–Sharon Armstrong, Attorney
In July 2008, Thoip, the owner of the “Mr. Men” and “Little Miss” characters from the early 1980s, sued Disney for creating its own line of “Little Miss” t-shirts featuring the leading ladies of Disney—Daisy Duck, Tinkerbell and Snow White’s Evil Queen. Thoip’s line of Mr. Men and Little Miss characters include Little Miss Bossy, Mr. Messy, Little Miss Splendid and, my personal favorite, Mr. Noisy (who wears outrageous shoes and is incapable of speaking below a shout). Thoip’s Misters and Misses are characterized by their short, stick-like arms and legs that support ample bodies, simple and colorful drawings, and images that evoke the very essence of their being (hence, Mr. Noisy wears decoratively loud shoes, and Mr. Messy is a great, big scribbled mess of a guy).
A few weeks ago, Disney filed counterclaims against Thoip seeking, among other things, declaratory relief to prevent Thoip from “hindering competition by monopolizing commonplace, generic and descriptive terms for their own exclusive use.” Notably, at the time of this post, Thoip owns only one federal registration, a design mark for “Mr. Men Little Miss,” for books. Although Thoip owns a number of pending federal applications for its characters, at present Thoip must (one assumes) rely on its common law rights from use of the marks in the United States.
This case underscores the importance of seeking federal registration whenever possible, both for inherently distinctive marks (those that are arbitrary, coined or suggestive of the goods and services offered under the mark) and for marks that may be considered descriptive. Upon using a mark continuously for five years, a registration may become “incontestable,” a status that accords the registration a number of benefits, including the benefit of effectively short circuiting the ability of challengers to assert that a mark is descriptive.
However the case turns out, I’d like to take this opportunity to put in a plug for a Little Miss Lawyer t-shirt—I can guarantee a market for that.