August 19, 2019

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Why FLYING MONKEY WINE Never Got Off the Ground

Continuing our primate theme, we thought this would be as good a time as any to remind our readers as to the important distinction between copyrighted artistic works, and use of elements from those works as trademarks.

By way of illustration, several years ago a Kansas winery attempted to register the trademark names associated with the Wizard of Oz, for wine – including FLYING MONKEY WINE. Warner Brothers opposed registration based on a number of trademark applications and registrations for marks referencing elements from the Wizard of Oz book, covering merchandise.

The applicant unsuccessfully put forth the argument that since the Warner Brothers' trademarks referenced characters, themes, concepts, and drawings taking directly from the book, which was published in 1899 and is now in the public domain, Warner Brothers should not be able to claim trademark rights in these elements. It appears from the record that FLYING MONKEY WINE never got off the ground.

This case serves an important reminder of the difference between trademarks and copyrights – particularly in the creative context. Even though certain characters, locations, and elements appear within a copyrighted artistic work – such as Disney's iconic Mickey Mouse – the expiration of the copyright in the artistic work does not necessarily mean that the characters within are available for use by others in a trademark sense. In other words, even if the trademark you plan to adopt is adapted from a public domain creative work, do not assume it is available for use and registration as a trademark. The usual search and clearance process should be undertaken to ensure a mark is available for use and registration.      

© 2019 Sterne Kessler


About this Author

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...

Tracy-Gene Durkin, Mechanical Patent Trademark Attorney, Sterne Kessler law firm

Ms. Durkin leads the Mechanical Patent and Trademark Group.  With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet her clients' individual needs.  Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing.  She is sought out for her knowledge of design patents, brand development strategies and eliminating copycat consumer products from the marketplace to prevent the devaluation of IP rights

Ivy Clarice Estoesta, Mechanical Design Attorney, Sterne Kessler Law Firm

Ms. Estoesta is an associate in the Mechanical and Design practice group at Sterne Kessler.  Ms. Estoesta’s practice focuses on trademarks, design patents, and copyrights.  Her legal experience, which began at the firm, and academic background provide her a multidimensional perspective in securing comprehensive IP rights for an array of clients in various industries, including pharmaceuticals, dietary food and beverages, footwear, electronic devices, and household cleaning products.

Ms. Estoesta joined the firm in 2006 as a legal assistant in...

Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist

Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.