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Disney Wins Another Judgment in Fight Over ‘Winnie the Pooh’ Trademarks

June 8, 2011

The Trademark Trial and Appeal Board on June 8 dismissed claims brought by Stephen Slesinger Inc. to oppose and cancel Disney Enterprises Inc.’s “Winnie the Pooh” trademark registrations connected with the well-known children’s books because those claims were already resolved in Disney’s favor by a California federal district court in 2009 (Stephen Slesinger Inc. v. Disney Enterprises Inc., Opposition No. 91179064 (TTAB June 8, 2011).

Fight Over ‘Pooh’ Marks.

In 1930, A.A. Milne, author of the Winnie the Pooh children’s books, gave Stephen Slesinger exclusive merchandising and other rights based on the Pooh works in the United States and Canada. Slesinger’s successor-in-interest, Stephen Slesinger Inc. (SSI), transferred certain rights in the Pooh books to Walt Disney Productions in 1961 and 1983 agreements. Disney and SSI have long battled over the scope of the agreements, and these consolidated TTAB proceedings involve SSI’s attempt to oppose Disney’s bid to register “Pooh,” “Winnie the Pooh,” “Classic Pooh,” “My Friends Tigger & Pooh,” and other marks, and to cancel 21 other Disney registrations.

Disney moved for dismissal, arguing that SSI could not assert priority, likelihood of confusion, fraud, and lack of ownership as grounds in these proceedings because SSI has no ownership interest in any of the Pooh works. Disney insisted that it was transferred all rights in the Pooh works under the 1983 agreement.

2009 District Court Ruling Bars Slesinger’s TTAB Claims.

According to Disney, the ownership rights issue in light of the 1983 agreement was conclusively decided by the U.S. District Court for the Central District of California in October of 2009. In that decision, the court said that it had “fully adjudicated all claims and counterclaims” between the parties and rejected SSI’s first, second, and third counterclaims for copyright, trademark, and trade dress infringement, stating that “all of [SSI’s] counterclaims are dismissed on the merits and with prejudice.”

In view of the district court’s ruling that allrights in the Pooh works were transferred to Disney by assignment, the TTAB agreed with Disney and ruled that the doctrine of collateral estoppel barred SSI’s claims here. The TTAB observed that for the doctrine of collateral estoppel or “issue preclusion” to apply, four requirements must be present: (1) the issue to be determined must be identical to the issue involved in the prior litigation; (2) the issue must have been raised, litigated and actually adjudged in the prior action; (3) the determination of the issue must have been necessary and essential to the resulting judgment; and (4) the party precluded must have been fully represented in the prior action.

Finding that estoppel applied, the TTAB wrote:

In sum, as a result of the prior district court litigation between the parties, we find that there is no genuine dispute that the issue of ownership of the POOH works and of the POOH trademarks derived from those works to be determined in these consolidated proceedings is identical to the issue involved in the prior civil action; that the issue of ownership of the POOH works was actually raised, litigated and adjudged in the district court action; and that the determination of whether SSI assigned or licensed its rights to the POOH works to Disney was necessary to the resulting district court judgment. Further, there is no genuine dispute that SSI had a full and fair opportunity to litigate the issue of ownership in the prior civil action.

In view of the foregoing, we find, as a matter of law, that Disney is entitled to summary judgment based on collateral estoppel. Having transferred all of its interests in the POOH works (including any associated trademark rights), SSI cannot prevail on its claims of likelihood of confusion, dilution, fraud or lack of ownership.

Accordingly, the consolidated opposition and cancellation proceedings, namely, Opposition Nos. 91179064, 91182358, 91183644, 91186026, 91187261, 91188860, 91191230, 91192691, 91194551, 91196019, 91198046, and Cancellation No. 92046853 are dismissed with prejudice.

 


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