News sources are reporting that Disney‘s long running challenge to the use of ‘mouse ears’ by deadmau5, a world famous electronic music DJ, has been settled. The dispute started when deadmau5 applied to register his stage mask as a trademark.

Trademark protection is primarily concerned with avoiding consumer confusion. It aims to protect consumers who might, through mistake or deception, be tricked into purchasing a product or service from one source, believing it to be associated with another more recognizable source. Trademark protection is also specific to the categories of goods or services actually being provided. As such, more than once company may register a particular mark (that mark may be a name, catchphrase, logo, etc.) as long as they use the marks for different, non-conflicting types of goods or services. Factors that are considered in such an analysis would include:

• the strength of the mark;
• the proximity of the goods;
• the similarity of the marks;
• evidence of actual confusion;
• the similarity of marketing channels used;
• the degree of caution exercised by the typical purchaser;
• the defendant’s intent.

For example, Delta is recognizable separately as both an airline brand and brand of faucets. Consumers are not likely to confuse the two.  Sometimes, the goods are more similar but the factors suggest consumers are not likely to be confused. Here, we have Domino – separate brands of household sugar and pizza; and, Hershey – used separately for chocolate products and ice cream.

In this case, although the general silhouette of the deadmau5 mask is similar to Disney’s Micky Mouse-associated mouse ears, the edgy, purposefully disturbing details of the deadmau5 mask make it unlikely to be confused with the more wholesome, mass-market appeal of Disney’s offerings.  To be clear, there has been no judgment analyzing the likelihood of confusion. Instead, the parties have mutually agreed to settlement terms, and likely for very practical reasons that will support their respective business interests.

If you are concerned that your mark is being infringed or are considering the likelihood that a mark you’re considering may infringe an existing mark, contact Zak Shusterman to arrange a consultation.