A trademark troll is not something out of a Disney story but a real life villain. Disney is accusing a company of acting in bad faith and committing fraud to register a trademark for the name of its newest princess, Moana.
As early as October 2013, Disney began pre-release publicity for its new animated film, Moana. Moana is Disney’s first Polynesian princess and the film will follow the journey of a spirited teenager as she sails the Pacific Ocean to complete her “ancestor’s quest”. The name “Moana” can be translated as a large body of water but is a common name. The film is set for release in November 2016 and features Dwayne “The Rock” Johnson. While Disney was quick to start the press for the movie, it wasn’t quick to file for the trademark registrations.
In October 2014, a company out of Florida called Epic Stone and/or Epicstone Group, Inc. filed a trademark registration for THE MOANA mark to cover action figures, toys and a whole bunch of other items. This is an intent to use mark, meaning any products bearing the name are not yet being released. About a month later, Disney started filing its trademark registrations for DISNEY MOANA for similar classes.
In September 2015, Epic Stone’s mark was published for opposition and that’s when this battle started getting ugly. In its opposition papers, Disney claimed that Epic Stone is acting in “a pattern of bad faith” for filing applications to marks that are identical or nearly identical to well-known third-party marks for films, television shows, books and characters. Epic Stone, and its related companies, has filed such marks as THE UGLY BETTY, THE ALF, THE INDEPENDENCE DAY and THE MILLION DOLLAR MAN. Essentially, Disney is calling this applicant a trademark troll that intends to cash in on the closeness of the mark to either sell products with the same name or to sell the mark to other parties. Disney alleges that Epic Stone has no bona fide intent to ever use the mark and is just trading-off of the goodwill associated with Disney’s use of the name. Disney then flat out accuses Epic Stone of committing fraud on the Trademark Office claiming that Epic Stone knew of Disney’s use of the mark and lied to the Trademark Office claiming it didn’t. Ouch.
Oh, the fun doesn’t end here as Epic Stone struck back. Last week, Epic Stone filed a request for an extension of time to oppose the DISNEY MOANA registrations. So it appears that Epic Stone is now going to fight registration of the Disney’s marks. So, in essence, we have dueling trademark registrations for the MOANA mark. The Trademark Office may deny both, allow both or allow one over the other. Safe bet is on Disney winning the duel.
This fight is getting dirty and it may lead to not only trademark oppositions but lawsuits. Disney hopes this battle will have a fairy tale ending for MOANA.
*Read more about Disney’s legal battles here. *
TROLL