Duhaime's Law Dictionary

Common Law Trademark Definition:

Ownership of a mark used in commerce which is asserted because of use and not by the fact of registration.

Related Terms: Trademark

In Davis v Walt Disney, Justice Frank of the United States District Court had before him a claim against Walt Disney resulting from the film company's 2000 movie Up, Up, and Away, about a family of suburban superheroes who uncover and thwart the plot of the diabolical president of an environmental software company called Earth Protectors. The plaintiff operated under the company known as Earth Protector Licensing Corporation. That corporation had registered "Earth Protector" as a trademark but allowed the registration to lapse.

Justice Frank:

"A common-law trademark arises from the adoption and actual use of a word, phrase, logo, or other device to identify goods or services with a particular party. In order to prevail, the proponent of the trademark must demonstrate that the usage of the mark was deliberate and continuous, not sporadic, casual or transitory. A descriptive mark, as is at issue here, is the weakest protectable mark and requires proof that the mark has acquired secondary meaning. The primary inquiry in determining whether the mark has attained secondary meaning is whether the mark has become associated with a particular source in the consumer's mind."

Justice Frank found that since there was no likelihood of confusion between the Walt Disney fictional entity, and Mr. Davis' alleged common law trademark, the claim for trademark infringement was dismissed.


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