A Family Affair: Disney's Little Miss-step?
Walt Disney is a family corporation: family entertainment, family vacations, family fun. And now, according to one trademark holder, Disney has even managed to infringe an entire family of trademarks, the "Little Miss" marks.
Yes, trademarks have families, too -- or they can, if one trademark holder owns a series of marks with a common element or "surname." Think McDonald's, with it's "Mc" marks, like Egg McMuffin, Chicken McNuggets, and the Ronald McDonald clown. If consumers recognize the common element itself as a trademark when it's combined with other elements, then the holder of the family of marks can prevent other unauthorized combinations that would cause confusion, even if they're very different from any of the marks already in the family. Thus McDonald's has successfully challenged McBagel, McSleep (budget hotels), McTeddy (teddy bears), and McClaim (legal services -- really). (McDonald's is presumably unconcerned about Professor J. Thomas McCarthy's extremely influential treatise, McCarthy on Trademarks and Unfair Competition, which deals with families of marks in section 23:61. Just don't call it McTrademark.)
The "Little Miss" family of marks at issue in the current case is composed of the younger sisters of the "Mr. Men" children's book characters, created by Roger Hargreaves. The original "Mr. Tickle" and his many brethren have appeared in over 130 books since 1971, while "Little Miss Bossy" and her sisters are featured in more than 75. The characters have also appeared on TV and on a dizzying range of product tie-ins.
Among the licensed "Little Miss" products are T-shirts, which since 2006 have been sold in some 5,000 U.S. locations, including -- wait for it -- Disneyland. Which makes it all the more interesting that Disney stores are now carrying a line of "Little Miss Disney" T-shirts featuring the company's own characters, including Daisy Duck as "Little Miss Bossy."
Although only "Mr Men Little Miss" is currently a registered mark in the U.S., some 40 other character-specific federal registrations are pending, and plaintiff THOIP has also invoked state common law in its complaint. The Hon. Shira Sheindlin of the Southern District of New York -- who shall emphatically not be referred to as "Little Miss Judge" -- will preside over the determination of whether or not the staunchly pro-protection Disney has violated its own trademark family values by ripping off the Little Misses.
And in the meantime, Counterfeit Chic suggests revenge in the form of a "Little Miss Copycat" -- with or without mouse ears.