[00:00:00] Speaker 01:
We will hear argument in number 211056, United Trademark Holdings against Disney Enterprises.

[00:00:08] Speaker 01:
Mr. Helton, please begin whenever you're ready.

[00:00:12] Speaker 02:
Good morning.

[00:00:13] Speaker 02:
May it please the court?

[00:00:16] Speaker 02:
I'm here on behalf of Appellant United Trademark Holdings, Inc.

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in this appeal from the Trademark Trial and Appeal Board, where it was found that Appellants Teen Tink and Design Mark and Teen Tinkerbell Mark

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both for use with dolls, are likely to be confused with Disney's Tinkerbell registered mark.

[00:00:36] Speaker 02:
Appellant contends that the board erred by giving too much protection to the clearly weak mark of Disney.

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This one factor, the strengths or weakness of the registered mark, is enough here to be dispositive if conducted properly, given all the circumstances and the differences between the marks.

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Of course, any one factor can be determinative in a likelihood of confusion analysis, as this court indicated in 1997 in Inri Dixie-Rest.

[00:01:06] Speaker 00:
Mr. Pelton, one quick question.

[00:01:09] Speaker 00:
Is the question about the fame of the marks or the strength of the marks, is that a question of factual law?

[00:01:20] Speaker 02:
I believe that it is a question of law that we hear before

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that we are dealing with today because the board misinterpreted the law as it applied the facts because the board found that the mark is weak and then essentially ignored its own finding as it proceeded with the analysis.

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So I believe we're here.

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Where do you think the board found it was weak?

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I thought it was moderate.

[00:01:48] Speaker 02:
Yes, thank you.

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On page 19.

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We find, the board stated, we find opposers inherently distinctive Tinkerbell mark to be highly suggestive of the dolls identified thereby, primary inasmuch as the dolls depict the character Tinkerbell.

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So the board found the mark to be highly suggestive conceptually.

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then proceeded to- But that's just one part of this consideration, right?

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It's going to look at how distinct the mark is, and also it's going to look at commercial strengths of the mark, right?

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As it makes the determination of the overall strength of the mark.

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Is that correct?

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Right.

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And the board then proceeded to look at the- I don't see you here on page A19, where the board said that this mark is weak.

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They just said that it's highly suggestive of DOS.

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Right?

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Of the dolls identified there by, by the way.

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In other words, when it's used for a doll, one would think it would be a doll of Tinkerbell.

[00:02:55] Speaker 02:
Yes, exactly.

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And in fact, all of the evidence and pictures show dolls depicting the public domain name character Tinkerbell.

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And I use the term weak because highly suggestive is relatively weak.

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Of course, there is a spectrum of strength of trademarks.

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And here the board indicated that the mark is not arbitrary.

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and is highly suggestive.

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the board looking at the strength of the marks and the likelihood of confusion analysis.

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Why was it looking at it as it relates to dolls?

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I mean, obviously the Disney registration is for a lot of different products, not just dolls.

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So, I mean, does the law say that we have to consider the goods that are identified in the registrants application when looking at the fame of the already registered mark?

[00:04:04] Speaker 02:
Well, in the overall analysis of likelihood of confusion, of course, we're looking at the similarity of marks and the similarity of the goods and services as the two key considerations.

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And the board did indicate that Disney has other pleaded registrations, but they chose to focus on this registration because it does.

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And this registration was only for dolls?

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It was for dolls.

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There are some other items in the registration, but the analysis centers on dolls.

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And the other registration.

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This is my question.

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Does the law say that the analysis should focus on dolls again?

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You know, the depart factors is a lot of them.

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And some of it is comparing the products, right?

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So I'm wondering why, in the context of looking at the strength of the marks, we're supposed to limit ourselves to dolls.

[00:04:52] Speaker 02:
Well, because that's the goods or services that are at issue here.

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And so even if a mark is well known for one service or product, it's not necessarily famous or well known for another product or service.

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And in fact, here the board found on the issue of fame that it was neutral because the evidence of record wasn't specific as to dolls for the most part.

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And the evidence of record presented by Disney wasn't presented in context.

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in terms of other marks, other sales, other brands that may be alleged to be famous.

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Do you have any cases that support this way of looking at it?

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Because I was looking at, for example, Recon versus Spectrum, which involved the Frida Lane mark.

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In that case, it was found to be error in looking at the strengths of the mark to look at just the particular one particular category of goods.

[00:05:50] Speaker 02:
I don't have any cases at my fingertips right now on that.

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Again, we're focused on the differences between the marks in addition to the highly suggestive nature, at least conceptually, of the Disney Tinkerbell mark in relation to dolls, which are

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Also important for the analysis, because that is what is in the applicant's application.

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The applicant's application only covers dolls and toy figurines, which are essentially treated as the same products.

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That is why the analysis is centered on that.

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And the board erred when after recognizing the highly suggestive nature of Tinkerbell for dolls, it stated that they, that quote, we find opposers mark Tinkerbell as applies to dolls is entitled to an ordinary scope of protection on the spectrum of very strong to very weak.

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That's on page 24 of the opinion.

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Given the facts, the board should have applied less than ordinary protection to the Tinkerbell mark.

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It's well established by this court that highly suggestive marks are entitled to a narrower scope of protection.

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See, for example, Juice Generation versus GS Enterprises LLC in 2015.

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This is because highly suggestive names, when presented with them, customers are more likely to be accustomed to seeing similar names that have learned to differentiate them based on small differences.

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That principle comes in Juice Generation at page 1339.

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When Disney's Tinkerbell mark is viewed with a lens of less than ordinary protection, the differences between the marks that issue here are enough to avoid a finding of likelihood of confusion.

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Here, applicant has added the word teen at the start of the mark, and that adds a new dimension to the name.

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In the play, the public domain work by J.M.

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Barrie, Tinkerbell is not young or old, but merely a flash of light.

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teen Tinkerbell and teen Tink create new marks with alliteration and with new imagination or thought necessary to perceive them.

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In Ashen... Mr. Pelton, this determination is reviewed for substantial evidence, right?

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The likelihood of confusion is used for substantial evidence, right?

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And the similarity of the marks, whether the teen makes a big difference or not,

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Identifier doing its work at identifying a source.

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Why do you think there isn't substantial evidence to support the board's findings?

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Because the board erred in

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failing to properly consider what its own findings were about the conceptual strength or lack thereof of the mark when it discussed the overall strength of the mark and factored that into the likelihood of confusion analysis.

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So the board said that the mark is, again, highly suggestive

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and then afforded it in ordinary scope of protection.

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Why wasn't it entitled to do that based on the commercial strength evidence that it considered?

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Because it found that the commercial strength evidence wasn't terribly strong.

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It found that it was essentially neutral as to fame and commercial strength.

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So it then discounted its own findings that the mark was conceptually not as strong.

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And had it properly evaluated that, paired with the differences between the marks, we believe a proper finding is that there is no likelihood of confusion here.

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It's also noteworthy that applicant has several other registrations for marks using the same theme of reimagining classic fairy tales, including Team Rapunzel, Team Belle, Team Alice, Team Sleeping Beauty, Team Cinderella, Team Snow.

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Those are in the joint appendix.

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at 5334 to 5408.

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None of those marks had a finding of descriptiveness or requiring a disclaimer of any of the words.

[00:10:07] Speaker 01:
Can you remind me what, if anything, did the board say about the rest of your family of marks?

[00:10:20] Speaker 02:
The board didn't really address that in a significant manner in its opinion.

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And I'm merely just bringing those up for background as to how other marks have been treated, particularly other marks by this same applicant.

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Were those opposed by Disney?

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None of those marks were opposed by Disney.

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Does Disney own the underlying rights in those marks?

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I believe it might own some underlying rights

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Ann Berry's work, is that right?

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Disney, I believe, has made entertainment products using many, if not all, of those fairy tale characters that are in the public domain as well.

[00:11:13] Speaker 02:
I believe that I'm running into my rebuttal time, and I'd like to save the rest.

[00:11:19] Speaker 02:
OK.

[00:11:20] Speaker 01:
We'll do 15 minutes.

[00:11:23] Speaker 01:
Ms.

[00:11:24] Speaker 01:
McCloud.

[00:11:26] Speaker 03:
Good morning.

[00:11:27] Speaker 03:
May it please the court?

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What appellant UTH in this case is really asking this court to do is to reach a different factual finding on the strengths of the mark analysis.

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This is also the linchpin of their argument about the similarities of the marks.

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But the real question, as Judge Stull noted here, is that whether or not the board's decision finding that Tinkerbell for dolls and by Disney

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is entitled to an ordinary scope of protection based on its inherent and commercial strength.

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So the board in this case looked at two factors in analyzing the strength of the mark.

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They looked at both conceptual and commercial strength.

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And on commercial strength... Ms.

[00:12:11] Speaker 01:
McCloud, can I just ask you, where have we said that... I think we said that the overall likelihood of confusion question is a matter of law, not fact.

[00:12:23] Speaker 01:
And then we said,

[00:12:25] Speaker 01:
What exactly about particular DuPont factors, and most importantly, the one that you're now, both parties here, are very much focused on, which is the strength of the mark, which seems itself to have a couple of components.

[00:12:40] Speaker 03:
Right.

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The strength of the mark factor is one analyzed under the substantial evidence standard.

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The ultimate decision of likely confusion is the- I guess I'm looking for a case site.

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I believe it was a Chatham case.

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The substantial evidence is the record.

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Also, the Dickinson.

[00:13:05] Speaker 00:
On strength of mark?

[00:13:08] Speaker 03:
Oh, not specifically on strength of mark, but that's the standard of the review.

[00:13:11] Speaker 01:
So you don't say, I'm sorry, so you don't actually have a case that says on the crucial,

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factor at issue here, strength of mark with its subcomponents that we are supposed to decide vast as a factual question, which is to say under substantial evidence.

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Let's do our own assessment.

[00:13:35] Speaker 03:
Yes, Judge, the Focus Vision worldwide case did address the strength of the mark factor, including whether a mark is

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found not to be famous, but can still be commercially strong.

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And there the court did analyze strength under the substantial evidence standard.

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And in this case, the board correctly followed that case law and looked at those two factors, including the citation to Chippendales, which pointed out that both commercial and conceptual strengths should be followed and analyzed.

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And here, Disney owns an incontestable registration for dolls that the board relied on, the 910 registration.

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But it also pleaded ownership in its original opposition of numerous other registrations.

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It also pleaded and relied on common law rights of use of Tinkerbell for a very long time.

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And as an incontestable registration, the 910 registration that the board relied on is entitled to a presumption of inherent distinctiveness and validity.

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So while the board found that, and UTH does not challenge Disney's validity of its registration.

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counterclaim to cancel, so it is valid.

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The other thing that the board found that UTH glossed over, I believe, in its brief was that UTH failed to show any conceptual weakness.

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The board did an analysis of the evidence of record, including some of the third-party registrations that UTH relied on to show commercial weakness, and held that UTH failed to do so.

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The other thing that the board found here is that, contrary to UTH's contention, is that Disney's Tinkerbell for Dolls does not connote or suggest J.M.

[00:15:26] Speaker 03:
Barrie's underlying novel or the characters in those novels.

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The evidence shows, for example, that the character in those books was a beam of light

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for a girl in skeleton cloth, but it was all in written words.

[00:15:39] Speaker 01:
So here... Do I remember right that in the play, which came three years earlier than the book, she's a theme of life, but in the book three years later, she's actually has physical form?

[00:15:52] Speaker 03:
You have a description in words of a physical form.

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What we know is a skeleton leaf, a girl or a fairy in skeleton leaf.

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But what

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what Disney obtained in 1939 with the exclusive rights from the J.M.

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Barrie State to create its own film, animated film and merchandise under the mark.

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And what Disney did was create a very unique reimagined character that the board also noted.

[00:16:18] Speaker 01:
Do we, in order for

[00:16:21] Speaker 01:
us to affirm in your view, do we need to get into the question of just how different the 1950, was it three or 52, character that was in Disney's film may be from any of the J.M.

[00:16:40] Speaker 01:
Barrie versions that came under that name?

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I think it just strengthens the board's decision that this mark is inherently distinctive and highly suggestive or suggestive.

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It shows that the mark certainly is not descriptive, because it looks nothing like the JM Ferry iteration and description of the ferry here.

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But what the court could focus on in terming the conceptual strength is the fact that Disney owns this incontestable registration, along with many others, that has the Section 7 presumptions of validity and distinctiveness.

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But in addition,

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Disney, in this case, also presented significant evidence on commercial strength.

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That evidence is undisputed by UTH.

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While UTH contends that the board found Disney's mark was evidence of record did not show Disney's Tinkerbell Fodal was famous, it did not hold that the mark was weak.

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Rather, the board held that UTH failed to show commercial weakness.

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The board here, again, followed this court's precedent-induced generation and Jack Wolfson.

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And what it did is it looked at the third party about 20 examples that UTH put in record allegedly showing commercial weakness.

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But the board found UTH failed to show commercial weakness because none of those examples, save one, was for a doll.

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So the board's decision on the conceptual and the commercial strength are supported by the substantial evidence.

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Disney also put in a staggering amount of evidence on commercial strength.

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And while the board said it was substantial,

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Much of it was submitted as confidential under seal.

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But we highlighted some of it in our brief on page, I think, 32.

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And what the board's, what the evidence is in this case follows Omaha State's recommendation and advice guidance for the board, namely that public exposure, evidence of public exposure to a trademark can show significant commercial strength.

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Here, Disney shows approximately

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between 221 brick and mortar stores where Tinkerbell dolls are sold, and Tinkerbell dolls were sold on its website, shopdisney.com.

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There was approximately 200 million annual visitors to those two retail outlets exposed to Disney's Tinkerbell branded products, including dolls and coins.

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That's a lot of consumer exposure that more than supports the commercial strength of Disney's Tinkerbell mark.

[00:19:07] Speaker 03:
There is other evidence of commercial strength, including the fact that Disney has over 150 consumer product licensees for Tinkerbell branded products.

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Twelve of those are specifically dolls and toys.

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This is the kind of evidence that the court encouraged the board to consider in Omaha State in looking at commercial strength.

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And we think the evidence more than shows it here.

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So contrary to UTH's argument,

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the board properly found that while it's not a famous mark, UTH failed to show it was a weak mark.

[00:19:42] Speaker 03:
It's entitled to at least an ordinary scope of protection.

[00:19:45] Speaker 01:
Ms.

[00:19:45] Speaker 01:
McLeod, can I ask you this question?

[00:19:47] Speaker 01:
Yeah, so this case presents a interesting kind of background that's certainly not unusual, which is that there is a character

[00:20:03] Speaker 01:
Let's just assume for the moment, as I think will be true next year of the book, that the character is for copyright purposes in the public domain.

[00:20:15] Speaker 01:
But company or Disney got into the business of using the name of that character and establish a, I mean, let's say, you know, acquire distinctiveness with it.

[00:20:30] Speaker 01:
Once the character is in the public domain, how is somebody new, like United or somebody else, to go about the process of being able to use that character?

[00:20:49] Speaker 03:
I think what you're getting at is that there's really a difference here between copyright protection, which covers the creative expression and work,

[00:20:58] Speaker 03:
and trademark law, which covers rights stemming from source identifying functions of word names and symbols.

[00:21:05] Speaker 03:
But these are two separate areas of the law, and they can coexist and cover different aspects of an item.

[00:21:11] Speaker 01:
How is somebody like United who wants to use, let's assume it's 2024, and the character is from the Jamberry book, is in the public domain, supposed to go about

[00:21:25] Speaker 01:
or using it as a trademark?

[00:21:30] Speaker 03:
Disney's position is that if it's causing a likelihood of confusion based on their long-standing registration rights, UCH should not be allowed to use Tinkerbell as a trademark.

[00:21:42] Speaker 03:
But what we have a question here is UCH itself is seeking exclusive rights and federal registration for a trademark

[00:21:49] Speaker 03:
containing the very term that they submit is under the public domain and is so weak that Disney should have little to no rights, that seems to be an inequitable position to take.

[00:22:01] Speaker 03:
UTH can't have it both ways.

[00:22:03] Speaker 03:
And as this board has noted, we could draw some comparisons with design patent law, for example.

[00:22:08] Speaker 03:
Sometimes design patent law, designs that are covered by design patents are also trademarks.

[00:22:14] Speaker 03:
And when that design patent expires, the existing trademarks do not expire so long as they continue to identify the source of the product or service.

[00:22:23] Speaker 03:
The same can be drawn here with the copyright comparison.

[00:22:26] Speaker 03:
Disney developed its strong trademark rights over 60 years of use.

[00:22:30] Speaker 03:
It owns 30-plus incompressible registrations for Tinkerbell.

[00:22:35] Speaker 03:
And 60 years after it commenced use,

[00:22:37] Speaker 03:
This novel fell into the public domain, but trademark rights did not expire.

[00:22:41] Speaker 03:
They are not extinguished by the mere expiration of the copyright.

[00:22:46] Speaker 03:
So trademark rights can last past the expiration of copyright, so long as they function.

[00:22:51] Speaker 03:
And here Disney's registration is unchallenged.

[00:22:54] Speaker 03:
It's still valid.

[00:22:55] Speaker 03:
So really the question is the copyright argument that UTH is making can't be a collateral attack on this registration.

[00:23:05] Speaker 03:
I see my time is starting to close.

[00:23:10] Speaker 03:
I wanted to address a couple of other things.

[00:23:13] Speaker 03:
With regard to the similarities of the marks, really the linchpin of UTH's argument on this point is that Disney's mark is so incredibly weak that the addition of teens should be enough to distinguish the marks.

[00:23:26] Speaker 03:
But as I mentioned earlier, Disney's position is that their mark is commercially strong and it is conceptually strong and it is inherently distinctive.

[00:23:35] Speaker 03:
The similarities of the mark factor the board thoroughly considered under this court's precedent looked at the entire marks.

[00:23:41] Speaker 03:
And what it found was that the addition of team, which is at best a suggestive term, isn't enough to distinguish the marks here.

[00:23:50] Speaker 01:
What the evidence... I'm sorry, one thing you just said caught my ear.

[00:23:53] Speaker 01:
The board found that it is conceptually weak, right?

[00:23:57] Speaker 01:
Are you saying that that is incorrect because of the presumption of validity giving

[00:24:05] Speaker 01:
being a presumption of inherent distinctiveness?

[00:24:10] Speaker 03:
Yes, I think that under Section 7, this registration is entitled to a presumption of distinctiveness, inherent distinctiveness, and it is at least suggestive here.

[00:24:21] Speaker 03:
The board says highly suggestive.

[00:24:23] Speaker 01:
And can the board on a full record like this one here decide that the presumption has been overcome by the evidence?

[00:24:32] Speaker 03:
Not in the absence of a counterclaim.

[00:24:36] Speaker 03:
There's no, also Disney's registration has no disclaimer, no claim of acquired distinctiveness.

[00:24:42] Speaker 03:
It is under statute inherently distinctive.

[00:24:45] Speaker 03:
It cannot be descriptive.

[00:24:46] Speaker 03:
It is not counterclaim.

[00:24:47] Speaker 03:
It is valid.

[00:24:49] Speaker 03:
And the record supports that.

[00:24:51] Speaker 03:
The commercial evidence in this case supports the conclusion that Disney's mark is strong conceptually and commercially and signifies the source unique to Disney and Disney's source identifying function.

[00:25:07] Speaker 03:
So back to the similarities of the mark, if I may for one more minute discuss that.

[00:25:13] Speaker 03:
UTH is arguing that teen here is enough to distinguish the mark, but the board observed that UTH itself uses teen in a descriptive way to describe its own doll.

[00:25:23] Speaker 03:
For example, I am teen.

[00:25:25] Speaker 03:
Tinkerbell was used on its packaging.

[00:25:28] Speaker 03:
Something else that is in the record supporting the board's conclusion on the similarities of the mark is that Disney presented evidence in the case.

[00:25:35] Speaker 03:
that teen is a category of dolls.

[00:25:39] Speaker 03:
They put in evidence of a book showing hundreds of examples of third-party dolls called teen dolls.

[00:25:46] Speaker 03:
We put in articles in the records showing common use of teen.

[00:25:50] Speaker 03:
And UTH and Disney both used teen to describe a doll at a particular stage of life.

[00:25:56] Speaker 03:
So the connotation in this case the board found was that UTH's mark connotes Disney's Tinkerbell

[00:26:04] Speaker 03:
doll at a certain stage of life.

[00:26:07] Speaker 03:
And in fact, Disney's doll is arguably has a teen appearance.

[00:26:12] Speaker 03:
If there are no further questions, we would ask that the board affirm the board's decision below.

[00:26:21] Speaker 01:
Thank you, Ms.

[00:26:22] Speaker 01:
McCloud.

[00:26:23] Speaker 01:
Mr. Pelton, you have four minutes, I think.

[00:26:28] Speaker 02:
As we just heard, it is Disney's position that teen is very weak.

[00:26:35] Speaker 02:
the word teen for dolls, but that Tinkerbell is not.

[00:26:40] Speaker 02:
Despite the fact that Tinkerbell, the name of a character, comes from a public domain work, that Disney does not contest that, that the character's name is described in a public domain name work.

[00:26:53] Speaker 02:
So we believe that position is inconsistent.

[00:26:56] Speaker 02:
And the effort to connotate appellants

[00:27:01] Speaker 02:
position as inconsistent is wrong.

[00:27:04] Speaker 02:
If Disney is permitted to register and protect fairytale character names, which is current policy of the USPTO and the board, and UTH has not petitioned to cancel those registrations, the protection in them must be inherently weaker.

[00:27:20] Speaker 02:
And modifications to those marks, as we have here with Teen Tinkerbell and the Teen Tink design, are not likely to be confused.

[00:27:30] Speaker 02:
Disney acknowledges that it reimagined a work that is now in the public domain.

[00:27:38] Speaker 01:
But Disney would have it so that nobody else... Can you just clarify something?

[00:27:44] Speaker 01:
My understanding, and just tell me if it's wrong, is that the character from the play is in the public domain copyright-wise, but the character from the book is not.

[00:27:54] Speaker 01:
Not until next year.

[00:27:55] Speaker 01:
Is that wrong?

[00:27:56] Speaker 02:
I don't have the date of the publication of the book in front of me.

[00:28:01] Speaker 02:
But the play has a character named Tinkerbell in the book.

[00:28:09] Speaker 01:
Not embodied, right?

[00:28:13] Speaker 02:
That's right.

[00:28:13] Speaker 02:
In the first play, the first work, Tinkerbell is a beam of light.

[00:28:18] Speaker 02:
What we're talking about here is a depiction of some sort of doll using the word Tinkerbell.

[00:28:26] Speaker 02:
Disney would have it that nobody else can do this now.

[00:28:30] Speaker 01:
And what if... Your registration would cover using your two marks on a doll that looks identical to one of the Disney dolls.

[00:28:45] Speaker 02:
Well, I take issue with the characterization that they're identical, but they all... I didn't say that.

[00:28:50] Speaker 02:
I'm sorry.

[00:28:51] Speaker 02:
I said what your registration would cover.

[00:28:57] Speaker 02:
The scope of the registration is for DOLs because there is really no way within the description of goods and services to delineate a particular type of DOL.

[00:29:08] Speaker 02:
The applicant was not asked to do that.

[00:29:09] Speaker 02:
That issue hasn't been before the court here.

[00:29:13] Speaker 02:
But it is clear that Tinkerbell is a public domain name character.

[00:29:18] Speaker 02:
Disney acknowledges that others could make works based on the public domain, but they need to have a way to be able to protect their investment in those works.

[00:29:29] Speaker 02:
Trademark law allows for that.

[00:29:31] Speaker 02:
Trademark law should not allow for an end around on copyright law, which has an expiration, a termination, and to allow for indefinite protection for the name of a character that comes from

[00:29:44] Speaker 02:
the public domain.

[00:29:45] Speaker 02:
What if a company was to try to do that with dolls for Santa Claus or stuffed Santa Claus dolls or Bigfoot or the Three Little Pigs?

[00:29:57] Speaker 02:
All of these works that are well known and that are reimagined and used by many different brands.

[00:30:06] Speaker 02:
And as to the question regarding substantial evidence and the strength of the mark, we would also note that there is substantial evidence in the record based on the public domain nature of Tinkerbell that the board's finding on strength could be, you know, challenged and that it should have been found to be even weaker than it was.

[00:30:33] Speaker 02:
Okay, I think we have to end there.

[00:30:35] Speaker 02:
Thank you.

[00:30:36] Speaker 01:
Thanks to both counsel and the cases submitted.