The Board affirmed a Section 2(e)(1) refusal of LITTLE MERMAID, finding the mark merely descriptive of "dolls." Drawing a distinction between character names in the public domain and those derived from works in which the applicant owns intellectual property rights, the Board concluded that consumers will not perceive LITTLE MERMAID as a source identifier but instead will "understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid." In re United Trademark Holdings, Inc., Serial No. 86836082 (June 13, 2017) [precedential] (Opinion by Judge Bergsman).
"The Little Mermaid" is a well-known fairy tale by the Danish author, Hans Christian Andersen. First published in 1837, it has been adapted many times, including in a Disney film (1989) and a stage musical based on the film (2008).
Applicant did not disagree that the term "Little Mermaid" immediately and directly describes a doll featuring the appearance of a young or small mermaid. Applicant, however, argued that the mark also immediately conveys the commercial impression of the name of the public domain, fictional character, and that this aspect of the mark is not merely descriptive of its goods. The Board agreed in part, finding that "the immediate commercial impression" evoked by LITTLE MERMAID, when used for dolls, is the fictional character.
The Board observed that its case law draws a distinction between "situations where the character is in the public domain and where the applicant owns intellectual property rights in the work from which the character arose." For example, MARTHA WASHINGTON was found merely descriptive of character dolls "because the mark identifies an historical figure which consumers do not necessarily link to commercial entities as they do a fictional character." A character like SUPERMAN, however, is a proprietary creation, promoted by an entity that markets all manner of products. Consumers expect goods and services bearing that name (or image) of SUPERMAN to emanate from, or be product or licensed by, the entity that created the character and has the right to profit from its commercialization.
A fictional public domain character like the Little Mermaid of the Andersen fairy tale is not necessarily linked to a specific entity. "[P]rospective purchasers expect dolls labeled as LITTLE MERMAID to represent the fairy tale character and, thus, [the mark] describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale)." Other doll makers have a competitive need to use the name LITTLE MERMAID to describe their products.
Applicant asserted that the names of public domain characters have been regularly registered by the USPTO without requirement of a disclaimer or a showing of acquired distinctiveness: e.g., WALT DISNEY'S CINDERELLA, RAPUNZEL, and TINKER BELL. The Board, however, pointed out once again that each case must be decided on its own merits based on the record then before the Board. Third-party registrations are of little persuasive value; they do not estop or disqualify the Board from correctly deciding the case before it.
And so the Board affirmed the refusal to register.