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Disney Withdraws its Trademark Registration Applications for SEAL TEAM 6

Insight June 02, 2011

On May 18, I wrote about Disney’s applications to federally register the trademark SEAL TEAM 6 for (a) “clothing, footwear and headwear;” (b) “toys, games and playthings; gymnastic and sporting articles, (except clothing) hand-held units for playing electronic games other than those adapted for use with an external display screen or monitor; Christmas stockings; Christmas tree ornaments and decorations; snow globes;” and (c) “entertainment and education services.”  All three of these applications were expressly abandoned by Disney last Thursday, just two weeks after the Navy applied to register NAVY SEALS for “posters” and “clothing” and SEAL TEAM for “indicating membership in a(n) organization of the Department of the Navy that develops and executes military missions involving special operations strategy, doctrine and tactics.”

On May 18, I wrote about Disney’s applications to federally register the trademark SEAL TEAM 6 for (a) “clothing, footwear and headwear;” (b) “toys, games and playthings; gymnastic and sporting articles, (except clothing) hand-held units for playing electronic games other than those adapted for use with an external display screen or monitor; Christmas stockings; Christmas tree ornaments and decorations; snow globes;” and (c) “entertainment and education services.”  All three of these applications were expressly abandoned by Disney last Thursday, just two weeks after the Navy applied to register NAVY SEALS for “posters” and “clothing” and SEAL TEAM for “indicating membership in a(n) organization of the Department of the Navy that develops and executes military missions involving special operations strategy, doctrine and tactics.”  The Navy’s SEAL TEAM application relies in part on the prior registration of SEAL for “indicating membership in an organization of applicant that develops and execute military missions involving special operations strategy, doctrine and tactics.”  Although the Navy’s new applications are filed as In Use, neither contains specimens of use or a first use date.

The Guardian reported last week that Disney Spokesperson, Kevin Brockman, stated that Disney withdrew its trademark registration applications “in deference to the Navy’s application.”  No doubt the Navy’s fire power had something to do with Disney’s decision as well.  After all, how wise is it to step on the toes of the organization that killed Osama Bin Laden by shooting him in the face?  Not too wise, I surmise.

Apparently, Navy Spokesperson Amanda Greenberg states that the Navy already had rights to the SEAL trademark (see above), so it submitted the new applications to bolster its level of protection (even the unquestionably bad ass Navy Seals need protection when it comes to their trademarks!).  Greenberg is further quoted stating that “the Navy is fully committed to protecting its trademark rights as it pertains to this matter and is currently examining all legal options.”

Two applicants have since applied to federally register their SEAL TEAM 6 trademarks.  RESCO Instruments applied to register SEAL TEAM 6 for “chronographs as watches, dials for clock and watch making, straps for wrist watches, watch bands, watch cases, watch straps, watches, wristwatches on May 16, 2011.  On May 20, 2011 Justice is Done, LLC applied to register SEAL TEAM 6 for “commemorative coins; key rings of precious metals; cufflinks; jewelry; wall plaques made of precious metal.”  My presumption is that both of these applications will be denied unless the applicants have a licensing relationship with the Department of the Navy (and then I presume that the Navy would be the applicant, not its licensee).  It will be interesting to see how long before these applications also become dead, just like Osama Bin Laden.

The trademark search and clearance process is a vitally important first step when acquiring a new mark.  Smaller clients especially may be inclined to shy away from this expense at the outset, but even at several thousand dollars, it will be less expensive (and time consuming and embarrassing) than dispute resolution and/or abandonment of the mark down the road.