In a precedential opinion, the Trademark Trial and Appeal Board (TTAB) recently held that a federal application for the word mark LITTLE MERMAID is not registrable on the Principal Register because the mark is “merely descriptive” when used in connection with the dolls based on the Hans Christian Andersen fictional character. The applicant had filed a federal application to register LITTLE MERMAID for use in connection with dolls and was rejected by the Patent and Trademark Office (PTO) on the grounds that the PTO believed the mark to be “merely descriptive.” The applicant appealed the decision to the TTAB.
In its appeal, the applicant argued that the wording LITTLE MERMAID has clear significance beyond the meaning of its component terms and is thus not merely descriptive—namely, the applicant argued that the name LITTLE MERMAID refers to the specific character from the Hans Christian Andersen story, and not just any young, imaginary, and partly human sea creature. “The Little Mermaid” is the title of a popular fairy tale by Hans Christian Andersen that is now in the public domain. The TTAB agreed that the immediate commercial impression evoked by the term LITTLE MERMAID for use in connection with dolls is the fictional character from the Hans Christian Andersen story, but disagreed that this meant the mark was not merely descriptive.
According to the TTAB, when determining whether a character name is merely descriptive, case law draws a distinction between situations where the character is in the public domain versus where an applicant owns intellectual property rights in the work from which a character arose— just like a historical character, a fictional character in the public domain is not linked to one specific commercial entity and so may be presented in various forms. The TTAB further noted that other doll makers have a competitive need to use that name LITTLE MERMAID to describe their products that are based on the Hans Christian Andersen story. The TTAB ultimately found that prospective customers would immediately know that a doll named LITTLE MERMAID refers to the character from the Hans Christian Andersen story that is a part of the public domain. As such, the TTAB held that the intended use of the name LITTLE MERMAID for use in connection with a doll is merely descriptive and thus not registrable on the Principal Register.
Applicant further cited third party registrations such as WALT DISNEY’S CINDERELLA and Design, RAPUNZEL, and TINKER BELL – arguing that if those were able to register, so should its mark. The TTAB summarily dismissed this argument by noting that it is axiomatic that each case is decided on its own merits: “The bare fact that the USPTO allowed the marks in the referenced third-party registrations to register is of little persuasive value and does not dictate the result in this case nor does it rebut our finding that LITTLE MERMAID is descriptive in the context of this mark.”
TIP: Companies should exercise caution when considering adopting a trademark as the name of a character (whether historical or fictional) that is in the public domain.