United Trademark Holdings, Inc v. Disney Enterprises, Inc. ( 2022 )

Case: 21-1056 Document: 59 Page: 1 Filed: 02/24/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNITED TRADEMARK HOLDINGS, INC.,
Appellant
v.
DISNEY ENTERPRISES, INC.,
Appellee
______________________
2021-1056
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
91221648, 91224985.
______________________
Decided: February 24, 2022
______________________
ERIK PELTON, Erik M. Pelton & Associates, PLLC, Falls
Church, VA, argued for appellant.
LINDA K. MCLEOD, Kelly IP, LLP, Washington, DC, ar-
gued for appellee. Also represented by JASON JOYAL, DAVID
MICHAEL KELLY, I.
______________________
Before TARANTO, HUGHES, and STOLL, Circuit Judges.
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2 UNITED TRADEMARK HOLDINGS, INC v.
DISNEY ENTERPRISES, INC.
TARANTO, Circuit Judge.
United Trademark Holdings, Inc. applied to the Patent
and Trademark Office (“PTO”) to register as trademarks
TEEN TINKER BELL in standard characters and TEEN
TINK in stylized characters with a crown above the letters.
Disney Enterprises, Inc. (“Disney,” used here also to cover
related entities) opposed the registrations on the ground
that United’s marks were likely to cause confusion with
several of Disney’s registered marks, including a mark for
TINKER BELL in standard characters. The PTO’s Trade-
mark Trial and Appeal Board sustained Disney’s opposi-
tions and refused to register United’s marks. Disney
Enterprises, Inc. v. United Trademark Holdings, Inc., Op-
position Nos. 91221648, 91224985, 2020 WL 3076003(T.T.A.B. June 8, 2020) (Board Op.). We affirm.
I
A character named “Tinker Bell” originally appeared in
several works by J.M. Barrie, including: (1) the play Peter
Pan, first staged in 1904 and published in 1928, with
Tinker Bell depicted as a beam of light with musical bells
and chimes, and (2) the book Peter and Wendy, first pub-
lished in 1911, with Tinker Bell described as a “fairy girl
gowned in a skeleton leaf.” Board Op. at *3; see also J.A.
6028; J.A. 6047. In 1939, Disney acquired exclusive rights
to “make, reproduce, and exhibit animated cartoon motion
pictures and engage in merchandising activities related
thereto” based on Barrie’s Peter Pan-related works. Board
Op. at *3. In 1953, Disney released an animated film, Peter
Pan, which featured the Disney-developed version of
Tinker Bell as a major character. Id. at *3–4, *11; see also
J.A. 703–04. In the years since 1953, Disney has re-re-
leased the original film several times and has released ad-
ditional films in which Tinker Bell has appeared. Board
Op. at *11; J.A. 419.
While United asserts (and Disney has not disputed)
that, under copyright law, the Tinker Bell name and
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UNITED TRADEMARK HOLDINGS, INC v. 3
DISNEY ENTERPRISES, INC.
character from Barrie’s 1911 novel are already in the pub-
lic domain in the United States, and the same will be true
regarding the play beginning in 2023, United Br. 9 (citing
J.A. 6515), United has not contended that Disney’s Tinker
Bell character is in the public domain for copyright pur-
poses. As for trademark protection, which is what this case
involves, Disney has used TINKER BELL as a mark in con-
nection with dolls since 1994 and allegedly used TINK as a
mark in connection with dolls since 2007. Board Op. at
*11; J.A. 430–37. Among its many registered marks, Dis-
ney holds Registration No. 3,636,910, which is for TINKER
BELL, as a standard character mark, for various goods, in-
cluding dolls and mechanical toys. J.A. 2794–96. This
mark is listed on the Principal Register without a claim of
acquired distinctiveness under Lanham Act § 2(f), 15
U.S.C. § 1052(f). Id.; see also Board Op. at *8.
In 2013, United launched its Fairy Tale High collection
of dolls, depicting “public domain characters from well-
known fairy tales, including Snow White, Rapunzel, Belle,
Sleeping Beauty, Little Mermaid, Alice in Wonderland,
Tinker Bell and Cinderella” as teenagers. Board Op. at *4.
United asserts that, for the Tinker Bell dolls and others, it
retained some crucial defining elements of the public do-
main character but added features to change the tradi-
tional presentation, e.g., non-traditional colored streaks in
the dolls’ hair, funky leggings, colorful makeup, and fash-
ion-forward accessories. Id. United asserts that it has cre-
ated its own version of Barrie’s character, much as Disney
did decades ago. Id.On January 28, 2013, United filed an application, pur-
suant to Lanham Act § 1(a), 15 U.S.C. § 1051(a), to register
TEEN TINK, stylized as shown below, without claiming
color.
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4 UNITED TRADEMARK HOLDINGS, INC v.
DISNEY ENTERPRISES, INC.
J.A. 7056–62 (Application Ser. No. 85/833,851). United’s
application identified dolls in International Class 28—cov-
ering any dolls, not just those with the above-enumerated
features—and claimed actual use of the mark in commerce
in connection with the identified goods since at least Janu-
ary 1, 2013. J.A. 7057. On February 9, 2015, the PTO ap-
proved the mark for publication on the Principal Register,
and the mark was published for opposition on March 24,
2015. J.A. 7050–51. Meanwhile, on February 12, 2015,
United filed a second application, pursuant to Lanham Act
§ 1(b), 15 U.S.C. § 1051(b), to register TEEN TINKER
BELL in standard characters. J.A. 7067–72 (Application
Ser. No. 86/533,016). The application identified dolls in In-
ternational Class 28—again, any dolls—and claimed a
bona fide intent to use the mark in commerce in connection
with the identified goods. J.A. 7070. On March 28, 2015,
the PTO approved the mark for publication on the Princi-
pal Register, and the mark was published for opposition on
May 26, 2015. J.A. 7063–64.
On April 23, 2015, Disney opposed the registration of
United’s TEEN TINK mark under Lanham Act § 2(d), 15
U.S.C. § 1052(d), on the ground of Disney’s priority and the
likelihood of confusion with approximately 30 Disney reg-
istered marks (as well as prior pre-registration use)—in-
cluding Registration No. 3,636,910 for TINKER BELL.
J.A. 41–45 (Opposition No. 91221648); J.A. 50–73 (First
Amended Notice of Opposition, filed on Feb. 9, 2016). On
November 23, 2015, Disney did the same for United’s
TEEN TINKER BELL mark. J.A. 46–49 (Opposition
No. 91224985); J.A. 352–74 (First Amended Notice of Op-
position, filed on Dec. 14, 2015). In response, United de-
nied the crucial allegations in the oppositions, but it did not
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UNITED TRADEMARK HOLDINGS, INC v. 5
DISNEY ENTERPRISES, INC.
file counterclaims to cancel any of Disney’s pleaded regis-
trations. J.A. 384–91 (Answer to Amended Notice of Oppo-
sition, filed on Dec. 17, 2015, for the TEEN TINKER BELL
mark); J.A. 376–83 (Answer to Amended Notice of Opposi-
tion, filed on June 2, 2016, for the TEEN TINK mark); see
also Board Op. at *1, *8. The oppositions were consolidated
in March 2016. Board Op. at n.1.
On June 8, 2020, the Board issued its decision. After
determining that Disney had standing to maintain its op-
positions and that Disney’s pleaded registrations had pri-
ority over United’s, the Board found it sufficient to use the
TINKER BELL mark in Disney’s Registration
No. 3,636,910 for its likelihood-of-confusion analysis, for
which it followed the multi-factor approach set forth in In
re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (CCPA
1973). Id. at *4–6. The Board first found that the goods
identified in the relevant registrations are “identical” and
that, as a result, it “must presume that the channels of
trade and classes of purchasers for these goods are the
same.” Id. at *6. The Board then found that “[c]onsidering
both inherent and commercial strength,” Disney’s mark,
“as applied to dolls, is entitled to an ordinary scope of pro-
tection on the spectrum of ‘very strong to very weak.’” Id.
at *7–13 (citation omitted). Next, the Board found both of
United’s marks “to be more similar than dissimilar [to Dis-
ney’s], and to convey similar commercial impressions over-
all.” Id. at *13–15. Finally, the Board found that the
relevant market would include “ordinary consumers who
may purchase dolls on impulse” and that consumers “are
accustomed to encounter[ing] [Disney’s] mark on a wide va-
riety of goods and services” and “are likely to view
[United’s] teen-themed dolls as additional products from
[Disney’s] line of products and services.” Id. at *16–17.
With those factors all favoring Disney, and all other factors
on which evidence was presented neutral, id. at *17–21,
the Board sustained the oppositions “on the ground of pri-
ority and likelihood of confusion with the mark in
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6 UNITED TRADEMARK HOLDINGS, INC v.
DISNEY ENTERPRISES, INC.
Registration No. 3,636,910” and refused registration of
both of United’s marks, id. at *21.
United timely appeals. This court has jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(B).
II
On appeal, United challenges the Board’s analysis re-
garding several DuPont factors, specifically: (1) the factors
that assess the strength, and the attendant scope of protec-
tion, of Disney’s TINKER BELL mark; and (2) the similar-
ity of United and Disney’s marks. The Board’s conclusion
regarding likelihood of confusion is a question of law that
we review de novo. QuikTrip West, Inc. v. Weigel Stores,
Inc., 984 F.3d 1031, 1034 (Fed. Cir. 2021). We review the
Board’s factual findings as to each DuPont factor for sub-
stantial-evidence support. Id.; see also Stratus Networks,
Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998
(Fed. Cir. 2020); In re Chatam Int’l Inc., 380 F.3d 1340,
1342 (Fed. Cir. 2004). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence as adequate to support the finding. Juice
Generation, Inc. v. GS Enters., LLC, 794 F.3d 1334, 1338
(Fed. Cir. 2015); see also In re NTP, Inc., 654 F.3d 1279,
1292 (Fed. Cir. 2011) (“This court does not reweigh evi-
dence on appeal, but rather determines whether substan-
tial evidence supports the Board’s fact findings.”). Under
this standard, we conclude that substantial evidence sup-
ports the Board’s findings on the contested factors. In this
case, once we affirm those findings, we have been pre-
sented no persuasive argument for drawing any conclusion
different from the Board’s on the ultimate question of like-
lihood of confusion or for otherwise reversing the Board’s
denial of registration.
A
United challenges the Board’s findings related to the
strength of Disney’s registered mark—specifically, the
findings on the fifth DuPont factor (“[t]he fame of the prior
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DISNEY ENTERPRISES, INC.
mark”) and the sixth DuPont factor (“[t]he number and na-
ture of similar marks in use on similar goods”). DuPont,
476 F.2d at 1361. Fame in the context of likelihood of con-
fusion is assessed on a spectrum from very strong to very
weak, and both the inherent or conceptual strength of the
mark and the commercial or marketplace strength of the
mark are to be considered. Joseph Phelps Vineyards, LLC
v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir.
2017); In re Chippendales USA, Inc., 622 F.3d 1346, 1353–
54 (Fed. Cir. 2010); see also 2 J. Thomas McCarthy, McCar-
thy on Trademarks and Unfair Competition § 11:80 (5th ed.
Mar. 2022 Update) (hereinafter McCarthy). Evidence of
third-party use of similar marks on similar goods can show
that a mark is relatively weak. See Jack Wolfskin
Ausrustung Fur Draussen GmbH v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 1373–74 (Fed. Cir. 2015);
Juice Generation, 794 F.3d at 1338–39; see also 4 McCarthy
§ 24:43.
Here, substantial evidence supports the Board’s deter-
mination that Disney’s mark was entitled to an ordinary
scope of protection. Board Op. at *13. United may be cor-
rect that Disney’s TINKER BELL mark is conceptually
weak, albeit inherently distinctive, as the Board itself
found. Id. at *10 (“On this record, we find [Disney’s] inher-
ently distinctive TINKER BELL mark to be highly sugges-
tive of the dolls identified thereby, primarily inasmuch as
the dolls depict the character TINKER BELL.”). But the
Board could reasonably find that the mark’s commercial
strength was strong enough to counteract any conceptual
weakness, allowing the mark to be given an ordinary scope
of protection. See Chippendales, 622 F.3d at 1353–54;
Board Op. at *11 (finding Disney has used TINKER BELL
on dolls since 1994—a finding uncontested on appeal by
United); id. at *9–10, *12 (finding no evidence of wide-
spread third-party registrations or use of TINKER BELL
or TINK, or similar marks, in connection with dolls and re-
lated toys—another finding uncontested on appeal by
United); see also, e.g., J.A. 438–43 (uncontextualized
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8 UNITED TRADEMARK HOLDINGS, INC v.
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evidence of consumer exposure to Disney’s Tinker Bell-re-
lated marks).
In response to the evidence of commercial strength,
United points to the Board’s finding that Disney had not
proven its TINKER BELL mark to be famous for dolls spe-
cifically. Board Op. at *12 (citing Bose Corp. v. QSC Audio
Prods., Inc., 293 F.3d 1367, 1375 (Fed. Cir. 2002)). We need
not decide whether a focus on dolls specifically for the
fame-strength analysis is appropriate. See Recot, Inc. v.
Becton, 214 F.3d 1322, 1327–28 (Fed. Cir. 2000); 4 McCar-
thy § 24:43. It is sufficient here that a mark does not have
to be famous to be commercially strong. See FocusVision
Worldwide Inc. v. Information Builders, Inc., 859 F. App’x
573, 577–78 (Fed. Cir. 2021); see also United Reply Br. 5
(conceding this point). And the Board clearly found com-
mercial strength sufficient to overcome any conceptual
weakness, with sufficient support in the evidence. We af-
firm the Board’s grant of an ordinary scope of protection to
Disney’s TINKER BELL mark.
B
The first DuPont factor concerns “[t]he similarity or
dissimilarity of the marks in their entireties as to appear-
ance, sound, connotation and commercial impression.”
DuPont, 476 F.2d at 1361. The degree of similarity can
then be significant in the overall assessment of likelihood
of confusion based on consideration of all the DuPont fac-
tors. For example, “[a]s a mark’s fame [or strength] in-
creases, the [Lanham] Act’s tolerance for similarities in
competing marks falls.” Kenner Parker Toys Inc. v. Rose
Art Indus., Inc., 963 F.2d 350, 353 (Fed. Cir. 1992); see also
Juice Generation, 794 F.3d at 1338–39 (“The weaker an op-
poser’s mark, the closer an applicant’s mark can come with-
out causing a likelihood of confusion . . . .”). At the same
time, “[w]hen marks would appear on virtually identical
goods or services, the degree of similarity necessary to sup-
port a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877
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DISNEY ENTERPRISES, INC.
(Fed. Cir. 1992). Here, substantial evidence supports the
Board’s determination of similarity of both of United’s
marks to Disney’s TINKER BELL mark—especially since
Disney’s mark was properly accorded ordinary scope, see
supra Section II.A, and the marks would both appear on
dolls, see Board Op. at *6 (not contested on appeal).
1
United’s TEEN TINKER BELL mark differs from Dis-
ney’s TINKER BELL mark (both in standard characters)
only in the addition of TEEN in front of TINKER BELL.
As United’s mark encompasses Disney’s, it was reasonable
for the Board to find that the two marks are similar in
sound and appearance. See Board Op. at *13. It was like-
wise reasonable for the Board to find that the two marks
have similar connotations and give similar commercial im-
pressions. As the Board noted, United provided no eviden-
tiary support for its theory that Disney’s TINKER BELL
mark evokes for consumers the public domain Tinker Bell
character, instead of the version associated with Disney for
decades. Id. at *14. As a result, it was reasonable for the
Board to conclude that both United’s and Disney’s marks
would connote Disney’s version of the Tinker Bell charac-
ter, with United’s mark connoting Disney’s Tinker Bell
character specifically in her adolescent years. Id. Even if
the ages suggested by TINKER BELL and TEEN TINKER
BELL might be viewed as different, United Br. 22–23, the
Board could reasonably find that the evidence did not es-
tablish a difference that would undermine the common as-
sociation with Disney’s Tinker Bell character or, therefore,
defeat the overall similarity of the marks. We note that
United clarified at oral argument in this court that it was
not contending that it had established such a difference
based on its TEEN TINKER BELL being part of its TEEN
[CHARACTER NAME] collection of marks. Oral Arg. at
10:00–31.
United suggests that the addition of the single word
TEEN (especially as the first word) should suffice to
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10 UNITED TRADEMARK HOLDINGS, INC v.
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prevent a finding of similar marks. But while sometimes
the first word can be of special importance, see, e.g., Palm
Bay Imports, Inc. v. Veuve Cliquot Ponsardin Maison
Fondee en 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) (ana-
lyzing VEUVE CLICQUOT versus VEUVE ROYALE);
Century 21 Real Estate, 970 F.2d at 876 (analyzing
CENTURY 21 and CENTURY LIFE OF AMERICA), the
significance of a first word depends on the particular con-
text. Here, the Board had ample reason to find similarity
despite the first word of United’s mark. The lead-word
TEEN in United’s mark is a descriptive or suggestive ad-
jective that merely qualifies and characterizes the rest of
United’s mark, which is identical to Disney’s. Board Op. at
*13; see also J.A. 2756–78, 3733–873 (various pieces of evi-
dence showing “teen” used to describe “dolls”). And the re-
mainder of the mark was sufficiently shown to connote
Disney’s character distinctively, not the public domain
character, and to not be “subject to widespread third-party
use.” Board Op. at *12, *14.
This case is therefore materially different from
Citigroup Inc. v. Capital City Bank Group, Inc., where we
affirmed the Board’s finding of no likelihood of confusion
between CAPTIAL CITY BANK and CITIBANK, in part
because of the distinctive spelling of CITI and because
“third-party usage of marks ending in ‘City Bank’ suggests
that the public is sensitive to differences in the first word
of the name of a bank.” 637 F.3d 1344, 1349–50, 1352 (Fed.
Cir. 2011). This case is also materially different from In re
Hearst Corp. for substantially the same reasons. 982 F.2d
493 (Fed. Cir. 1992). In Hearst, we reversed the Board’s
refusal to register the mark VARGA GIRL for calendars,
which the Board found was likely to be confused with the
extant mark VARGAS for calendars (both of which were
related to drawings by the same artist, Alberto Vargas). Id.at 493–94. We held that, even though GIRL was merely
descriptive, “[t]he appearance, sound, sight, and commer-
cial impression of VARGA GIRL derive significant contri-
bution from the component ‘girl,’” such that the two marks
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DISNEY ENTERPRISES, INC.
were not likely to be confused. Id. at 494. As Hearst rec-
ognizes, these types of determinations are heavily fact de-
pendent, see id. at 494 n.2, and here the added component
TEEN is not just descriptive or suggestive, it is an adjective
used such that it reinforces and directs emphasis to the rest
of the mark.
United notes the Board’s decision in an ex parte pro-
ceeding, In re United Trademark Holdings, Inc., Serial
No. 85706133, 2014 WL 5463042 (T.T.A.B. Oct. 9, 2014),
concerning another of United’s applications for registra-
tion. United Br. 23–24. That Board decision, besides not
being precedent for us, involved materially different facts
from those present here. There, without Disney’s partici-
pation, the Board found ZOMBIE CINDERELLA and
WALT DISNEY’S CINDERELLA to leave different impres-
sions because “ZOMBIE CINDERELLA creates a ‘cognitive
dissonance,’ involving an uneasy mixture of innocence and
horror,” whereas WALT DISNEY’S CINDERELLA “cre-
ates an impression of prettiness and goodness.” Id. at *6–
8. No such cognitive dissonance is introduced by prepend-
ing TEEN to TINKER BELL. The Board in the ZOMBIE
CINDERELLA proceeding also found CINDERELLA itself
not to be a strong source identifier for Disney, given use of
the name by many others over the years. Id. at *4–6. In
the present case, given quite different marketplace facts,
the Board found TINKER BELL a commercially strong
source identifier for Disney. Board Op. at *8, *12.
2
We also affirm the Board’s key determinations regard-
ing United’s TEEN TINK mark. Because the rights asso-
ciated with a mark in standard characters (like Disney’s
TINKER BELL registered mark) reside in the wording and
not in any particular display, the Board properly undertook
the similarity comparison with TEEN TINK by considering
Disney’s TINKER BELL mark as if displayed in the font,
style, and size found in United’s TEEN TINK application.
See In re Viterra Inc., 671 F.3d 1358, 1363 (Fed. Cir. 2012).
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12 UNITED TRADEMARK HOLDINGS, INC v.
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As a result, the differences between Disney’s TINKER
BELL mark and United’s TEEN TINK mark amount to:
(1) the use of TEEN; (2) the contraction of TINKER BELL
to TINK; and (3) the crown placed above TEEN TINK. But
none of those differences, even considered together as a
whole, undermine the reasonableness of the Board’s find-
ing of similarity.
First, for the reasons already discussed, the Board per-
missibly determined that the addition of TEEN does not
significantly alter the appearance, sound, connotation, and
commercial impression of United’s mark as compared to
Disney’s mark. See supra Section II.B.1. Second, the
Board permissibly determined that the contraction of
TINKER BELL to TINK also did not effect a material
change, noting that Tink has been commonly used as a
nickname for Tinker Bell since Barrie’s works. Board Op.
at *14; see also J.A. 55–58 (Disney’s evidence of its own use
of the nickname Tink). Finally, the Board permissibly de-
termined that the crown in United’s mark did not call for a
different result, noting that it is small and less significant
than the verbal portions of the mark, working to “essen-
tially creat[e] a frame for the wording and draw[] addi-
tional attention thereto.” Board Op. at *15. Based on this
evidence, even if United is correct that the nickname TINK
strengthens the adolescent impression, and the crown adds
the impression of royalty, see United Br. 20, 22, the Board
nevertheless could reasonably determine that the marks,
on the whole, are similar.
C
United does not present any argument for why there is
no likelihood of confusion, as a matter of law, if, as we have
concluded, the Board’s findings on the contested DuPont
factors should be affirmed. United does contend that we
should be wary of “ruling for Disney in this case,” as it
amounts to letting Disney “prolong its copyrights in a fic-
tional, public domain character” through trademark law—
and, in turn, prevents United from building on the public
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DISNEY ENTERPRISES, INC.
domain to create its own version of the Tinker Bell charac-
ter. United Br. 24–26. But this is not an argument about
the application of the ordinary Lanham Act standard of
likelihood of confusion. It is a suggestion that the ordinary
statutory standard should be displaced. We see no ade-
quate basis for adopting this suggestion here.
United has failed to explain how its copyright-rooted
argument could properly lead to our disturbing the Board
decision here. Because United asserted no counterclaims
against Disney’s marks, the only decision before us is the
Board’s refusal to register United’s marks, which also in-
clude the name of a public domain character. United’s con-
cern with extension of copyright via trademark protection
thus would point to affirming the Board’s denial of regis-
tration here. And to the extent that United invokes this
concern to argue that trademarks referring to public-do-
main character names “must be inherently weaker” under
the DuPont factor 4 analysis, Oral Arg. at 27:02–28, it has
not explained how the weakness could go beyond the con-
ceptual-strength component. But such an approach would
not have changed the outcome here, because the Board al-
ready found Disney’s mark to be conceptually weak—then
permissibly found that Disney’s mark is commercially
strong enough to overcome such conceptual weakness. See
supra Section II.A.
Moreover, given these findings, United has not shown
that Disney’s trademark protection in this particular mat-
ter constitutes a “‘misuse or overextension’ of trademark
and related protections into areas traditionally occu-
pied . . . by copyright.” Dastar Corp. v. Twentieth Century
Fox Film Corp., 539 U.S. 23, 34 (2003) (quoting TrafFix De-
vices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 19
(2001)). Copyright and trademark law have not been
treated as “mutually exclusive” in these circumstances:
The fact that a copyrightable character or design
has fallen into the public domain should not pre-
clude protection under the trademark laws so long
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14 UNITED TRADEMARK HOLDINGS, INC v.
DISNEY ENTERPRISES, INC.
as it is shown to have acquired independent trade-
mark significance, identifying in some way the
source or sponsorship of the goods. . . . A character
deemed an artistic creation deserving copyright
protection . . . may also serve to identify the crea-
tor, thus meriting protection under theories of
trademark or unfair competition . . . . Indeed, be-
cause of their special value in distinguishing goods
and services, names and pictorial representations
of characters are often registered as trademarks
under the Lanham Act.
Frederick Warne & Co. v. Book Sales Inc., 481 F. Supp.
1191, 1196–97 (S.D.N.Y. 1979) (Sofaer, J.) (citations omit-
ted); see also Munhwa Broad. Corp. v. Solafide, Inc.,
No. 07-699, 2007 WL 2667451, at *4 (C.D. Cal. 2007); Wyatt
Earp Enters., Inc. v. Sackman, Inc., 157 F. Supp. 621, 624–
25 (S.D.N.Y. 1958); 1 McCarthy § 6:5 & n.10. United itself
recognizes that “creative works can be protected as trade-
marks when they identify the origin of the producer of ser-
vices or tangible goods,” United Br. 25, and it has not
explained how Disney’s use of its TINKER BELL mark—
found still to be a source-identifier for Disney, Board Op.
at *8, *12—is a misuse or extension of a trademark.
III
For the foregoing reasons, we affirm the Board’s deci-
sion refusing to register United’s marks.
AFFIRMED