TTAB Reverses False Association Refusal of ME AND THE MOUSE TRAVEL & Design
The Board reversed a Section 2(a) refusal of the mark shown below for travel agency services, rejecting the USPTO's contention that the mark includes matter that falsely suggests a connection with Disney Enterprises, Inc. The evidence showed that the image of Mickey Mouse qualifies as an "identity" of Disney, but was insufficient to establish that the applied-for mark is a close approximation of the Mouse cartoon character or that it points unmistakably to Disney. In re Me and the Mouse Travel, LLC, Serial No. 76717725 (April 21, 2017) [not precedential] (Opinion by Judge Gorowitz).
The first two prongs of the Section 2(a) test require that (1) the mark at issue be the same as, or a close approximation of, the name or identity previously used by another person or institution; and (2) the mark be recognized as such, in that it points uniquely and unmistakably to that person or institution. The Examining Attorney contended that the applied for mark not only contains the word "mouse" but also contains a design element (the gloved hand) that is a close approximation of a design element of Mickey Mouse.
The probative evidence establishes "both that Disney is a well-known company and that Mickey is a famous character and mark. Moreover, the evidence establishes that Mickey Mouse is so well-recognized as a symbol of the company that the cartoon character’s image qualifies as an “identity” of Disney within the meaning afforded that term by the relevant precedents.
The Board concluded, however, that the USPTO had failed to show that the applied-for mark is a "close approximation of Disney’s Mickey Mouse cartoon character or that it points unmistakably to Disney." First, the mark incorporates the term "THE MOUSE" not "Mickey Mouse." Also, Mickey has three fingers and a thumb whereas the applied for mark shows four fingers and a thumb. And Mickey Mouse is not the only cartoon character sporting white gloves; later Disney characters also had white gloves, as did non-Disney characters such as such as Bugs Bunny, Woody Woodpecker, and Mario.
Thus, this record does not support a finding that characteristics of the Mickey Mouse figure are so well known that the depiction of a narrow arm a with a white-gloved hand would be recognized as being being unique to a body part of the Mickey character, versus that of another cartoon character or some other arbitrary figure.
And so the Board reversed the Section 2(a) refusal.
Read comments and post your comment here.
TTABlog comment: Do you agree with the Board's decision? When you see the word "mouse" and the cartoonish gloved hand in the drawing, what do you think of?
Text Copyright John L. Welch 2017.
posted by John L. Welch @ 4/24/2017
12 comments
12 Comments:
I think a survey would have shown pretty clearly that in the context of travel services (Disney Cruise Lines, Disney vacations, etc.) "the Mouse" would be associated with Mickey and Disney. If not confusion, then certainly dilution. Will Disney have the opportunity to weigh in on this?
Bad evidence from EA. There is plenty of evidence from news media of Disney being referred to as "the Mouse."
Would the TTAB reach the same conclusion had the Examiner supported the refusal by adding the Applicant's website as evidence in the record? See: http://meandthemouse.com/ Seems like a bad decision for Disney. I wonder if they will oppose, especially given the Applicant's argument that Disney consented.
I think this is another questionable decision by the TTAB. They are so unreliable now with the number of judges and the lack of consistency in analysis. Who would not see this mark and immediately think of Disney? It's just a bad decision. Disney should not have to oppose--but they will now b/c of this particular panel's analysis of 2(a).
Why would the applicant seek consent from Disney if the logo doesn't suggest a connection?
The consent issue is more interesting, but I think the Board is correct that the emails don't constitute a consent to register.
The comment regarding the number of fingers is interesting. Sounds like maybe a case of failing to see the forest for the trees. Either way, this is only just beginning because you know Disney is now about to get involved.
The Board's comment about # of fingers is particularly interesting because a) the application was amended to show 4 fingers, but the examiner's decision the change wasn't material wasn't before the Board, and b) the applicant's website continues to use the 3 finger version. Bad decision by the Board.
I initially thought this refusal would have been the examiner's reaction to a Letter of Protest filed by Disney but TSDR does not appear to show one was filed on the record. And if Disney would truly consent because this agency is an "authorized Disney vacation planner" (which I believe but I don't believe that Disney would consent to a registration of that mark but I could be wrong), then this applicant should have submitted a registration consent from Disney.
I agree with the anonymous poster above that the consent issue could be interesting and make law, if it were the case, i.e. that a consent could be used to overcome a Section 2(a) false association refusal.
There are a few third parties that have registration for marks that include the "Mouse" term in connection with travel agency services, including one for "mouseearvacations.com". So Disney seems to have permitted wide latitude with travel agencies, not only for use, but registration as well. And given these third party registrations (and even more third party use). it probably doesn't have a strong basis for preventing use or registration of a mark incorporating the mouse term without other additional factors. The additional factor here is the glove/white hand, which combined with the "mouse" term leads to a false association under 2(a). The 3/4 finger analysis is incorrect, and survey evidence would probably show this.
I don't think Disney would normally care about the use, although now with the opinion on the record here, they may have to. (Notably, if you look at the applicant's employee's signature block, which you can see in the "consent emails", there was also a picture of the Disney castle, so from a marketing perspective, Disney most likely wants there to be some association and has allowed that previously (which from a legal perspective, should always be pursuant to IP usage guidelines)). But Disney should raise an issue with the registration. My guess is that it will be taken care of with a phone call to the applicant.
When I first saw an article about this case, it did not include the design element of the mark. My first reaction was that it was silly to think that ME AND THE MOUSE TRAVEL was too close to Disney's marks. That said, as soon as I saw the logo, a light bulb lit up above my head. (Speaking of comic book imagery!) I took the logo around my office and over 50% of the folks who looked at it immediately made a connection with Disney.
Well, as others have said, Disney will almost certainly oppose and this ruling may be a short-lived Pyrrhic victory.
Note the back of Mickey Mouse's hands consistently have three lines, absent in this mark.
As soon as I saw the graphic I thought of Mickey...
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