Disney Enterprises, Inc.v.Ronica Holdings Limited

Trademark Trial and Appeal Board

Apr 29, 2015

No. 91218136 (T.T.A.B. Apr. 29, 2015)

DUNN Mailed: April 29, 2015

Opposition No. 91218136
Disney Enterprises, Inc.

v.

Ronica Holdings Limited

Before Bergsman, Greenbaum, and Goodman, Administrative Trademark
Judges:

By the Board:

This case comes up on Opposer’s combined motion to strike the answer in
part and motion for partial summary judgment on Applicant’s prior registration, or
“Morehouse” defense.1 See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d
881, 160 USPQ 715 (CCPA 1969). The motion is contested.
Applicant’s Registration
No. 3836648
Applicant’s opposed Application
Serial No. 85972976

1 Opposer’s motion indicates it served its initial disclosures on November 10, 2014.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.

Opposition No. 91218136

On June 28, 2013, Ronica Holdings Limited, the wholly-owned corporate
entity of the individual known as deadmau5, filed an application pursuant to
Trademark Act Sec. 44(e) seeking registration of the design mark depicted above,
described in the application as “a caricature of a mouse head” for a wide variety of
goods and services in International Classes 9, 12, 16, 18, 25, 28, 30, 32, and 41.
Applicant claims ownership of Registration No. 3836648 for the design mark
depicted above, described in the registration as “a stylized small animal with a
smiling face” for a wide variety of goods and services in International Classes 9, 16,
25, and 41.
On September 2, 2014, Opposer Disney Enterprises filed a notice of
opposition comprising a 22 page ESTTA-generated filing form and a 20 page
Complaint with 25 numbered allegations. The notice of opposition claims that
registration of Applicant’s mark would cause dilution of, and a likelihood of
confusion with, Opposer’s design marks described, in some instances, as “the
stylized head of a mouse,” also used with a wide variety of goods and services, and
the subject of pleaded registrations as well as common law use. The notice of
opposition is accompanied by more than 130 pages of exhibits, including 30 pages
alleged to show use of Opposer’s marks (Exhibit A) and 100 pages with status and
title copies of the pleaded registrations (Exhibit B).
On October 13, 2014, Applicant filed its answer comprising 34 pages with 16
pages responding to Opposer’s 25 allegations and 18 pages with 61 numbered
allegations describing Applicant’s affirmative defenses, including (Affirmative
2
Opposition No. 91218136

Defense Par. 57) the allegation that “Opposer cannot be damaged by registration of
the Subject Mark because Applicant already owns an existing registration for the
same or substantially identical mark for the same or substantially similar goods.”
The answer denies the salient allegations of the notice of opposition. The answer is
accompanied by more than 1400 pages of exhibits, including 14 separate filings of
about 100 pages each, alleged to show use or recognition of Applicant’s mark.
MOTION TO STRIKE IS DENIED
Pursuant to Fed. R. Civ. P. 12(f), the Board may order stricken from a
pleading any insufficient or impermissible defense, or any redundant, immaterial,
impertinent or scandalous matter. See also Trademark Rule 2.116(a), and TBMP
§ 506 (2014). Motions to strike are not favored, and matter will not be stricken
unless it clearly has no bearing upon the issues in the case. See Ohio State
University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999), and Harsco
Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570 (TTAB 1988). Opposer moves to
strike Applicant’s answer in part.2 More specifically, Opposer seeks to strike all
references to foreign use and recognition of Applicant’s mark, such as “deadmau5
served as Grand Marshal in the Canada Day parade put on by his hometown of
Niagara Falls, Ontario, and was given the key to the city” (Answer, Affirmative
Defenses Par. 24). Opposer also moves to strike Applicant’s affirmative defenses
and exhibits as argumentative.
2 Inasmuch as Applicant responded to Opposer’s motion to strike the affirmative defenses of
laches, estoppel and acquiescence by specifically withdrawing those defenses (Response to
Motion, p. 3, n. 2), no further consideration will be given to the affirmative defenses of
laches, estoppel and acquiescence.
3

Opposition No. 91218136

With the exception of pleaded registrations, exhibits to the pleadings do not
form part of the record. Trademark Rule 2.122(c). Opposer’s arguments as to the
relevance of the exhibits are misplaced. The Board will not give any consideration to
the 1400 pages of exhibits submitted by Applicant with its answer, or the 30 pages
of exhibits unrelated to the pleaded registrations submitted with the notice of
opposition. See Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1927 n.8
(TTAB 2014); TBMP § 317 and TBMP § 506.03. Accordingly, Opposer’s motion to
strike is denied with respect to the exhibits to the answer.
The Board turns to whether the disputed portions of Applicant’s answer have
any bearing on the case. The notice of opposition alleges that Opposer is “one of the
world’s leading producers and providers of entertainment” (emphasis added), and
then tells the story of Mickey Mouse (and not just the mouse head design marks
which are pleaded) from 1928 to the present, including how the “mouse ears” design
became associated with the popular Mickey Mouse character, all as support for
Opposer’s contention that its design marks warrant protection against dilution by,
or likelihood of confusion with, Applicant’s mark.
Applicant’s affirmative defenses assert that deadmau5 is a renowned
musician and producer, and then tells the story of his career from 2002 to the
present, including how use of the mau5head mask and logos became associated with
his performances, and his international stature as a performer and producer, all as
support for his contention that the parties’ marks are so dissimilar that there has
not been any dilution or confusion between the parties’ marks during a substantial
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Opposition No. 91218136

period of coexistence, and there will not be any dilution or likelihood of confusion
between the parties’ marks if Applicant’s application issues as a registration. The
broad scope of the allegations in Applicant’s answer have a bearing on the issues of
the case and will not be stricken. Specifically, Applicant has provided a “road map”
for its defense. Presumably, this will allow Opposer, and the Board, to understand
the purpose of Applicant’s evidence and to prepare rebuttal evidence, if necessary.
However, the leeway the Board grants in the pleadings, which allows
explanatory information regarding Applicant’s foreign use and recognition to stand,
does not pertain to the scope of the pleaded claims and discovery, or alter the
burden of proof. Applicant’s use and registration outside the United States does not
give rise to trademark rights in the United States, either directly or as a result of
any failure by Opposer to contest Applicant’s foreign trademark rights. See Person's
Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990) (“The
concept of territoriality is basic to trademark law; trademark rights exist in each
country solely according to that country's statutory scheme.”) and Jenaer Glaswerk
Schott & Gen. v. The General Electric Company Limited, 137 USPQ 607 (TTAB
1963) (“The mere fact that opposer did not elect to oppose applicant's prior
registrations of ‘GENALEX’ for different goods does not in any way act as a bar to
the present opposition, nor does the fact that opposer did not object to the
registration of applicant's mark in foreign countries since opposer's rights in this
country are completely independent of any rights of the parties in such countries.”)
(citations omitted). In fact, because Applicant’s foreign trademark rights are
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Opposition No. 91218136

irrelevant to the trademark rights to be determined in this proceeding, the Board
will not allow discovery, and will not consider trial evidence, regarding activities
involving the parties’ marks outside the United States. See Double J of Broward
Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991).3
Opposer’s motion to strike Applicant’s answer in part is DENIED.
MOTION FOR SUMMARY JUDGMENT ON MOREHOUSE DEFENSE IS
GRANTED

A motion for summary judgment is a pretrial device intended to save the time
and expense of a full trial when the moving party is able to demonstrate, prior to
trial, that there is no genuine dispute of material fact, and that it is entitled to
judgment as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477
U.S. 317 (1986). In reviewing a motion for summary judgment, the evidentiary
record and all reasonable inferences to be drawn from the undisputed facts must be
viewed in the light most favorable to the nonmoving party. Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The Board
may not resolve issues of material fact; it may only ascertain whether such issues
exist. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed.
Cir. 1993).
3 While it appears that no exceptions to the rule barring evidence of foreign use are
applicable here, to the extent that a party believes that information regarding foreign use is
necessary under the specific facts of this case and supported by case law, the party may
seek a conference between the parties and the Board in which to make an oral motion to be
allowed to serve discovery or submit evidence regarding such foreign use. To arrange the
conference with the Board, the party should call TTAB Interlocutory Attorney Elizabeth
Dunn at 571-272-4267.

6

Opposition No. 91218136

The Morehouse defense is an equitable affirmative defense which is available
in situations where a party already owns a registration for the substantially
identical mark for substantially identical goods and services. It is based on the
theory that a party cannot be further injured by the registration sought or already
owned because there already exists a substantially similar registration and,
therefore, an additional registration for the same mark for substantially identical
goods and services can no more injure the plaintiff than the subsisting prior
registration. See Morehouse Mfg. Corp. v. J. Strickland & Co., 160 USPQ at 715.
“The courts and the Trademark Board have been quite strict in requiring that the
mark and goods be almost identical.” 3 J. THOMAS MCCARTHY, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION (“MCCARTHY”) § 20:38 (4th ed. 2014). See
also Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1651 (TTAB
2010), aff’d, Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011) (“This defense applies where an applicant owns a
prior registration for essentially the same mark identifying essentially the same
goods or services that are the subject of the proposed application.”); Green Spot
(Thailand) Ltd. v. Vitasoy International Holding Ltd., 86 USPQ2d 1283, 1285
(TTAB 2008).
Here, Opposer submits copies of Applicant’s prior Registration No. 3836648
and opposed Application Serial No. 85972976, and contends that the opposed
application involves a much broader listing of goods and services than the
registration, and marks which have different features and make different
7
Opposition No. 91218136

commercial impressions. Applicant opposes the motion, and argues that the goods
have “sufficient overlap”, are “necessarily related”, and are “functionally” identical,
and that the marks are “literally the exact same mark” except for a change in
perspective.
Below is a comparison of the goods and services in Applicant’s application
and registration, with items in the application which do not appear in the
registration underlined:4
Registration No. 3836648 Application Serial No. 85972976

Int. Cl. 9
Music sound recordings; music video
recordings; audio tapes, audio cassettes,
compact discs, motion picture films, video
cassettes and CD ROMs featuring music;
digital audio tape and video recorders;
computer game software for use with
personal computers, home video game
consoles used with televisions, and for
arcade-based video game consoles; video
cameras; cameras; photographic and
cinematographic cameras; apparatus for
recording, transmission, reproduction of
sound or images; photographic
transparencies, exposed photographic films;
batteries; encoded magnetic cards,
magnetically-encoded credit cards or debit
cards; spectacles, spectacle cases,
sunglasses; electronic arcade-type games
adapted for use with television receivers;
video game software; mouse pads; computer
screen savers software; downloadable
electronic publications in the nature of
magazines in the field of music

Int. Cl. 9
Apparatus and instruments for recording,
receiving, processing, reproducing or
transmitting sound or visual information or
recordings; stereo turntables, slipmats,
namely, elastomeric appliques for placement
onto electronic devices to prevent slipping,
headphones; audio speakers; radio
broadcasting receiving and transmitting
apparatus; telephone apparatus and
instruments; telephones, mobile telephones
and telephone handsets; power supply
adapters for use with telephones; battery
chargers for use with telephones; cases
adapted for mobile telephones; sunglasses;
spectacles, spectacle frames and cases;
sound and/or visual recordings featuring
music or videos featuring music, music
videos, concerts, interviews and
entertainment news; interactive sound or
visual recordings featuring music or videos
featuring music, music videos, concerts,
interviews and entertainment news; blank
electric sound or visual recording storage
media; juke boxes; computer games adapted
4 While the answer asserted the Morehouse defense without qualification, in response to
Opposer’s motion for summary judgment arguing that the Morehouse defense could not
apply to the five classes of goods (12, 18, 28, 30, and 32) in the opposed application which do
not appear in the registration, Applicant specifically withdrew the Morehouse defense
(Response to Motion, p. 11) with respect to International Classes 12, 18, 28, 30, and 32.
8

Opposition No. 91218136

for use with television receivers; video
games software and programs; coin or
counter operated video games; arcade
apparatus and games; computer game
programs and software; computer software
for music playback, music download, gaming
or database management; computers; data
processing equipment; USB sticks; mouse
pads; mice for computers; computer screen
saver software; downloadable publications
provided on-line from databases from the
Internet or from any other communications
network including wireless, cable or
satellite, namely, a magazine featuring
entertainment news; compact discs
featuring music; DVDs featuring music and
videos featuring music, music videos,
concerts, interviews and entertainment
news; carrying cases adapted for compact
discs; carrying cases adapted for
DVDs; video cameras; cameras;
photographic and cinematographic
apparatus and instruments, namely,
cameras; photographic transparencies,
exposed photographic films; downloadable
digital music; MP3 players; personal digital
assistants and other hand held electronic
devices; metronomes; downloadable
telephone ring tones; electronically encoded
magnetic cards and cards bearing machine
readable information; magnetically encoded
blank bank cards for issuance by a financial
institution; magnetically encoded credit
cards; magnetically encoded cheque cards;
magnetically encoded cash cards; blank
electronic smart cards; automatic vending
machines and mechanisms for coin operated
apparatus; batteries; digital holographic
images; digital holographic cards; digital
holograms, magnetically encoded credit
cards with holograms

Int. Cl. 16
Printed matter, namely, newspapers,
periodical publications, magazines, books in
the field of music; photographs, pictures,
prints; posters; greeting cards; postcards;
notepads; address books; scrapbooks;

Int. Cl. 16
Printed matter, namely, magazines in the
field of entertainment; printed publications,
namely, magazines in the field of
entertainment; books in the field of music
and entertainment; greeting cards, post
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Opposition No. 91218136

folders; catalogues in the field of music;
printed tickets; calendars; photographs
albums; diaries; postage stamps; protective
covers for postage stamps; stamp albums;
stickers; car stickers; decalcomanias; blank
cards; cardboard articles, namely, boxes;
stationery, pens, pencils, erasers, pencil
sharpeners, pencil cases, drawing rulers,
boxes for pens, book markers; drawing
materials for blackboards, artists' materials,
namely, brushes, pastels, pencils and pens;
printed instructional and teaching materials
in the field of music; paper gift bags, paper
carrier bags; envelopes; blackboards; printed
height charts
cards; picture cards; photographs, pictures,
prints, posters, stationery, pens, pencils,
erasers, pencil sharpeners, pencil
cases, staplers, staple removers, rulers,
boxes for pens, book markers, notepads;
address books; diaries; scrapbooks; albums
for photographs; catalogues in the field of
music; stickers; printed gift vouchers; gift
bags; carrier gift bags; calendars; artists'
materials, namely, pens and brushes; paint
brushes; decalcomanias; plastic materials
for packaging not included in other classes,
namely, bags; cheques and travelers
cheques; banking cards, other than encoded
or magnetic; credit cards, other than
encoded or magnetic

Int. Cl. 25
Articles of outer clothing, namely, coats and
jackets; articles of underclothing, namely,
undershirts, panties, shorts and briefs;
footwear; headwear; scarves; dressing
gowns; boxer shorts; socks; t-shirts, hats and
caps, jackets, pajamas, slippers; wristbands,
headbands, ties, articles of clothing for
babies and toddlers, namely, shirts and
shorts; footwear and headwear for babies
and toddlers

Int. Cl. 25
Clothing for men, women and children,
namely, t-shirts, tank tops, sweat
shirts, sweaters, jackets, hats, caps, visors,
head bands, scarves, shorts, socks and
casual footwear

Int. Cl. 41
Entertainment services, namely, sound
recording studios; entertainment services,
namely, providing video podcasts in the field
of music; entertainment in the nature of live
stage performances in the nature of musical
performances and concerts by an individual;
entertainment services, namely, providing
an on-going radio program in the field of
music and performing artists; entertainment
services, namely, cabarets; entertainment,
namely, production of stage shows;
production of video and/or sound recordings;
presentation, production and performance of
musical shows, concerts, radio and television
programs; production of video and
multimedia videos; audio or video recording

Int. Cl. 41
Entertainment in the nature of live
performances by a musical
artist; educational services, namely,
providing classes, seminars or workshops in
the field of music; production
and distribution services in the field of
sound and/or visual recordings and
entertainment programs, namely, motion
pictures, radio programs or videos in the
field of music; music library services; music
publishing services; recording studio
services; disk jockey services; provision of
information relating to music,
entertainment, games and events provided
on-line from a computer database, from the
Internet or any other communications
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Opposition No. 91218136

services; publishing of books, magazines;
music publishing; film distribution;
arranging and conducting of educational
seminars, conferences and exhibitions;
publication of books, magazines and other
texts
network including wireless, cable or
satellite; provision of non-downloadable
digital music from the Internet; provision of
non-downloadable digital music from MP3
websites; production, preparation,
presentation, distribution, and rental of
television and radio programs and films,
animated films and sound and/or visual
recordings; production of live entertainment
features in the nature of music
concerts; organization, production and
presentation of quiz shows, exhibitions for
entertainment purposes, sporting events,
shows in the nature of music concerts, road
shows, live staged events in the nature of
musical performances, theatrical
performances, concerts, live musical
performances and audience participation
events; provision of on-line non-
downloadable electronic publications,
namely, a magazine in the field of music;
electronic computer game services provided
from a computer database, the Internet or
any other communications network
including wireless, cable, satellite; advisory
and consultancy services related to the
aforementioned services

The presence of overlapping goods and services alone does not support the
application of the Morehouse defense where the opposed application also includes
goods and services which are different from those listed in the registration. La Fara
Importing Co. v. F. Lle de Cecco di Filippo Fara S. Martino S.p.A., 8 USPQ2d 1143,
1147 (TTAB 1988) (Morehouse defense inapplicable where “the identification of
goods in the application at issue is not only for alimentary pastes [listed in the prior
registration], but also includes a wide variety of additional items such as coffee,
sugar, rice, cakes and sauces, excluding cranberry sauce and applesauce.”). Accord
DC Comics Inc. v. Scholastic Magazines, Inc., 210 USPQ 299, 301 (TTAB 1980)
11
Opposition No. 91218136

(Morehouse defense inapplicable where “the goods set forth in the involved
applications cover goods such as educationally oriented magazines, records and tape
cassettes, which are not encompassed by the listing of goods in the registration.”).
Here, the opposed application includes many goods and services not included
in Applicant’s prior registration. Some of the goods and services in the application
may be, as Applicant contends, related to those listed in the registration, but this is
insufficient for the Morehouse defense to apply. Teledyne Technologies Inc. v.
Western Skyways Inc., 78 USPQ2d 1203, 1209 (TTAB 2006) (“it is clear that ‘aircraft
log books’ and ‘repair and maintenance services, namely, aircraft engine overhaul
and reconditioning services’ covered by respondent's prior registrations are related
to the goods, that is, ‘aircraft engines,’ listed in the registration petitioner seeks to
cancel. Nevertheless, the goods in the involved registration clearly are different
from the goods and services listed in the prior registrations.”); TBC Corp. v. Grand
Prix Ltd., 12 USPQ2d 1311, 1314 (TTAB 1989) (“it is clear that the goods in the five
registrations opposer relies upon for its prior registration defense are related to and
within the natural scope of expansion of a producer of the goods listed in the three
registrations applicant seeks to cancel. Nevertheless, the goods in the registration
are different.”).
With respect to the necessary relationship between the marks, the Board’s
primary reviewing court has held that the Morehouse defense requires that the
prior and proposed marks must “be essentially the same.” O-M Bread Inc. v. United
States Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995)
12
Opposition No. 91218136

(OLYMPIC and OLYMPIC KIDS are neither the same nor legally equivalent).
Accord Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1713 (TTAB
2010), aff'd mem, No. 2011-1052 (Fed. Cir. 2011) (“We find that the Morehouse
defense is not available to Brinkmann in this opposition because the registered
mark, MAGNUM MAX, is not substantially the same as that being applied for,
MAGNUM MAXFIRE. For purposes of the Morehouse defense, the two marks must
be ‘substantially identical,’ meaning that they are either literally identical or legally
equivalent.”).
Applicant’s Registration
No. 3836648
Applicant’s opposed Application
Serial No. 85972976

Far from substantial identity, the marks shown above have few identical
elements, and create different commercial impressions. The mark already
registered includes a black circle with an off-center white crescent and small white
circle, with a larger black oval protruding from the top of the black circle on one side
and a smaller black oval protruding on the other side. The mark in the application
includes a black circle with a centered white semicircle, two evenly placed white
ovals, and two identical black circles protruding symmetrically from the top of the
black circle. While both marks have a central black circle, differing portions of the
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Opposition No. 91218136

black circle are visible with the other different design elements. In addition, a
crescent is not a semicircle; one white circle is not equivalent to two white ovals;
and the shapes protruding from the top of the black circle are the same in color and
number but different in shape and position. The number and nature of the
differences between the marks precludes a finding that they are substantially the
same mark.
In comparing the marks and the goods and services in Applicant’s prior
registration and opposed application, there are no genuine disputes of material fact
that Applicant’s marks are not essentially the same, and are not applied to the
same goods and services. Accordingly, we find as a matter of law that the Morehouse
defense is not available to Applicant in this proceeding. In view thereof, Opposer’s
motion for summary judgment is GRANTED, and Applicant’s affirmative defense
(Par. 57) is stricken from the answer.
PROCEEDINGS RESUMED
Proceedings herein are resumed, and discovery is open.
Absent permission obtained by the Board as described above, the Board will
not allow discovery, and will not consider trial evidence, regarding activities
involving the parties’ marks outside the United States.
Inasmuch as Opposer stated in its motion that Opposer served its initial
disclosures the day before the due date for the discovery conference, it is not clear if
the discovery conference took place. If it did not take place, the parties are ordered
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Opposition No. 91218136

to conduct the conference within FOURTEEN DAYS of the mailing date of this
order.
If Applicant has not served its initial disclosures, Applicant is ordered to do
so within THIRTY DAYS of the mailing date of this order. Neither party may serve
discovery until the discovery conference takes place, and its initial disclosures have
been served.
Expert Disclosures Due 10/31/2015
Discovery Closes 11/30/2015
Plaintiff's Pretrial Disclosures 1/14/2016
Plaintiff's 30-day Trial Period Ends 2/28/2016
Defendant's Pretrial Disclosures 3/14/2016
Defendant's 30-day Trial Period Ends 4/28/2016
Plaintiff's Rebuttal Disclosures 5/13/2016
Plaintiff's 15-day Rebuttal Period Ends 6/12/2016

In each instance, a copy of the transcript of testimony together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
oral hearing will be set only upon request filed as provided by Trademark Rule
2.l29.
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