Disney just can’t seem to stay out of trademark fights. Today’s story is about the upcoming film Moana, featuring a Polynesian character of the same name.
Disney Fights Trademark Trolls Over Future Princess Moana
In 2016, Disney will release Moana, the latest in its series of zillion-dollar-making “princess” cartoons. The plot description is as follows:
A young woman uses her navigational talents to set sail for a fabled island. Joining her on the adventure is her hero, the legendary demi-god Maui.
There will probably be songs and stuff too.
Disney announced the upcoming film sometime in 2013. On October 7, 2014, a company called EpicStone Group,INC. (I’m not sure why it’s expressed that way, but so it goes) filed an application with the U.S. Patent and Trademark Office to protect the mark THE MOANA in class 028 for the following goods:
Action figure toys; Articles of clothing for toys; Bath toys; Battery operated action toys; Bendable toys; Children’s dress up accessories, namely, toy helmets for play; Children’s educational toys for developing fine motor, oral language, numbers, counting, colors and alphabet skills sold in a fabric bag which has a clear vinyl window for viewing small trinkets and toys securely contained within the bag itself; Children’s educational toys for developing knowledge of planets; Children’s multiple activity toys; Children’s multiple activity toys sold as a unit with printed books; Children’s wire construction and art activity toys; Clockwork toys; Clockwork toys; Collectable toy figures; Construction toys; Educational toy for the purpose of the demonstration of alternative energy sources; Educational toys for teaching and testing knowledge relating to the politics, political process, and political history of the United States; Educational toys for teaching math principles to children, namely, manipulative blocks for displaying patterns and groupings; Educational toys for teaching music principles to children, namely, hand-held music notation symbols and music related figures, such as individual hand-held piano keys; Educational toys in the nature of an illustrated wall map; Fantasy character toys; Mechanical action toys; Mechanical toys; Modeled plastic toy figurines; Music box toys; Non-electronic toy vehicles; Pet toys; Plastic character toys; Play houses and toy accessories therefor; Play mats containing infant toys; Play mats for use with toy vehicles; Plush toys; Pop up toys; Positionable printed toy figures for use in games; Positionable printed toy figures for use in puzzles; Positionable three dimensional toys for use in games; Positionable toy figures; Positionable two dimensional toys for use in games; Printing toys; Pull toys; Push toys; Ride-on toys; Ride-on toys and accessories therefor; Role playing toys in the nature of play sets for children to imitate real life occupations; Rubber character toys; Sand toys; Sketching toys; Squeeze toys; Stuffed toy animals; Stuffed toy bears; Stuffed toys; Talking electronic press-down toy; Talking toys; Toy action figures; Toy airplanes; Toy armor; Toy building blocks; Toy buildings and accessories therefor; Toy clocks and watches; Toy construction sets; Toy figures; Toy model cars; Toy model hobby craft kits for constructing toy model landscapes, scenery, and action figures; Toy model kit cars; Toy model vehicles and related accessories sold as units; Toy models; Toy music boxes; Toy robots; Toy swords; Toy vehicles; Toy weapons; Toys for domestic pets; Toys, namely, children’s dress-up accessories; Toys, namely, puppets and accessories therefor; Transforming robotic toy vehicles; Transforming robotic toys; Two and three dimensional positionable figures sold as an integral component of toys; Two and three dimensional positionable toy figures sold as a unit with educational books; Two and three dimensional positionable toy figures sold as a unit with memory training equipment.; Two and three dimensional positionable toy figures sold as a unit with other toys; Water squirting toys
In November 2014, Disney filed several USPTO applications for the mark DISNEY MOANA for a variety of goods and services. Cue the dramatic music.
Eventually, Disney instituted a proceeding to oppose EpicStone’s THE MOANA application. Effectively, Disney is claiming that EpicStone is a trademark troll who is abusing the system and has:
a bad faith intent to trade-off of the goodwill of Opposer’s animated film, characters, and marks, to interfere with legitimate its business, and to gain financial rewards through such bad faith filing.
There are a few things to clear up before we proceed:
- The “THE” in front of EpicStone’s mark THE MOANA makes no difference in this inquiry. MOANA and THE MOANA are effectively the same trademark.
- When you file a USPTO trademark application, you must sign a statement with the following text:
The signatory believes that the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.
Disney stated that EpicStone has:
an established pattern of filing numerous intent-to-use applications for marks that are identical or nearly identical to well-known third-party marks for films, television shows, books, and characters.
The evidence shows that this is true. EpicStone has filed applications in the past for marks like THE UGLY BETTY, THE ALF, and THE INDEPENDENCE DAY.