After a decade of using his signature Mickey Mouse style ears, Deadmau5 is finally in hot water with the Walt Disney Company. Disney, known for the aggressive enforcement of its intellectual property, had surprisingly left Deadmau5 alone. That is until the musical artists decided to Trademark his logo in the United States, prompting the well-funded Disney legal department to file a trademark opposition against Deadmau5′ mau5head logo.
After the trademark examiner has given a trademark pre-approval, the mark is opened up for a 30-day opposition period at which time any entity can make a case as to why the trademark should not be approved. Most commonly, oppositions revolve around a standard of review that asks whether there is a “likelihood of confusion” on the part of consumers between two or more products. If two products are similar types and have similar names, would the consuming public be confused as to which company makes which product? However, confusion requires the products to be of the same type. For example, nobody would mistake a fireworks company’s products for a sailboat company’s. Famous marks, however, transcend product types. Similar words or designs can dilute famous trademarks even if they are in different markets and there is no competition between the two entities. Put Mickey’s ears on any product and people will likely think it is a Disney product. If that product is made poorly or is not a wholesome family type product, mistakenly attributing the product to Disney can harm Disney’s trademark. So when Deadmau5’s mau5head trademark was published for the 30-day opposition, Disney filed a 171-page opposition.
At any time, Disney could have sent a cease-and-desist letter or initiated a trademark infringement suit against Deadmau5 but chose not to. Perhaps Disney didn’t feel there was a good enough case, or the company may have been worried about a public relations backlash if they acted like a bully against a popular icon. Once Deadmau5 applied for a trademark application, however, Disney may have been compelled to take action.
Companies must self-police their trademarks, but if the company doesn’t enforce a trademark, then the trademark could be weakened. To keep trademark distinctive and strong, Trademarks owners need to protect their marks from infringements and misuse that may harm the owner’s goodwill and business reputation. The trademark owner is not required to discover or commence a lawsuit against every similar mark. However, failure to enforce will lead to a loss of distinctiveness over time. Companies should enforce against as many instances of similar marks as they are able to financially, but should try their best to not pick and choose which entities to enforce their marks against and which they should tolerate.
For the past decade Deadmau5 has been using a logo that potentially infringes upon Disney’s ears trademark, yet Disney chose to not enforce their mark, but now with Deadmau5 trying to get trademark protection increases the potential for weakening or brand dilution. Deadmau5’s application may have forced Disney to take action since the consequences were too high to ignore. Whether Disney’s failure to enforce their mark against Deadmau5 for ten years will have an effect on the opposition proceeding remains to be seen but will likely be part of the response to the Trademark Trial and Appeal Board.
Still, Deadmau5 hasn’t taken the trademark opposition lying down, lashing out via social media. Deadmau5 took to Twitter with comments like the one shown here. He then sent Disney a cease-and-desist letter over use of his song “Ghosts ‘n’ Stuff,” in a video Disney posted on its site and YouTube. Deadmau5 then published the letter on Twitter for his fans to read. As of this writing, Disney has not removed the video or responded to Deadmau5.
If you want to see how Deadmau5 and Disney resolve the situation, just follow Deadmau5 on Twitter.