On Monday, Deadmau5 raised new sound and fury at the U.S. Trademark Office over Disney’s attempt to oppose his mark consisting of a caricature of a mouse head with black ears, black face, white eyes and white mouth. The new papers speak among other things, about what Disney has in store for the 75th anniversary of the classic 1940 animated film, Fantasia, and how upper brass at the company might be interfering with bookings at ABC’s late-night talk show hosted by Jimmy Kimmel.
The EDM star born Joel Zimmerman has been attempting to protect his turf with a registration that looks like “mau5head” logo, featured on album covers and worn on stage. The problem, according to Disney, is that “Applicant’s Mouse Ears Mark is nearly identical in appearance, connotation, and overall commercial impression to Disney’s Mouse Ears Marks.”
Disney doesn’t want any Mickey Mouse fans to be confused about the source of Deadmau5’s goods and services, especially when the musician is attempting to register his mark for everything from toys and backpacks to mayonnaise and walking sticks.
Last month, Disney got aggressive with a 171-page filing at the Trademark Office, which caused Deadmau5 to put out a slightly-offbeat tweet how Disney thought its customers stupid (though, as we pointed out then, trademark registrations inherently assume some consumer gullibility.)
Now, it’s Deadmau5’s time to give the Trademark Office some light reading material — or, rather, more than 1,000 pages when all of the exhibits are counted.
One of the more interesting aspects of Deadmau5’s response (here, minus exhibits) is how Disney has allegedly been willing to “collaborate with him on a number of projects,” including two of its most iconic properties. We’ve already covered how Deadmau5’s fight with Disney cost him a gig re-mixing the Star Wars theme for the Disney XD show Star Wars Rebel, premiering this month, and how Disney previously licensed his “Ghosts ‘n’ Stuff” song for a Star Wars video game. (Deadmau5 now says he wouldn’t ordinarily consider partnering with Disney but would have considered Star Wars Rebel to help resolve the trademark dispute.) The opposition reveals another project the two were discussing.
According to Deadmau5’s papers, Disney worked through a concert promotion company to approach him in October 2013 about “re-imagining” Fantasia for the film’s 75th anniversary, presumably next year. The musician includes as one of his exhibits (see below) a mock-up depicting Deadmau5 as the sorcerer’s apprentice instead of Mickey Mouse.
“The pitch involved deadmau5 creating and performing new original music at live Fantasia concerts at major venues around the world, including the Hollywood Bowl,” says Deadmau5’s answer. “The rationale given for selecting deadmau5 for this opportunity was that: ‘Deadmau5 is the most innovative musician of our time, and Disney the most successful entertainment brand to ever exist. Bringing these two visionaries together, with this particular franchise, provides an incredible opportunity that could touch millions of people around the world.’”
Deadmau5 sees Disney’s willingness to co-exist with him throughout the years as a point in his favor in the ongoing trademark battle, especially when the musician has been prominently lugging the “mau5head” nearly everywhere he goes. The goodwill between the parties, though, appears to have limits.
Turf-battling at the Trademark Office isn’t usually this exciting, but according to Deadmau5, the situation has become so heated that after Disney’s ABC division reached out to the artist last month to appear on Kimmel’s Halloween show, the “subject went pretty far up the chain,” whereupon the offer was rescinded with someone at Disney/ABC stating, “We have to stay away from [Deadmau5] until the matter is resolved.”
Disney hasn’t yet responded to a request for comment.
The company previously told THR that its vigorously protects trademark rights and that its opposition “is not about the use of the Deadmau5 costume.”
The dispute seems to be as much about Deadmau5’s attempt to register the mark for a truly wide array of goods like BMX bikes, pencil sharpeners, coffee extracts, Christmas tree decorations, mustard, noodles and alimentary pastas. Trademark registration requires a bona fide intention to use, and Deadmau5 points to his success in licensing his brand. Disney might believe there’s potential for some cross-over potential mix-up while Deadmau5’s papers authored by attorneys at Russ, August & Kabat state, “There is also no likelihood of confusion because, inter alia, there is substantial dissimilarity in the established trade channels used by Applicant and Opposer for their respective goods and services.”