TTAB Sustains Disney's Opposition to OSWALD THE RABBIT for Movie and Play Production Due to Lack of Bona Fide Intent

Pro se Applicant R.H. Lemorande failed to pull a bunny out of his hat in this opposition to registration of the mark OSWALD THE RABBIT for "Direction or presentation of plays; Entertainment, namely, production of plays; Entertainment, namely, production of musicals; Planning arrangement of showing movies, shows, plays or musical performances; Providing facilities for movies, shows, plays, music or educational training." Disney alleged lack of bona fide intent and likelihood of confusion with its common law mark OSWALD THE LUCKY RABBIT and its registered mark shown immediately below, for various goods and services. The Board sustained the first claim and declined to reach the second. Disney Enterprises, Inc. v. R.H. Lemorande, Opposition No. 91255366 (July 16, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Oswald the Lucky Rabbit is a cartoon character created by Disney in 1927. After Universal took over Oswald's character in 1928, Disney created Mickey Mouse as a replacement (according to Wikipedia).

Applicant R.H. Lemorande is experienced in musical film productions, and in writing, creating, or adapting stage musicals. In the early 1980s he was approached to develop a stage musical, and he proposed a “musical pertaining to Oswald the Rabbit and his early relationship to Walt Disney." He commissioned the creation of "small maquettes" (study models) of the intended animated characters, as well as a miniature stage set. The other parties to those discussions died without the project coming to fruition. According to Lemorande, however, "development of . . . stage productions can occur over a great duration of time, sometimes decades" and "[i]n 2018, anticipating possible completion of the project," he filed the subject application.

Lemorande provided no documentation regarding his plans (he said that is that is the usual case in these matters), and therefore Disney met its initial burden of demonstrating by a preponderance of the evidence that Lemorande lacked a bona fide intent to use the subject mark as to any of the identified services. "[G]iven that this evidence relates to activities that took place over four decades ago, it is simply too temporally remote to be probative of Applicant’s intent as of the application filing date." Moreover, ....

Applicant’s desire in the early 1980s to create a stage production that features the Oswald the Rabbit character is qualitatively different than an intent to use the mark OSWALD THE RABBIT as an indicator of source for the various services identified in Applicant’s 2018 application. In other words, the maquettes and miniature stage set may reflect Applicant’s efforts at one point to develop or demonstrate the conceptual elements of a production featuring Oswald the Rabbit as a character, subject, or namesake for the production’s title. But they do not show that Applicant had taken any steps or made any plans as of the application’s filing date to offer any of the identified services under the applied-for OSWALD THE RABBIT service mark.

The Board brushed aside Lemorande's "fair use" and "First Amendment” affirmative defenses in which he asserted that he should be free to register the OSWALD THE RABBIT mark because of the purported public domain status of the "Oswald the Lucky Rabbit' character name. 

These defenses appear to be directed to Opposer’s likelihood-of-confusion claim, which we do not reach. In any event, we need not address the applicability, or inapplicability, of these defenses in this proceeding, because, although Applicant’s brief reiterates that the Oswald character name is in the public domain, . . . the brief does not specifically raise or address the “affirmative defenses.” Thus we deem them impliedly waived.

And so, the Board sustained the opposition.

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TTABlogger comment: So, with the original "Oswald the Lucky Rabbit" cartoons now in the public domain, just how far do Disney's current rights in Oswald extend?

Text Copyright John L. Welch 2025.