How Close Is Too Close? Where is the trademark infringement line?
EtsyⓇ Sellers advertise Handmade “Baby YodaⓇ” Dolls
In a recent article by The Kingdom Insider, Etsy, a company that promotes independent sellers of handmade products and crafts, was highlighted, and not for a good reason. Why was Etsy in the news? Some of its sellers committed a giant business faux pas by apparently using, without authority, a trademark belonging to The Walt Disney Studios.Ⓡ
The trademark at issue: “Baby Yoda”
Right before Christmas, some very smart and creative entrepreneurs got ahead of the Star Wars: The Rise of Skywalker craze and started hand-making “Baby Yoda” dolls. What is the problem? “YodaⓇ” is a registered trademark of Lucas Films, Ltd.Ⓡ, a subsidiary of The Walt Disney Studios (“Disney”); and, according to the article, the crafters did not obtain licensing rights. The use of the term “Baby Yoda” will likely be found to directly infringe the registered “Yoda” trademark. According to the article, the crafters’ versions of the dolls were directly based off of and made to look like “Yoda” as a baby, as featured in Star Wars: The Rise of Skywalker.
As the owner of the Yoda mark, Disney is protecting its registered trademark by sending “take down” notices to unlicensed users. Some may think Disney is being a bully by going after small crafters; but, in actuality, Disney is required to protect its registered trademarks or risk losing rights. So Disney is obligated to police the Yoda mark and prevent others from infringing on its rights; and, this is Disney playing nice. Disney could sue crafters using its mark without authority for the profits made and for three-times the profits in some instances. And from the looks of it, Disney has more work to do. A quick search of “Etsy and Baby Yoda” results in many more crafters selling “Baby Yodas” and likely without having licensed the rights to do so from Disney.
Another fun fact, on January 18, 2020, Tanya Alvarez, an individual in California, filed with the US Patent and Trademark Office (USPTO) a trademark application for the trademark “Baby Yoda” in Class 25 for “Plush Toys and Stuffed and Plush Toys.” Do you think the trademark “Baby Yoda” will be accepted by the USPTO and registered to Alvarez?
The trademark attorneys at Donaldson Legal Counseling PLLC do not think it will be accepted. And, if in the unlikely chance it is not rejected by the USPTO examiners, we believe Disney would step in to contest the registration.
Want to be like Disney and protect your trademarks? Have questions on whether you can use a certain business or product name? Contact Donaldson Legal Counseling PLLC or visit Donaldson Legal Counseling PLLC at www.attorneylawny.com for a free 15-minute consultation.
Article by Tiffany A. Donaldson, Esq., & MerriLyn Gibbs © February 7, 2020