 25 years.

This isn’t the first time United Trademark has gone head-to-head with Disney.

In 2012, United Trademark applied for the trademark ‘ Zombie Cinderella’. While this was opposed by an examining attorney on grounds of confusion with Disney’s Cinderella character, the trademark was ultimately registered in 2015.

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