When you think of Cinderella, do you automatically picture the beloved Disney princess with the golden locks and light blue dress, accompanied by a loyal band of talking cartoon mice? If so, you might agree with the Trademark Examiner in a recent case heard by the Trademark Trial and Appeal Board (“TTAB”). The Examiner initially refused registration for an application for the mark ZOMBIE CINDERELLA for dolls. The applicant, United Trademark Holdings, Inc. (“UTH”) of Beverly Hills, California, is releasing Once Upon a Zombie™, “an enchanting and thrilling new children’s book, toy doll line and digital game app” that features “undead” versions of several beloved fairy tale characters, including Cinderella, Rapunzel, Snow White, Sleeping Beauty, and many others.

The Examiner initially refused to allow the trademark to register on the grounds that it would likely be confused with the mark WALT DISNEY’S CINDERELLA and  Design (Reg. No. 3057988)  for,  among other goods, toys, namely, plush toys, action figures, dolls, soft sculpture toys, and stuffed toys.

WALT DISNEY’S CINDERELLA Mark

UTH argued that the ZOMBIE CINDERELLA mark is entitled to registration because the term CINDERELLA “refers to the character Cinderella from the public domain folk tale first published by Charles Perrault,” and thousands of variations of the story have been made since. Furthermore, Disney’s own mark was initially refused because of fifteen existing CINDERELLA-formative marks already coexisting on the federal register. In response, the Examiner gave the evidence of existing registrations little weight, noting that “registrations do not establish that the registered marks identified therein are in actual use in the marketplace or that consumers are accustomed to seeing them.”

UTH further argued that the addition of the house mark, “WALT DISNEY’S”, to the cited mark distinguishes it from the ZOMBIE CINDERELLA mark. The Examiner once again disagreed, stating that the Disney house mark was in fact more likely to cause consumer confusion. The Examiner alleged that where two products are sold under virtually identical names, save for the addition of a house mark, consumers are likely to assume the source of the two products are the house brand. Considering the evidence presented by UTH, the Examiner concluded that consumers are likely to believe that “Disney is now manufacturing a new line of ‘zombie’ dolls,” and therefore refused to register the ZOMBIE CINDERELLA mark.

The TTAB, however, took a different view of the macabre mark. In its reversal of the Examiner’s decision, the Board found that “[t]he evidence shows that the fairytale character Cinderella is an established part of our cultural fabric and enjoys extremely widespread public recognition” and that “many dolls that depict the character Cinderella have been offered in the market by unrelated businesses.” Accordingly, the term “CINDERELLA” is not a strong indicator of source.  Moreover, the Board found that the two marks conveyed substantially different impressions in the mind of consumers. The mark ZOMBIE CINDERELLA, on one hand, “creates a ‘cognitive dissonance,’ involving an uneasy mixture of innocence and horror.”  On the other hand, the mark WALT DISNEY’S CINDERELLA “creates an impression of prettiness and goodness.”  As such, the Board disagreed with the Examiner’s conclusions and reversed his refusal to register the ZOMBIE CINDERELLA mark.

Notably, UTH also owns pending applications for ZOMBIE SNOW WHITE (Serial No. 85706110) and ZOMBIE SLEEPING BEAUTY (Serial No. 85706104), which were similarly rejected based on Disney’s existing registrations.  Those proceedings had been suspended pending the outcome of the ZOMBIE CINDERELLA appeal to the TTAB. Presumably these marks will proceed to registration quickly, now that UTH has successfully raised its ZOMBIE CINDERELLA trademark from the dead.