When Can I Use the Mouse?

So: When can I use an image of Mickey Mouse® in my advertising?

Never: You’ll never be able to use an image of Mickey Mouse in your advertising.

Really?: Never is a very long time.

Okay: You’ll be able to use Mickey Mouse when Disney® stops using Mickey Mouse and then all the kids who were alive when Disney was using Mickey Mouse have grown old and died. And their kids, too. And maybe their grandkids.

But why?: At some point the copyright will run out, won’t it?

Hahaha: Yeah, someday the copyright will run out on Steamboat Willie, but that has nothing to do with what you asked.

But: Why not?

Because: Copyrights run out but trademarks never die, unless the trademark owner stops using the trademark and it fades from the public’s memory as a trademark. Hence, my comment about grandkids.

Hmmm: My ad is very funny. Maybe it will pass as parody.

Fat chance: Parody’s allowed only when the interests of free speech outweigh the interests of the trademark owner. That’s almost never true with advertising, which traditionally has very low free-speech interests.

But: That doesn’t seem fair to me.

OK: Think about it this way. Disney has spent decades and millions of dollars promoting its goods and services using the mouse. Why shouldn’t they get the full benefit of their investment? Why should you be allowed to piggy-back on their brand recognition to sell your stuff?

Well: When you put it that way . . .

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Trademark Graveyard

Trademark rights are born when someone starts using a trademark to sell stuff: The minute you offer CRYPT brand breath mints for sale, you start to have “common law” trademark rights in CRYPT for breath mints.

You can expand and strengthen your rights by registering the trademark.

Unlike patents and copyrights, trademark rights have the ability to live forever, but they can die.

What happens to common law rights?

What happens to rights from the registration?

Genericide DEAD DEAD
Owner stops using the trademark to sell stuff Die eventually when the trademark fades from consumers’ memory. Die when owner is unable to renew the registration. (In order to renew, you still have to be using the trademark.)
Registration expires. Live on and can be used to get another registration. DEAD

 

1024px-Standardgasstation.jpgWhen companies change their names, they often try to keep the rights to the old name alive just as a precaution against someone else’s using it.

Chevron® continues to operate a few stations under the STANDARD OIL® trademark.

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In 1991 Kentucky Fried Chicken® changed its name to KFC®, but they still use the full name sometimes.

International Harvester switched to Navistar® in 1985, but it defended the old mark in an opposition as recently as 2007.

Dunkin’ Donuts® is experimenting with Dunkin’®. If that works for them, I wonder if they’ll let the rights to the full name die.

 

 

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Photo of tombstone © 2009 Jo Naylor modified by Michele Berdinis under Attribution 2.0 Generic.

Photo of Standard Oil®/Chevron® station © 2009 Coolceasar. Used with permission under GNU Free Documentation License.

Photo of Kentucky Fried Chicken® door handle is © 2014 Mike Mozart. Used with permission under Creative Commons Attribution License 2.0.