The Board reversed a Section 2(a) refusal of the mark shown below for travel agency services, rejecting the USPTO's contention that the mark includes matter that falsely suggests an association with Disney Enterprises, Inc. The evidence showed that the image of Mickey Mouse qualifies as an "identity" of Disney, but was insufficient to establish that the applied-for mark is a close approximation of the Mouse cartoon character or that it points unmistakably to Disney. In re Me and the Mouse Travel, LLC, Serial No. 76717725 (April 21, 2017) [not precedential] (Opinion by Judge Gorowitz).

The first two prongs of the Section 2(a) test require that (1) the mark at issue be the same as, or a close approximation of, the name or identity previously used by another person or institution; and (2) the mark be recognized as such, in that it points uniquely and unmistakably to that person or institution. The Examining Attorney contended that the applied for mark not only contains the word "mouse" but also contains a design element (the gloved hand) that is a close approximation of a design element of Mickey Mouse.

The probative evidence establishes "both that Disney is a well-known company and that Mickey is a famous character and mark. Moreover, the evidence establishes that Mickey Mouse is so well-recognized as a symbol of the company that the cartoon character’s image qualifies as an “identity” of Disney within the meaning afforded that term by the relevant precedents.

The Board concluded, however, that the USPTO had failed to show that the applied-for mark is a "close approximation of Disney’s Mickey Mouse cartoon character or that it points unmistakably to Disney." First, the mark incorporates the term "THE MOUSE" not "Mickey Mouse." Also, Mickey has three fingers and a thumb whereas the applied for mark shows four fingers and a thumb. And Mickey Mouse is not the only cartoon character sporting white gloves; later Disney characters also had white gloves, as did non-Disney characters such as such as Bugs Bunny, Woody Woodpecker, and Mario.

Thus, this record does not support a finding that characteristics of the Mickey Mouse figure are so well known that the depiction of a narrow arm a with a white-gloved hand would be recognized as being being unique to a body part of the Mickey character, versus that of another cartoon character or some other arbitrary figure.

And so the Board reversed the Section 2(a) refusal.