With the NFL season in full swing and my fantasy football league thus far undefeated, as well as some really interesting tech stuff on fashion week, I really wanted to focus on something fascinating and fun on this Friday.

But I couldn’t resist some of the news I saw Thursday on the Notice of Opposition filed by Disney against EDM’s Deadmau5.  Having opined on this earlier in April when Disney first requested an extension of time to oppose, and pointed out that this dispute occurred many years ago, I was frankly surprised that this hadn’t yet settled.   I mean, this isn’t their first go around regarding the mau5head.

We have talked a  lot recently about the trend of small trademark applicants to take on the “Goliath” standing in their way through social media.   Natty Green v. Natty Light.  The now settled, BREWSKEE-BALL v. SKEE-BALLThe F Word v. FRAPPUCCINO. And even the Goliaths being bullied by the Davids.

Deadmau5 utilized his grasp of social media to do the same thing here with his followers.

 

 

 

 

 

 

 

But let’s be real for one minute.  This isn’t just about confusing an EDM performer with a mouse in a cartoon.  Deadmau5 has applied for the logo below

https://www.duetsblog.com/files/2014/09/sideloadimage-2017-10-30-17-14-35.jpg

in connection with:

  • Apparatus and instruments for recording, receiving, processing, reproducing and/or transmitting sound and/or visual information or recordings; turntables, slipmats, headphones;
  • speakers;
  • radio receiving and transmitting apparatus;
  • telephone apparatus and instruments;
  • telephones, mobile telephones and telephone handsets; adapters for use with telephones;
  • battery chargers for use with telephones;
  • cases adapted for mobile telephones; sunglasses; spectacles, spectacle frames and cases; sound and/or visual recordings; interactive sound and/or visual recordings; sound and/or visual recording media;
  • juke boxes;
  • games adapted for use with television receivers;
  • video games;
  • coin/counter operated games;
  • arcade apparatus and games;
  • computer games;
  • computer software;
  • computers;
  • data processing equipment;
  • usb sticks;
  • mouse pads;
  • mice for computers;
  • screen savers;
  • publications (downloadable) provided on-line from databases, from the Internet or from any other communications network including wireless, cable or satellite; compact discs;
  • DVDs;
  • CD ROM;
  • carrying cases adapted for compact discs;
  • carrying cases adapted for DVDs;
  • video cameras;
  • cameras;
  • photographic and cinematographic apparatus and instruments;
  • photographic transparencies,photographic films;
  • digital music (downloadable);
  • MP3 players;
  • personal digital assistants and other hand held electronic devices;
  • metronomes;
  • telephone ring tones;
  • encoded magnetic cards and cards bearing machine readable information;
  • bank cards;
  • credit cards;
  • cheque cards;
  • cash cards;
  • smart cards;
  • automatic vending machines and mechanisms for coin operated apparatus;
  • batteries;
  • holographic images;
  • holographic cards;
  • holograms, credit cards with holograms;
  • BMX bikes;
  • Printed matter, namely, magazines in the field of entertainment;
  • printed publications, namely, magazines in the field of entertainment; books in the field of music and entertainment;
  • greeting cards, post cards;
  • picture cards;
  •  photographs, pictures, prints, posters, stationery, pens, pencils, erasers, pencil sharpeners, pencil cases, staplers, staple removers, rulers, boxes for pens, book markers, notepads;
  • address books;
  • diaries;
  • scrapbooks;
  • albums for photographs;
  • catalogues in the field of music;
  • stickers;
  • printed gift vouchers;
  • gift bags;
  • carrier gift bags;
  • calendars;
  • artists’ materials, namely, pens and brushes;
  •  paint brushes;
  • decalcomanias;
  • plastic materials for packaging not included in other classes, namely, bags;
  • cheques and travelers cheques;
  • banking cards, other than encoded or magnetic;
  • credit cards, other than encoded or magnetic
  • Leather and imitations of leather and goods made of these materials and not included in other classes, namely, leather cases;
  • trunks and travelling bags;
  • suitcases;
  • bags, namely, all-purpose sports bags;
  • schoolbags;
  • tote bags;
  • backpacks;
  • day packs;
  • handbags;
  • shoulder bags;
  • duffel bags;
  • messenger bags;
  • purses;
  • wallets;
  • leather shoulder belts;
  • credit card holders;
  • umbrellas, parasols and walking sticks
  • Clothing for men, women and children, namely, t-shirts, tank tops, sweat shirts, sweaters, jackets, hats, caps, visors, head bands, scarves, shorts, socks and casual footwear
  • Toys, games and playthings, namely, board games, card games and action skill games;
  • board games;
  • skateboards;
  • musical toys;
  • playing cards;
  • novelty figurines, namely, molded plastic toy figurines;
  •  slot machines;
  • automatic, coin operated or counter operated amusement apparatus adapted for use with an external display screen or monitor;
  • Christmas tree festive decorations;
  • carnival masks
  • Coffee, coffee essences, coffee extracts;
  • mixtures of coffee and chicory;
  • mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee;
  • tea, tea extracts;
  • cocoa;
  • chocolate;
  • chocolate products, namely, truffles;
  • sugar, maltose for food, rice, tapioca, sago, couscous; flour and preparations made from cereals and/or rice and/or flour, namely, cereal based snack foods;
  • nut paste, confectionery made of sugar and candy, breakfast cereals;
  • pastry;
  • pizza, pasta and pasta products, namely, noodles and alimentary pastas;
  • bread;
  • biscuits;
  • cookies;
  • cakes;
  • ice, ice cream, water ices, frozen confections;
  • preparations for making ice cream and/or water ices;
  • honey;
  • preparations consisting wholly or substantially wholly of sugar, for use as substitutes for honey, namely, honey substitutes; syrup, treacle, molasses;
  • ketchup;
  • custard powder;
  • frozen, prepared or packaged prepared meals consisting primarily of pasta or rice;
  • dessert mousses;
  • bakery desserts;
  • puddings;
  • yeast, baking powder;
  • salt, pepper, mustard;
  • vinegar;
  • chutney;
  • spices and seasonings;
  • vegetal preparations for use as drinks;
  • herbal and tea infusions, other than for medicinal use;
  • meat pies;
  • mayonnaise;
  • meat tenderizers for household purposes;
  •  royal jelly for human consumption, other than for medicinal purposes;
  • natural sweeteners;
  • syrups, namely, maple syrup;
  • salad dressings
  • beers;
  • mineral and aerated and effervescing waters and other non-alcoholic drinks, namely, soda and juice;
  •  fruit juices;
  • syrups, essences and extracts and other preparations for making beverages;
  • isotonic beverages
  • Entertainment in the nature of live performances by a musical artist;
  • educational services, namely, providing classes, seminars or workshops in the field of music;
  • production and distribution services in the field of sound and/or visual recordings and entertainment programs, namely, motion pictures, radio programs or videos in the field of music;
  • music library services;
  • music publishing services;
  • recording studio services;
  • disk jockey services;
  • provision of information relating to music, entertainment, games and events provided on-line from a computer database, from the Internet or any other communications network including wireless, cable or satellite; provision of non-downloadable digital music from the Internet;
  • provision of non-downloadable digital music from MP3 websites;
  • production, preparation, presentation, distribution, and rental of television and radio programs and films, animated films and sound and/or visual recordings; production of live entertainment features in the nature of music concerts;
  • organization, production and presentation of quiz shows, exhibitions for entertainment purposes, sporting events, shows in the nature of music concerts, road shows, live staged events in the nature of musical performances, theatrical performances, concerts, live musical performances and audience participation events; provision of on-line non-downloadable electronic publications, namely, a magazine in the field of music;
  • electronic computer game services provided from a computer database, the Internet or any other communications network including wireless, cable, satellite; advisory and consultancy services related to the aforementioned services

Really, guys?! This is a ridiculously long list of goods, and eventually deadmau5 would have to show use on all of these goods, or delete them.  Although this was based on a foreign registration in Australia, it makes me wonder whether there was a strategy here upon filing this, especially given the prior grievances of Mickey Mouse as I pointed out in my prior post.

With the right strategy, I think deadmau5 could easily carve out a plurality of goods and services descriptions that would allow for registration of his mau5head in view of the prior, famous, and subsisting rights of Disney’s Mickey Mouse.  And as we have often said, registration of a trademark may be barred while in actual use there is no likelihood of confusion due to the differences in standards between a likelihood of confusion in the Trademark Office’s view and a likelihood of confusion in the context of infringement. Disney hasn’t filed a lawsuit to prevent deadmau5 from using the mark, just to try to prevent them from registering it (although a good attorney will point out Disney’s delay in addressing the common law use of the mau5head).

BUT THEN…Disney’s website shows a “Re-Micks” video using deadmau5’s music WITH MICKEY MOUSE and WITHOUT PERMISSION TO USE THE MUSIC (according to deadmau5’s Twitter).  Really, guys?! 

What do you think about this dispute and the parties’ actions?  How do you think it should shake out?