As reported by The Hollywood Reporter, Disney has recently settled a trademark dispute with deadmau5 (pronounced “dead mouse”) regarding a mouse head design alleged to be confusingly similar to the famous Mickey Mouse logo. Joel Zimmerman, known by his stage name deadmau5, is a Canadian progressive-house music producer and performer. In 2013, Zimmerman filed, through his wholly-owned corporate entity Ronica Holding Limited (“Ronica Holding”), a U.S. trademark application to register the following logo:
In September 2014, Disney Enterprises, Inc. (“Disney”) filed a Notice of Opposition against this application, alleging that registration of a confusingly similar mouse head design would cause dilution of, and a likelihood of confusion with, its numerous trademark registrations covering the stylized head of a mouse.
Interestingly, during the course of the Opposition, Ronica Holding asserted a “Morehouse Defense.” This is an affirmative defense that is available in situations where a party already owns a trademark registration for a substantially identical trademark for substantially identical goods and services. It is based on the theory that the opposing party cannot be further injured by the registration sought because there already exists a substantially similar trademark registration and, therefore, an additional registration for the same mark for substantially identical goods and services can cause no more damage to the plaintiff than the subsisting prior registration. Ronica Holdings owns a prior trademark registration for the following mark:
The Trademark Trial and Appeal Board, however, rejected this defense on grounds that Ronica Holding’s prior trademark registration and current trademark application are not substantially the same (i.e., the trademarks are different in appearance and the current application covers many goods not covered by the prior registration).
On June 22, 2015, Ronica Holding filed an express abandonment of its pending trademark application with Disney’s consent – which means that the abandonment was “without prejudice.” In layman’s terms, “without prejudice” means that the issue of whether there might be confusion as a result of the simultaneous use by Disney and deadmau5 of their respective trademarks was left unresolved. Attorneys for deadmau5 have confirmed that the dispute has been resolved amicably – but have not disclosed the terms of the settlement. While the terms of trademark litigation settlements are typically not disclosed to the public, it is likely that the parties have entered into a comprehensive agreement setting forth the manner in which they will coexist in the future (and possibly the terms under which money exchanged hands). It will be interesting to see, for example, what trademark deadmau5 will use going forward. Will deadmau5 use the old trademark covered by the prior registration? Will deadmau5 use the new trademark covered by the withdrawn application? Or will deadmau5 stop using both trademarks – as a result of a BIG “settlement payment” from Disney? It is always interesting to see what a monetary settlement can accomplish! If under the terms of the settlement Disney allows deadmau5 to continue to use the trademark covered by Ronica Holding’s withdrawn application it could have a significant negative impact on the strength of Disney’s valuable trademark. So our bet is, if the money exchanging hands is not enough to get deadmau5 to stop all use, at a minimum, Disney will have insisted that deadmau5 restrict himself to use of only the old version. We will keep tabs on the marketplace and follow up again in coming months!
