I suspect that most of you are very familiar with Disney and its signature spokesperson, Mickey Mouse. There are probably fewer of you that are familiar with Deadmau5 (pronounced “dead mouse,” real name Joel Zimmerman). Deadmau5 is a music producer, performer and DJ. He often wears a mouse head while performing. Deadmau5 has used this signature look for more than 10 years and has received trademarks in other countries.
Recently, Deadmau5 attempted to trademark his famous “mou5head” logo because not only does he wear the logo at show, but he also puts it on merchandise that he sells. Disney quickly filed an objection to Deadmau5’s trademark application. Disney claimed that “both parties’ marks are comprised of a round head with prominent round mouse ears in silhouette.” Disney’s main argument is that there is an infringement because there would be a “likelihood of confusion” between the Deadmau5’s “mou5head” and Mickey Mouse.
To determine if a likelihood of confusion exists, a court weighs the following factors:
(1) the strength of the mark;
(2) the proximity of the goods;
(3) the similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) the type of goods and the degree of care likely to be exercised by the purchaser;
(7) defendant’s intent in selecting the mark; and
(8) likelihood of expansion of the product lines.
Disney owns 19 different trademark registrations relating to Mickey Mouse including the words “Mickey Mouse,” animated television shows, live action movies, theme parks, computer games, etc. Along with the words and movies, Disney also has a trademark for Mickey’s visual portrayal. Disney cited first use of the Mickey Mouse ears in 1928 and has previously vigorously defended its trademarks. So much so, that in 2003 it actually successfully lobbied Congress to pass legislation prolonging the maximum time for trademarks to prevent one of Mickey’s first films to go into the public domain. This act by Congress is affectionately dubbed, the “Mickey Mouse Protection Act.” You can read the Act here.
In an interesting twist, Deadmau5 responded to Disney by bringing his own trademark claim via the form of a “cease and desist” letter. The letter claims that Disney used one of Deadmau5’s most recognizable tracks, “Ghosts ‘n Stuff,” in an animated clip on its website. Disney did this without Deadmau5’s permission. And, you guessed it—the animated clip was of old Mickey Mouse animation. You can watch a clip of the video here. It will be interesting to see how the “mouse” vs. “mou5” battle will play out in court.