San Diego Trademark Attorney® Blog

Disney Wins Dismissal in Feud Over TINKERBELL Trademark

April 2, 2013

disney.jpgSan Diego - A 3-way dispute over the rights to use TINKERBELL as a trademark for cosmetics ended when a panel of three judges determined that Icebox-Scoops, Inc., a Dutch company, could not maintain a lawsuit against Walt Disney Co.

Icebox-Scoops licensed the TINKERBELL trademark in 2005 from Finanz St. HonoreBV, a Netherlands based company. Finanz filed a U.S. Trademark for the TINKERBELL trademark in 1982 for "Children's Cosmetics-Namely, Cologne, Bath Oil, Body Lotion, Body Powder, Bubble Bath, Skin Cream and Sachet" and the trademark registered in 1983.

In 2000, Finanz's rights to the TINKERBELL trademark were affirmed in litigation with Disney. Disney had tried to obtain the trademark due to the well-known character from its "Peter Pan" movie. Disney did not prevail in that case which ended with the two companies entering into a Settlement Agreement.

Thereafter, Finanz entered into the licensing agreement with Icebox-Scoops to create TINKERBELL merchandise. Specifically, Icebox-Scoops was to distribute a TINKERBELL line of beauty products geared toward young women.

However, shortly after entering into the license agreement with Icebox-Scoops, Franz decided to sell the trademark to Disney which cut off Icebox-Scoops's right to use the trademark well before the 5 year license had ended.

As a result of the termination of the license, Icebox-Scoops sued Disney for unjust enrichment and tortious interference. Icebox-Scoops believed that Disney should not have bought the TINKERBELL trademark from Finanz if Disney knew that the license agreement was in place at the time of the purchase. Unfortunately for Icebox-Scoops, Disney disagreed, and so apparently did the 2nd Circuit Court.

The 2nd Circuit held that Icebox-Scoops did nothing to enrich Disney and also did nothing for Disney's benefit and therefore the 2nd Circuit affirmed the dismissal of the unjust enrichment claim. As for the tortious interference claim, the 2nd Circuit held that it was made after the statute of limitations was up and so it also could not be maintained.

Though the case against Disney has been dismissed, Icebox-Scoops' case against Finanz is ongoing. Thus far the two have not been able to reach a settlement.