While “common law rights” offer enforceable protection of commercial trademarks even without having officially registered them with the USPTO, those rights are limited by various factors (e.g. geographical boundaries), and do not sufficiently protect one’s intellectual property outside certain limitations. It is therefore advisable and highly beneficial to apply for trademark protection through the USPTO in order to ensure full ownership and defensibility of one’s mark.
Applying for a trademark does not necessarily mean that the mark is eligible or will ultimately pass muster and become officially registered and protected. Take the attempt made by electronic dance music DJ “deadmau5” (pronounced “dead mouse”), who wished to register his “signature” mouse head costume and logo with the USPTO. Unfortunately for deadmau5, his “trademark” look was similar to that of a famous cartoon rodent whose parent company actually did own a trademark—Walt Disney’s Mickey Mouse. In early September of last year, Disney officially filed their opposition to the DJ’s trademark application. The nearly year-long court battle was finally settled this past June, but not before deadmau5 (whose real name is Joel Zimmerman) lost a significant amount of work as a result of the dispute. Deadmau5 apparently had an existing relationship with Disney’s music division and was on the cusp of accepting a lucrative offer from them when the trademark battle erupted, dashing his chances of sealing that deal.
He had been utilizing his mouse costume and logo for about a decade, but only pursued a trademark application when he decided to attempt licensing merchandise with his brand. The fact that Disney hadn’t given him much trouble before that point—and had even worked (or offered to work) with him on various projects—may have given the DJ a false sense of confidence that his trademark application would be accepted without a hitch. When the entertainment giant cracked down on him, he pushed back vehemently on the legal front, as well as on social media. But, the case continued to build up steam, and surveys were generated to poll the public about whether or not they perceived any confusing similarities between the two brands. This summer’s settlement makes those surveys no longer necessary, but the whole ordeal should serve as an example for parties wishing to trademark any of their intellectual property. Had Zimmerman done his due diligence earlier in his career, and attempted to obtain legal ownership of his stage dress before it became an inseparable element of his persona, he might have saved himself a lot of trouble (and legal fees).
True, obtaining a trademark carries with it an assortment of fees involved in the research and application segments of the process. (Occasionally, the results of such exploration may even conclude that registration with the USPTO is not in one’s best interest.) However, as deadmau5 learned the hard way, not being meticulous and timely about said processes could prove to be more expensive in the long run, so getting sound professional advice early on is paramount…especially before investing substantially in the use of a potentially problematic mark.