IT STARTED WITH A MOUSE: TTAB REVERSES REFUSAL OF APPLICATION BY ME AND THE MOUSE TRAVEL

In a non-precedential decision in In re Me and the Mouse Travel LLC, Serial 76717725 (April 21 2017), the Trademark Trial and Appeal Board (TTAB) held that a mark combining the word ‘Mouse’ with the depiction of a narrow arm with a white-gloved hand was not a close enough approximation of the iconic Mickey Mouse figure to suggest an association with Disney Enterprises Inc. The TTAB therefore reversed the examining attorney’s refusal to register the application.

The applicant, Me and the Mouse Travel, LLC, sought to register the mark, later described as “the wording ‘Me and The Mouse Travel’ inside a concentric oval carrier with the design of arm with a glove holding a suitcase to the right of the wording and two eight point stars in the background of the oval carrier” (see figure below).

The fact that the glove had three fingers and certain characteristic wrinkles was not mentioned in the description. After the examining attorney initially refused the application and subsequently maintained the refusal in the face of evidence that Disney had no objection to the applicant’s use of the mark, the applicant later amended the drawing to remove the wrinkles on the glove and add an additional finger (see figure below).

The examining attorney agreed that the amendment did not constitute a material alteration that would change the commercial impression of the mark, but maintained her refusal. The applicant appealed.

The TTAB considered the factors relevant to a refusal on the grounds of a false suggestion of association from In re Pedersen, 109 USPQ 2d 1185, 1188-89 (TTAB 2013) ‒ namely, whether:

• the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
• the mark would be recognised as such, in that it points uniquely and unmistakably to that person or institution;
• the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
• the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with that person or institution would be presumed.

While the factors appear to address the mark as a whole, the analysis seemed to focus on component parts. Also, in contrast to a refusal based on a likelihood of confusion, the factors notably do not evaluate whether the person or institution consented or otherwise did not object to the applicant’s adoption of the mark.

The examining attorney contended that the design element of the mark not only was a close approximation of a feature of the famous Mickey Mouse character, but also contained the term ‘Mouse’; consumers were therefore likely to falsely associate the mark with Mickey Mouse and Disney. Her evidence included:

• articles discussing the history of the Mickey Mouse character;
• images from webpages featuring the character;
• public comments and statements made about the character; and
• an online Disney Store product listing for the “Mickey Mouse Made With Magic Mickey Mitt Plush Glove”, depicting a three-fingered glove.

The TTAB rejected the examining attorney’s arguments, noting that the use of white gloves was influential in the design of other Disney and non-Disney cartoon characters, including Bugs Bunny, Woody Woodpecker and Mario. Notably, the TTAB did not discuss whether the white gloves worn by those characters had a similar wrinkle pattern or consider that those characters were not cartoon mice. The TTAB noted that the applicant’s mark included a four-fingered hand in contrast to Mickey Mouse’s three fingers and used the term ‘The Mouse’, rather than ‘Mickey Mouse’.

Therefore, the TTAB held that the mark did not suggest a connection between Me and the Mouse Travel, LLC and Disney Enterprises Inc.

It is interesting to note that the TTAB was not asked to consider whether the original form of the mark with the three-fingered hand would have falsely suggested a connection or whether the amendment of the mark was a material alteration, impermissibly changing the commercial impression of the mark. However, the TTAB opinion suggests that perhaps it would have upheld the refusal if the mark had shown a three-fingered glove. Therefore, the TTAB’s recognition of the differences in the gloves implies the view that the removal of the wrinkles and addition of a finger made a difference in the commercial impression of the mark. The outcome of the case appears to have been greatly affected by the examining attorney’s recognition of the amendment as a permissible non-material alteration.

In contrast to the trademark laws of most other jurisdictions, US law – specifically, Section 7(e) of the Trademark Act – allows changes to a mark that do not materially alter its character. If a design integrated into a mark is a distinctive feature which is necessary for the recognition of a mark, then a change in the design would be considered an impermissible material alteration (In re Dillard Dept Stores Inc, 33 USPQ2d 1052 (Comm’r Pats 1993)). In the present case, it was within the discretion of the examining attorney to determine whether the number of fingers and wrinkles on a glove were distinctive features necessary for recognition of the mark as a whole.

However, the fingers and wrinkles could suggest a connection with Mickey Mouse because a consumer seeing the recognisable glove and the words ‘the Mouse’ could easily determine that this referred to Mickey Mouse. It would seem, in hindsight, that had the examining attorney refused the amendment, the debate in this case would have centred on whether it is an impermissible material alteration to change a design feature not necessary for overall recognition of the mark, but still important in suggesting the intended meaning of the words.

While Me and the Mouse Travel, LLC succeeded in its appeal to the TTAB, its website continues to show the original mark which featured the three-fingered glove and the modified mark does not currently appear on any page. As the application was filed on an intent-to-use basis, the owner must commence use of the mark as amended in order to obtain and maintain its registration.

While it started with a mouse, how it ends appears to be all about the glove for this particular applicant.

The article was originally published on June 1st, 2017 in the World Trademark Review (WTR).