IP Law Daily, TRADEMARK—TTAB: Opposition to OSWALD THE RABBIT trademark application for musical productions sustained, (Aug 4, 2025)

By Linda O’Brien, J.D., LL.M.

Study models and a miniature stage used by a creator of stage musicals to demonstrate the concepts of a production featuring Oswald the Rabbit as a character were insufficient to support a finding of a bona fide intent to use the applied-for mark in U.S. commerce.

A creator of musical film productions was unable to register the mark “OSWALD THE RABBIT” for a musical production featuring an animated character because he failed to show that he intended to use the proposed mark in connection with any of the entertainment services identified in his application, the Trademark Trial and Appeal Board has determined in a nonprecedential order. The creator’s testimony showed a vague plan or the concept for a musical production featuring the cartoon character and a speculative intent to reserve the right in the OSWALD THE RABBIT mark if the production ever came to fruition. Thus, the opposition to the application registration was sustained (Disney Enterprises, Inc. v. R.H. Lemorande, No. 91255366 (T.T.A.B. July 16, 2025)).

R.H. Lemorande (“Applicant”), a writer, creator, and adapter of musical film productions, applied to register the standard character mark “OSWALD THE RABBIT” on the Principal Register for services identified as “Direction or presentation of plays; Entertainment, namely, production of plays; Entertainment, namely, production of musicals; Planning arrangement of showing movies, shows, plays or musical performances; Providing facilities for movies, shows, plays, music or educational training,” in International Class 41.

Disney Enterprises, Inc., a subsidiary of The Walt Disney Company and owner of Disney trademarks and copyrights, (“Opposer”) filed a notice of opposition to the registration of Lemorande’s mark based on claims that Lemorande lacked of a bona fide intent to use the mark in commerce for the identified services as of the application filing date under Section 1(b) of the Trademark Act and the likelihood of confusion under Section 2(d) of the Trademark Act. Disney alleged prior common law rights in the mark OSWALD THE LUCKY RABBIT in connection with a variety of goods and services, including video games, films, theme park attractions, toys, watches, clothing, and beverageware and claims ownership of registrations for the stylized mark for collectible toy figures, dolls, clothing, and beverageware.

Lack of a bona fide intent to use. Disney met its initial burden of demonstrating by a preponderance of the evidence that Lemorande lacked a bona fide intent to use the subject mark as to any of the identified services on the filing date of its application, according to the Board. The Trademark Act provides that a person who has a bona fide intention, under circumstances showing the good faith of the person, to use a trademark in commerce may request the registration of its trademark or service mark. Lemorande testified that he was approached in the early 1980’s to develop a stage musical and he proposed a “musical pertaining to Oswald the Rabbit and his early relationship to Walt Disney.” He commissioned the creation of study models of the intended animated characters and a miniature stage set. The discussions ended without the project coming to fruition and without any resulting contracts or licenses. He also testified that, since “development of stage productions can occur over a great duration of time, sometimes decades,” anticipating a possible completion of the project, in 2018 he filed an Intent to Use application for “Oswald The Rabbit.”

Disney argued that the Applicant provided no documentary evidence to support his claim of a bona fide intent as of the November 2018 application filing date and any intent to “advertise, promote, or offer to sell” any of his services was speculative, prospective, and largely undeveloped. Specifically, Lemorande had no business plans to refer to his intended use of the mark, no advertising or marketing materials showing the use of the mark, no contracts or licenses relating to the mark or services and has not approached any producers for the production of any of his services under the mark. In addition, Lemorande did not own or operate any website prior to the application filing date that refers to the mark or services and he only created one website six years after the application filing date solely to publish 40-year-old photos of the study models and make it appear that a theatrical production was “in the works.”

The Board noted that, given that Lemorande’s evidence related to activities that took place over four decades ago, it was “simply too temporally remote to be probative” of his intent as of the application filing date. His desire in the early 1980’s to create a stage production that featured the Oswald the Rabbit character was qualitatively different than an intent to use the mark OSWALD THE RABBIT as an indicator of source for the services identified in his 2018 application. The stage models and miniature stage may reflect his efforts at one point to develop or demonstrate the conceptual elements of a production featuring Oswald the Rabbit as a character, subject, or namesake for the production’s title but they did not show that he took any steps as of the application filing date to offer any of the identified services for the OSWALD THE RABBIT service mark. Lemorande’s prior experience in writing, creating, and adapting musical productions was insufficient to establish his bona fide intent to use the applied-for mark in connection with any of the identified services when the record plainly established that his plans to use the OSWALD THE RABBIT mark were tentative, speculative, and incomplete. Thus, the opposition was sustained on the ground of Lemorande’s lack of a bona fide intent to use its mark in commerce as of the filing date of the application and there was no need to reach the merits of the likelihood of confusion claim, the Board concluded.

The Case is Opposition No. 91255366.

Judge: Lavache, R.

Attorneys: Jason M. Joyal (Kelly IP, LLP) for Disney Enterprises, Inc. R.H. Lemorande, pro se.

Companies: Disney Enterprises, Inc.

Cases: Trademark USPTO