Disney Withdraws its Trademark Registration Applications for SEAL TEAM 6

Posted by | May 31, 2011 | General | No Comments

On May 18, I wrote about Disney’s applications to federally register the trademark SEAL TEAM 6 for (a) “clothing, footwear and headwear;” (b) “toys, games and playthings; gymnastic and sporting articles, (except clothing) hand-held units for playing electronic games other than those adapted for use with an external display screen or monitor; Christmas stockings; Christmas tree ornaments and decorations; snow globes;” and (c) “entertainment and education services.”  All three of these applications were expressly abandoned by Disney last Thursday, just two weeks after the Navy applied to register NAVY SEALS for “posters” and “clothing” and SEAL TEAM for “indicating membership in a(n) organization of the Department of the Navy that develops and executes military missions involving special operations strategy, doctrine and tactics.”  The Navy’s SEAL TEAM application relies in part on the prior registration of SEAL for “indicating membership in an organization of applicant that develops and execute military missions involving special operations strategy, doctrine and tactics.”  Although the Navy’s new applications are filed as In Use, neither contains specimens of use or a first use date.

The Guardian reported last week that Disney Spokesperson, Kevin Brockman, stated that Disney withdrew its trademark registration applications “in deference to the Navy’s application.”  No doubt the Navy’s fire power had something to do with Disney’s decision as well.  After all, how wise is it to step on the toes of the organization that killed Osama Bin Laden by shooting him in the face?  Not too wise, I surmise.

Apparently, Navy Spokesperson Amanda Greenberg states that the Navy already had rights to the SEAL trademark (see above), so it submitted the new applications to bolster its level of protection (even the unquestionably bad ass Navy Seals need protection when it comes to their trademarks!).  Greenberg is further quoted stating that “the Navy is fully committed to protecting its trademark rights as it pertains to this matter and is currently examining all legal options.”

Two applicants have since applied to federally register their SEAL TEAM 6 trademarks.  RESCO Instruments applied to register SEAL TEAM 6 for “chronographs as watches, dials for clock and watch making, straps for wrist watches, watch bands, watch cases, watch straps, watches, wristwatches on May 16, 2011.  On May 20, 2011 Justice is Done, LLC applied to register SEAL TEAM 6 for “commemorative coins; key rings of precious metals; cufflinks; jewelry; wall plaques made of precious metal.”  My presumption is that both of these applications will be denied unless the applicants have a licensing relationship with the Department of the Navy (and then I presume that the Navy would be the applicant, not its licensee).  It will be interesting to see how long before these applications also become dead, just like Osama Bin Laden.

The trademark search and clearance process is a vitally important first step when acquiring a new mark.  Smaller clients especially may be inclined to shy away from this expense at the outset, but even at several thousand dollars, it will be less expensive (and time consuming and embarrassing) than dispute resolution and/or abandonment of the mark down the road.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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