Published May 25, 2011
SEAL Team 6 isn’t going down without a fight.
The Navy is challenging Disney’s attempt to trademark the name of the elite squad responsible for taking out the world’s most wanted terrorist.
On May 3, just two days after Usama bin Laden was killed in a raid on the Al Qaeda leader’s Pakistan compound, Disney filed trademark applications to use the name "SEAL Team 6" on everything from entertainment, toys, video games, clothing, footwear -- even Christmas ornaments and snow globes.
Disney's applications with the U.S. Patent and Trademark Office filed cover three separate categories of goods and services -- meaning, they don't yet have consumer products but intend to in the future.
But 10 days later, on May 13, the U.S. Navy hit back, filing two applications of its own. The Navy's competing applications sought trademark status for "SEAL Team" posters and clothing, as well as “Navy SEAL” goods and services, identifying the Navy squad as an organization that “develops and executes military missions involving special operations strategy, doctrine and tactics."
Disney has not responded to FoxNews.com's repeated requests for comment.
The U.S. Navy did not respond to repeated emails and phone calls Monday and Tuesday seeking comment on the Navy's trademark application. But earlier, when FoxNews.com contacted the U.S. Navy on May 13 seeking comment on Disney’s trademark applications, a spokesman said he was unaware of the attempt to swipe the name “SEAL Team 6” and said he would be forwarding the information along to Navy lawyers.
Who will take home the victory in the fight between the U.S. military and Mickey Mouse?
"Disney would have priority, as far as the filing date goes with trademark office," New York trademark attorney Thomas Wilentz said.
It all comes down to whether the patent office feels that granting trademarks to both U.S. Navy and Disney would cause consumer confusion, Wilentz said, in which case the patent office would give priority to the entity that filed its application first -- Disney.
"But the U.S. Navy may have the argument that they are, you know, actually the SEALs, that they were using it first to identify themselves and any use by Disney would create consumer confusion about sponsorship," he said. "And if they actually took Disney to court they could win."
Robin Bren, a Virginia-based trademark attorney with the law firm Oblon Spivak McClelland Maier & Neustadt, thinks the Patent and Trademark Office would turn down Disney’s trademark attempts.
“In order to overcome the probable refusal, Disney will have to argue that potential customers will not assume a connection with the Navy,” she said, adding that would be difficult in light of the elite squad’s recently acquired celebrity-like status.
Because Disney was a step ahead of the Navy in filling, before the Navy’s applications can proceed, Disney’s must be abandoned. But Bren said Disney and the Navy also could enter into an agreement consenting to each other’s use and registration of “SEAL Team 6” for their respective goods and services.
“Given the status/stature of Disney, this may be an attractive approach for the department of the Navy,” Bren said.
Perhaps man and mouse can coexists, at least on some of the trademark issues, said Mark Warzecha, trademark attorney with Zies Widerman & Malek, a Florida law firm.
“Disney filed in the category of entertainment. Maybe they want to come out with an amusement park ride and the Navy’s not in that business, so there really isn’t a conflict there,” he said. “If Disney decides they’re going to invade countries, then there might be an issue.”
Still, Warzecha said, he’d side with the Navy if it ever went up against Disney in court.
“Trademark law is based on priority of use. If you use it first in commerce, you win,” he said. “I’m pretty sure the U.S. Navy has been using 'SEAL Team 6' long before the mouse got involved.”
Still, the process moves slowly, even for SEALs. It could take up to three years -- the deadline on the type of intent-to-use application filed by Disney -- to settle this.
Paul Fucito, U.S. Patent and Trademark Office spokesman, told FoxNews.com none of these applications had yet been reviewed, and new applications usually take about three months to be reviewed.
Don't blame Mickey Mouse for trying, Warzecha said.
“It’s not disingenuous on Disney’s part. They probably thought, oh man, that’s the hottest name in town—let’s put our mouse ears on and figure out some way to use this,” he said.