What You Can Learn About Trademark Infringement from the Walt Disney Company Involving Phrases

If you are the creative type, you have probably wondered about protecting your work from poaching by individuals and companies. Perhaps you already have a trademark or copyright for some of your work. If this is the case, and you feel a sense of confidence that your intellectual property is protected, this story about Disney and one of its trademarks is for you. Even if you have trademark or copyright protection, other creative people and companies may believe they have a case for challenging your intellectual property protection. There is always a need to be vigilant and proactive despite the legal protections you may have.

The Walt Disney Company is no stranger to intellectual property. Disney currently has over 6,000 trademarks, 1,728 patent grants, and 1,081 patent applications. A significant number of these trademarks protect the beloved characters of Disney. But lately, Disney has found itself in the middle of a media firestorm over the phrase Hakuna Matata. This was made famous in the U.S. by the Lion King Movie, first released in 1994. Disney is releasing a live version of the film later this year, and the re-release of the film has sparked controversy.

Don’t Take a Risk – Protect Your Creative Work with a Copyright or Trademark

Intellectual property legal mechanisms like trademarks and copyrights help businesses and creative people protect their creative output. If you are in a situation where you wish to protect a trademark or copyright, an intellectual property attorney can walk you through the process of securing your rights. The intellectual property attorneys at Kilgore & Kilgore can explain how to monitor potential infringement actions and the legal steps you can take to protect your creative works. By having an experienced intellectual property attorney on your side, you can gain peace of mind knowing that you, your company and your brand are protected. Don’t take a risk. To read more on this topic, click this link Intellectual Property Information.

The Original Trademark for Hakuna Matata

When Disney first released the Lion King, one of the more popular songs in the movie was named Hakuna Matata. It was originally composed by Elton John with lyrics written by Tim Rice. The phrase Hakuna Matata means no problems or no worries in Swahili. The song and phrase became popular in the U.S. and beyond after the success of the movie.

Disney filed for a trademark on the phrase Hakuna Matata in 1994 with the U.S Patent and Trademark Office, and the mark became registered in 2003. The trademark prevents the saying from being used on clothing, hats, or footgear resembling Disney’s The Lion King. The phrase itself can continue to be used in conversation or elsewhere, as long as the words aren’t being used on something that looks like a Disney knock-off.

The Online Petition Asking Disney to Relinquish Its Trademark

With the new Lion King movie coming out this summer, a controversy has emerged over Disney’s trademark. Zimbabwean activist Shelton Mpala started on an online petition requesting that Disney relinquish its 16-year mark. As of the writing of this article, over 183,000 signatures have been collected. The petition alleges that Disney—and other corporations or individuals—should not be allowed to trademark languages, terms or phrases they didn’t invent. In a CNN interview, Mpala stated he started the petition to draw attention to the appropriation of African culture and the importance of protecting that heritage, identity and culture from being exploited for financial gain by third parties. Is this controversy valid or does it emanate from a misunderstanding of intellectual property law?

You Can Trademark a Quote or Saying

According to the U. S. Patent and Trademark Office, a trademark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods and services of one seller or provider from those of others, and to indicate the source of the goods and services. However, a trademark offers protection only for the use of that quote or saying in connection with a product or service provided. In other words, a trademark protects your exclusive right to profit from using your quote or saying through the sale of your products or services. A trademarked quote or saying doesn’t prevent people from using the phrase. Thus, the trademark holder maintains confidence that another company or individual can’t offer a competing product or service that would be confused with the holder’s product or service.

An experienced intellectual property attorney can help you confirm that your expression is available for trademark filing. And can check the U. S. Patent and Trademark Office to make sure your phrase is available to trademark. If you wish to discuss a trademark or copyright issue with an experienced intellectual property attorney, click here Contact Kilgore & Kilgore, fill and submit the form to get the conversation started.

When you trademark a phrase, you’re not preventing others from using the phrase only as it relates to your products and services. For example, some of the words and images that Disney has trademarked include Toy Story, It’s a Small World, Disney Villains, and High School Musical. Disney didn’t have to invent these phrases or, for that matter, Hakuna Matata, to trademark it. However, Disney did have to specify a scope for the trademark, such as adding descriptors to the phrase or confirming that consumers would need to identify the phrase with a Disney product, like the Lion King movie. A generic saying or phrase can’t be trademarked.

Different Types of Trademarks Are Available for Different Situations

There are five categories of trademarks available for you to use, based upon your purpose. You’ll want to understand the differences between the trademarks available so you can achieve the utmost and the correct protection for your quote or saying. The more distinctive your mark or saying, the more protection the trademark should carry. The five types of trademarks are:

  • Generic Trademark: To qualify for a generic trademark, you should include in the application specifics such as descriptions of the characteristics of your product. Without any description, you can’t be eligible for a generic trademark.
  • Descriptive Trademark: To qualify for a descriptive trademark, consumers in your market should recognize your trademark and identify it with your brand. If you cannot prove this to this true, you may not qualify for this type of trademark until your mark has been active in its marketplace for a while.
  • Suggestive Trademark: To qualify for a suggestive trademark, the consumer must use his or her imagination to determine what you’re selling. For example, Jaguar and AIRBUS are two suggestive marks where the consumer must think about and decide upon the product or service being offered.
  • Arbitrary Trademark: To qualify for an arbitrary trademark, you must make your mark highly distinctive. However, the mark is unrelated to the underlying product or service being sold. Think of Apple, the company. Apple is a highly distinctive mark, but it doesn’t relate to the products, i.e., the computers or smartphones, of the company.
  • Fanciful Trademark: To qualify for a fanciful trademark, you must also make your mark highly distinguishable in that it has no meaning other than to relate to the product or service to be sold. For example, KLEENEX doesn’t have any other meaning, except as it relates to its tissue products. The fanciful mark carries the most protection of any of the trademarks available.

Benefits of Trademarking a Quote or Saying

Trademark registration is not mandatory. You can establish common law rights to your phrase without registering it as a trademark. However, federally registering your trademark gives you an advantage. For example, by trademarking your quote or saying, you’re notifying the public of your ownership of the trademark, you have a legal presumption to ownership, and you have the exclusive right to use the trademark in connection with your good or services.

Talk with an Intellectual Property Attorney First

If you suspect infringement, contact us. We have experience with intellectual property lawsuits and can provide legal advice. Talk with an experienced intellectual property attorney before you trademark a quote or saying and before seeking a copyright. Kilgore & Kilgore attorneys can help you decipher what can and can’t be protected. And, they can help you protect what is legally yours. To get the conversation started, go to our website and fill out the form and send it in. Start by clicking here Contact Kilgore & Kilgore. We offer a free evaluation of the facts of your case.

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