In a precedential decision in In re United Trademark Holdings, Inc, Serial 86836082 (June 13 2017), the Trademark Trial and Appeal Board (TTAB) has held that LITTLE MERMAID used in connection with “dolls” in Class 28 is merely descriptive under Section 2(e)(1) of the Trademark Act because it is understood by consumers to be a fictional public domain character and describes the appearance of the dolls, rather than identifying a commercial source for the goods.

The Little Mermaid is the title of a fairy tale written by Hans Christian Andersen in 1837. The story was adapted by Walt Disney Pictures and made into a film in 1989 and a Broadway musical in 2008. Many dolls and other licensed merchandise use the image of the well-known Disney version of the ‘Little Mermaid’ character, Princess Ariel. Those versions not specifically licensed sometimes appear as a princess mermaid but without the same distinguishing features of the Disney version.

The examining attorney refused registration of the application filed by United Trademark Holdings on the grounds that the LITTLE MERMAID mark was merely descriptive of a feature or characteristic of the dolls which were represented as a young girl which is part human and part sea creature.

United appealed the refusal to the TTAB on the basis that ‘Little Mermaid’ had a clear significance beyond the literal meanings of its individual components. It argued that ‘Little Mermaid’ did not refer to any young mermaid, but the specific character from the Hans Christian Andersen story. Moreover, the US Patent and Trademark Office has a history of granting registrations for names of characters in the public domain in connection with dolls, action figures and figurines. United cited 26 other marks for fairy tale characters in support of its contention, including Registration 3775134 for SLEEPING BEAUTY and 3636910 for TINKER BELL, both in the name of Disney Enterprises, and Registration 3224000 for RAPUNZEL in the name of Mattel, Inc. It also noted that 20 of these marks refer to character names without any modifying terms and, of the 10 marks with modifying terms, none included disclaimers or claims of acquired distinctiveness. They were all registered on the Principal Register.

The TTAB rejected United’s arguments and upheld the examining attorney’s decision, drawing a distinction between where a character is in the public domain and where an applicant owns IP rights in the work from which the character originated, such as ‘Superman’. A character like ‘Superman’ is a proprietary creation, promoted by an entity that markets all manner of products. Consumers expect goods and services bearing that name (or image) to emanate from, or be produced or licensed by, DC Comics which created the character and therefore has the right to profit from its commercialisation.

The TTAB emphasised that a fictional public domain character such as Andersen’s ‘Little Mermaid’ is not necessarily linked to a specific entity. Moreover, other doll makers seeking to market a doll depicting the character have a competitive need to use that name to describe their products.

The TTAB further ruled that the registration of other public domain characters did not have any bearing on the outcome of United’s case, as each case must be decided on its own merits. Additionally, the TTAB has not reviewed or issued a decision regarding any of those third-party registrations.

The TTAB upheld the examining attorney’s refusal to register the mark, ensuring United’s LITTLE MERMAID mark was not “a part of their world”, or at least not on the Principal Register without a successful claim of acquired distinctiveness.

Interestingly, United did not attempt to argue acquired distinctiveness in the mark based on their prior incontestable Registration 3838651 for LITTLE MERMAID in relation to “greeting cards” in Class 16. Greeting cards and dolls may be considered related goods as they are often purchased concurrently as gifts. Many toy shops offer greeting cards near points of sale as a method of upselling so that customers purchasing gifts may also choose to buy cards. Hallmark and Papyrus are well known for their greeting cards, but they also sell dolls and figurines. Had such arguments and evidence been presented to the TTAB, United may have obtained a registration on the Principal Register with a claim of acquired distinctiveness arising from its earlier registration, without having commenced use of the mark for dolls.

The article was originally published on July 18th, 2017 in the World Trademark Review (WTR).