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The music world is buzzing with speculations of whether or not Disney will formally oppose Deadmau5’s application to register the artist’s mouse logo.  On March 28, 2014, Disney Enterprises, Inc., filed its request for an extension of time to oppose application number 85972976, filed by Ronica Holdings Limited, the company representing Joel Zimmerman a/k/a Deadmau5 (“Deadmau5”).  Deadmau5 filed a U.S. trademark application for the caricature of a mouse head logo on June 28, 2013, to cover various goods and services, including sound and visual recording instruments, BMX bikes, clothing, toys and games, staple food items, and entertainment and educational services relating to music.

Disney holds numerous registrations relating to the well known and beloved Mickey Mouse character covering various goods and services, some of which overlap those claimed in Deadmau5’s application.   Disney’s registered marks include:

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Anyone who believes that he/she/it will be damaged by the registration of a mark on the Principal Register may file an opposition, stating reasons why the opposer believes he/she/it would be damaged by the registration of the opposed mark and the statutory grounds for the opposition.  A notice of opposition corresponds to a complaint in a court proceeding.  Should Disney file an opposition, it may assert that Deadmau5’s mark is confusingly similar to one or more of Disney’s trademarks, and/or that the mark would dilute the distinctive quality of Disney’s famous trademark(s).  

This is not the first time that Deadmau5 has tried to register its logo and not the first time that Disney has considered opposing the registration.   In fact, Deadmau5’s previously attempted to register the same logo in the same classes for identical or similar goods and services (see application no. 77894025, filed on December 15, 2009).  With the previous application, Disney had filed for an extension of time to oppose but did not file a formal notice of opposition.  However, Deadmau5 expressly abandoned the application on October 12, 2011.  This suggests that Disney and Deadmau5 settled the matter.  So it seems odd that Deadmau5 would attempt to register the same logo less than 2 years after it had abandoned its first application.

In this round, Disney has until July 2, 2014, to file a notice of opposition against the registration of the deadmau5 logo.   We will check back to see what happens to this application and what actions, if any, each party will take.    

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