Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA891279 Filing date: 04/20/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91239975 Party Defendant Wicked Witch Studios composed of Dorothy Dunigan, USA Correspondence WICKED WITCH STUDIOS Address 8096 MONTAGUE COURT GLEN BURNIE, MD 21061 UNITED STATES Email: [email protected] Submission Answer Filer's Name Richard Bullock Filer's email [email protected], [email protected] Signature /Richard Bullock/ Date 04/20/2018 Attachments Dunigan Answer to Opposition.pdf(112343 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application No. 87502425 WICKED WITCH MOJO, published on November 7, 2017

TURNER ENTERTAINMENT CO. Opp. No. 91239975 Opposer

versus

WICKED WITCH STUDIOS COMPOSED OF DOROTHY DUNIGAN, USA Applicant

APPLICANT’S ANSWER TO NOTICE OF OPPOSITION ______

Applicant DOROTHY DUNIGAN d/b/a WICKED WITCH STUDIOS (hereinafter

“Dunigan”) files this response to the Notice of Opposition showing that legally TURNER

ENTERTAINMENT CO. (“TEC”) has not adequately proved grounds to oppose Applicant

Dunigan’s trademark application and her Application should be granted.

DUNIGANS’S TRADEMARK

Dorothy Morrison Dunigan1 (d/b/a Wicked Witch Studios) is a practicing witch since the early seventies, an elder of the Georgian Tradition of Wicca, and an initiate of the RavenMyst

Circle Tradition. Her business is an extension of her religious practices protected under the First

Amendment to the United States Constitution. Her focus has always been on the use of magic and its practical application to everyday living in which her own line of candles and oils– a product line known as Wicked Witch Mojo–are an integral part of that practice. She has

1Mrs. Dunigan markets her products and books under her maiden name “Dorothy Morrison.” continuously used the name Wicked Witch Mojo since at least May 1, 2010, to identify her proprietary line of candles and scented oils.

On June 22, 2017, she applied to the United States Patent and Trademark Office for a trademark on her brand name "Wicked Witch Mojo" which is the subject of an opposition from

Turner Entertainment Co.

"Wicked Witch Mojo" is a fanciful trademark not currently in use by any other person including Opposer TEC who opposes her trademark application because of the phrase "wicked witch" which is registered to Opposer as a trademark. Under the Lanham Act, 15, U.S.C. § 1052,

Ms. Dunigan has met her initial burden showing she is entitled to the issuance of a trademark.

Opposer TEC seeks to oppose the trademark application on the basis that they have priority, that the approval of the mark is likely to cause confusion and that the mark, if granted to Dunigan, would result in inappropriate dilution by tarnishment of their marks.

For the following reasons, the opposition should be denied and the trademark application granted.

PRIORITY & LIKELIHOOD OF CONFUSION

Opposer cannot dispute that it has not registered a trademark in the phrase “Wicked

Witch Mojo.” They seek merely to oppose the application based upon likelihood of confusion with a preexisting mark “Wicked Witch” and other variations.2 As such, priority is not an issue per se. See Application of Calgon Corp., 830435 F.2d 596, (U.S. Ct of Cust. 1971). As such, the proper evaluation of whether Dunigan is entitled to have her trademark “Wicked Witch Mojo” is

2As shown below, it is questionable whether the phrase “wicked witch” and “wicked wiches” without more should ever have been allowed as a trade mark as the terms is both generic and descriptive as shown below.

Page -2- whether or not there is a “likelihood of confusion” with an existing registered trademark.

The Lanham Act, 15 U.S.C. § 1052 provides in pertinent part that:

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. . . .”

In determining whether there is a likelihood of confusion, the courts have looked to an eight-factor balancing test introduced in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492

(2d Cir. 1961). The eight factors are: (1) strength of the trademark; (2) similarity of the marks;

(3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer's product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d

97, 115 (2d Cir. 2009).

(1) Strength of the trade mark. The courts have generally categorized trademarks in to four different groups: (1) generic, (2) descriptive, (3) suggestive, (4) arbitary or fanciful.3 In re

Chippendales, 622 F.3d 1346 (Fed. Cir. 2010). The lack of a “strong” mark diminishes the likelihood of confusion . In re Chippendales, supra, at 1352; Starbucks Corp. v. Wolfe's

3Opposer does not and cannot argue that their mark “wicked witch” is suggestive, arbitrary or fanciful. As such, these categories are not discussed.

Page -3- Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir.2009).

Generic marks generally cannot qualify for trademark protection at all. In re

Chippendales, supra. A generic mark is one that “refer[s] to the genus of which the product is a species.” See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120

L.Ed.2d 615 (1992). For example, the term “shredded wheat” was found to constitute a generic mark. See Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 112–13, 59 S.Ct. 109, 83 L.Ed. 73

(1938). Examples more germane to the Opposition are a “wicked witch” hat, a “wicked witch” broom, and a “wicked witch” dress. In each of these instances, they “wicked witch” is a generic descriptor of items traditionally associated with witches.

Descriptive marks that acquire secondary meaning may qualify for protection under

Section 2(f). Descriptive marks merely describe the qualities or characteristics of a good or service. See Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83

L.Ed.2d 582 (1985). For example, the word “Nu–Enamel” was held to be descriptive of paint enamels. Armstrong Paint & Varnish Works v. Nu–Enamel Corp., 305 U.S. 315, 329–30, 59

S.Ct. 191, 83 L.Ed. 195 (1938).

The Opposer’s trademark “wicked witch” and “wicked wiches” falls into both of these categories: generic and merely descriptive as is shown below.

The image of the evil or wicked witch is an old and common one. The image is found as far back as ancient European myth and folklore, such as the Greek goddess Hecate4 and Circe from Greek mythology, as well as medieval European folklore such as Sleeping Beauty, Snow

4The existence of the “wicked witch” in folklore has even been referenced by courts. DiTocco v. Riordan, 815 F.Supp.2d 655 (S.D. N.Y. 2011) (“It turns out that Cate—PJ's enchanting, yet capricious love interest—is actually the wicked witch Hecate.”)

Page -4- White, Hansel and Gretel5 , and Baba Yaga of Russian folklore. While a witch is not evil or

wicked in every culture throughout the world, within European and Western tradition (including

the United States of America), the image of the witch as wicked and evil is deeply rooted in our

culture, particularly in Christian morality. Cf., Deuteronomy 18:11–12 ; Exodus 22:18 ("Thou

shalt not suffer a witch to live").

Regardless of the source, that a witch is portrayed as “wicked” is “scènes à faire” in

Western folklore. That is, being wicked is as central to the theme of a witch as is the pointed hat,

the flowing cape, the curled boots, the dominant black color of the clothing, as well as the

broom. All of these elements follow from the witch theme as it was understood even before

Frank Baum created the characters of the “Wicked Witch of the West” and “Wicked Witch of the

East.” These elements are routinely expressed in a wide variety of traditional witch stories,

figures, images, and costumes that are commonly employed during the Halloween season, books,

and cinema. Therefore, these elements are generally deemed to be unprotectible as scènes à faire.

Cf., Winfield Collection Ltd. v. Gemmy Industries Corp., 311 F.Supp.2d 611, 616-617 (E.D.

Mich. 2004).

While it is true that Margaret Hamilton's portrayal of the Wicked Witch of the West in

The Wizard of Oz (1939)6 is identified as one of the most iconic villains of modern times as

5Wells Fargo Bank, N.A. v. Russo, 51 Misc.3d 1201(A); 36 N.Y.S.3d 50 (Sup.Ct. Richmond 2016) (“Unlike Hansel and Gretel who were able to enjoy the benefits of a gingerbread house and eventually escape the clutches of the wicked witch, people who borrow money do have an obligation to pay it back and not use the legal system to evade responsibility.”)

6It is presumed that the Board has sufficient familiarity with the film The Wizard of Oz (1939) and the books by Frank L. Baum. Should further citation be needed or required to clarify this response, counsel will be happy to do so.

Page -5- stated by Opposer TEC, the character's descriptive term "wicked witch" and even her title

“Wicked Witch of the West” from the Baum books is in the public domain and was used well before the creation of the film. The “wicked witches” (four of them to be exact throughout the mythology of Frank Baum’s world of Oz) is merely a generic or descriptive term as used in the book to differentiate them from the “good witches” such as Glinda, the Good Witch. Cf.,

Application of Andes Candies Inc., 478 F.2d 1264 (Cust. & Pat. App. 1973) ( The words “creme de menthe” were descriptive of flavor of candy and were not registrable as trademark for laminated chocolate mint candy squares).

Moreover, “wicked witch” was not the name or even identity of any of the evil witches in

Baum’s books. The wicked witches, including the Wicked Witch of the West, were not generally given names in Baum’s books,7 so subsequent authors building upon the story gave the

Wicked Witch of the West, and occasionally the Wicked Witch of the East, their own names. All of these names are protected under copyright as part of their respective works, which means new creators keep coming up with their own version. Some of the most well-known incarnations of the wicked witches are "Elphaba" (the Wicked Witch of the West in the book by Maguire,

Gregory, Wicked: The Life and Times of the Wicked Witch of the West (1995)), "Theodora" and

“Evanora” (the Wicked Witch of the West and East respectively, from the film Oz the Great and

Powerful (2013)), "Zelena" (from the television series Once Upon a Time (2014-2018),

"Evillene" (from the musical The Wiz: The Super Soul Musical "Wonderful Wizard of Oz

(1974) and the film (1978)), “Bastinda” (from the book by Volkov, Alexander Melentyevich, The

7Only the Wicked Witch of the North, Mombi, was given a name in Baum’s fictional world. Opposer TEC does not own a trademark in the name “Wicked Witch of the North”.

Page -6- Wizard of Emerald City (1939), “Old Snarl Spats” and “Old Sand Eye” (the Wicked Witch of the

West and East respectively, from the book by Hardenbrook, Dave, The Unknown Witches of Oz:

Locasta and the Three Adepts (2000)).8 In all of these works, the term "wicked witch" is used and Opposer could not and did not oppose the use of the phrase "wicked witch" as a descriptor because the phrase "wicked witch" by itself is not the proper subject of protection and, even if it was at one time, has since passed into the public domain in innumerable permutations.

It is undisputed that Baum held valid copyrights to his books and his expression of ideas in them, specifically his portrayal of the various wicked witches mentioned throughout. That copyright terminated however and his genre and the expression thereof passed into the public domain. The twenty-three Oz books, including the originals by Frank Baum, and five movies, as well as the specific characters the Wicked Witch of the West, the Wicked Witch of the East, the

Wicked Witch of the North a/k/a Mombi, are all in the public domain; their copyrights having long expired. Frank Baum’s The Wonderful Wizard of Oz was published in 1900, and was the first to enter the public domain in 1956. The Marvelous Land of Oz, also by Frank Baum, which was published in 1904, followed suit and entered public domain in 1960.9 Later, Frank Baum’s

Ozma of Oz, published in 1907, entered the public domain in 1983, and the subsequent books followed, with the last of Baum’s books, Glinda of Oz published in 1920, finally entering the public domain in 1996.

8The various and numerous adaptations of Baum’s novels and the characters, including the wicked witches, are too numerous to cite here. However, reference may be made to the following sites: https://en.wikipedia.org/wiki/Adaptations_of_The_Wizard_of_Oz and https://en.wikipedia.org/wiki/Wicked_Witch_of_the_West.

9In that book, the antagonist was Mombi, the Wicked Witch of the North.

Page -7- Generally, the courts have recognized that it is not Baum’s characters of the Wicked

Witch of the West and Wicked Witch of the East which are protected by the Opposer TEC’s

copyright (and by extension their trademark) in the movie The Wizard of Oz (1939), but it is only

Margaret Hamilton’s visual depiction of the Wicked Witch of the West. In Warner Bros.

Entertainment v. X One X Productions, 644 F.3d 584 (8th Cir. 2011), the Court ruled that the scope of copyright protection for the characters in the film “The Wizard of Oz” is limited to the increments of character expression in the films that go beyond the character expression in the books on which they were based; the characters themselves as created by Frank Baum cannot be the object of their copyright. Where a description and elements there of are unoriginal, unprotectible elements—elements that were not independently created by the inventor, and that possess no minimal degree of creativity–they cannot be the object of a copyright. Kohus v.

Mariol, 328 F.3d 848 (6th Cir. 2003); Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 98 L.Ed.

630 (1954). The phrase “wicked witch” fits the very definition of an unprotectible and unoriginal

element.

By opposing Dunigan’s application for her trademark “Wicked Witch Mojo”, Opposer

TEC attempts to extend trademark and copyright rights broadly to all of Baum’s expressions.

However, they cannot lawfully do so. Their copyright, and ultimately their trademark, arises

solely in the context of the portrayal in the movie The Wizard of Oz (1939) to the extent it is

different from or supplementary to Baum’s expression. It cannot apply to the witches generally

as they existed historically long before Baum created them. Hence, courts have held that it is

Margaret Hamilton’s portrayal which is the proper subject of Opposer’s protected copyright, not

merely all of the “wicked witch” characters in their various forms.

Page -8- Courts have additionally held that the term "generic" embraces those phrases that have passed into the public domain where they have acquired no secondary meaning. Such terms cannot be appropriated or monopolized. BigStar Entertainment, Inc. v. Next Big Star, Inc., 105

F.Supp.2d 185 (S.D.N.Y. 2000). As explained by the United States Supreme Court in Kellogg

Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 83 L.Ed. 73 (1938).

“Since during the life of the patents ‘Shredded Wheat’ was the general designation of the patented product, there passed to the public upon the expiration of the patent, not only the right to make the article as it was made during the patent period, but also the right to apply thereto the name by which it had become known. As was said in Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185, 16 S.Ct. 1002, 1008, 41 L.Ed. 118:

‘It equally follows from the cessation of the monopoly and the falling of the patented device into the domain of things public that along with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly. * * *

‘To say otherwise would be to hold that, although the public had acquired the device covered by the patent, yet the owner of the patent or the manufacturer of the patented thing had retained the designated name which was essentially necessary to vest the public with the full enjoyment of that which had become theirs by the disappearance of the monopoly.’

The common law did not extend validity or protection to trademarks based on generic terms, regardless of how far the use of the name may have prospered in marketing a particular product and publicly associating it with its maker. Where an invented word becomes too successful over time, it also may become generic and lose its protection. See, e.g., King–Seeley

Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir.1963) ("THERMOS"); Dupont

Cellophane Co. v. Waxed Products Co., Inc., 85 F.2d 75 (2d Cir. 1936) ("CELLOPHANE");

Bayer Co., Inc. v. United Drug Co., 272 F. 505 (S.D.N.Y.1921) ("ASPIRIN"); Haughton

Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950) ("ESCALATOR"). This is illustrated by the

Page -9- court’s opinion in BigStar Entertainment, Inc. v. Next Big Star, Inc., supra, at 195:

“Thus, Kentucky Fried Chicken could not usurp the words marking its product and thereby deprive "Kansas Fried Chicken" of the use of common language to describe its own brand of the same thing, compelling the later entrant into strained construction of language for generic reference to the identical product, such as "Kansas Fowl Cooked in Deep Fat."

Similarly here, where Baum’s copyright over his portrayal of the various wicked witches

of Oz, including specifically the Wicked Witch of the West and the Wicked Witch of the East, in

all her various forms entered the public domain, the right to use those names could not be

withheld from the public.10

While it is true that a generic or descriptive term, such as “wicked witch” may become a

protectable trademark if it acquires secondary meaning, it must make the mark distinctive

associating it solely with the particular source or production of the product. As explained by the

United States Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 112

S.Ct. 2753, 120 L.Ed.2d 615(1992):

“[D]escriptive marks may acquire the distinctiveness which will allow them to be protected under the Act. Section 2 of the Lanham Act provides that a descriptive mark that otherwise could not be registered under the Act may be registered if it “has become distinctive of the applicant's goods in commerce.” . . . . This acquired distinctiveness is generally called “secondary meaning.”

The doctrine of secondary meaning requires not only that the mark have a subordinate meaning, but also that the primary significance of the mark in the minds of the consumers is the

10There is a certain amount of irony in Opposer’s position. It was the popularity of Baum’s characters in American culture over the course of thirty-nine years, Dorothy, the Scarecrow, the Wizard and even the Wicked Witch of the West, that ultimately led to the creation of the film The Wizard of Oz (1939). The character and description of the Wicked Witch of the West, and other witches of Oz, are principally identified with Baum’s books and only later associated with Margaret Hamilton’s portrayal of the infamous witch first made famous by Baum’s books starting in 1900.

Page -10- identification of the producer, not a designation of the product. American Footwear Corp. v.

General Footwear Co. Ltd., 609 F.2d 655, 663 (2d Cir. 1979).

The case of American Footwear Corp. v. General Footwear Co. Ltd., 609 F.2d 655(2d

Cir. 1979), is particularly appropriate to the matter before this Board. The court rejected

Universal City Studios claim that the term “bionic” was protected by trademark law.

As has often been observed, the law of trademark infringement is but a part of the law of unfair competition, Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 413, 36 S.Ct. 357, 60 L.Ed. 713 (1916), and the same test is applied in determining each claim. For confusion to arise, the markets need not be identical, Scarves by Vera, Inc. v. Todo Imports, Ltd. (Inc.), 544 F.2d 1167 (2d Cir. 1976), but the similarity of the markets or products is a factor meriting the consideration of the likelihood of confusion. Mushroom Makers, Inc. v. R. G. Barry Corp., supra. The trademarks registered to Universal were in the areas of T.V. entertainment and toys. This market area bears little if any relationship to footwear, and diminishes the strength of Universal's contention that it had established a right to the term “bionic” as a fanciful mark in the field of footwear.

As shown above, the “Wicked Witch of the West”, much less the term “wicked witch”, is not associated solely with the Opposer TEC and thus has not acquired a secondary meaning unique to Opposer TEC. It is but one of many variations on the character, the most recent and popular of which has been Wicked (1995) and Oz the Great and Powerful (2013). Both of these later adaptations have engaged in marketing of various products, in particular the Wicked Witch of the West, in connection with the book and play in the case of Wicked and the film Oz the

Great and Powerful.11 As such, Opposer cannot show that the term “wicked witch” compels consumers to associate all instances of “wicked witches” with TEC as a source of the product.

There are many different sources of products associated with the ubiquitous images and

11https://disneyparks.disney.go.com/blog/2013/02/disney-parks-celebrate-oz-the-great-and -powerful-with-new-merchandise/ and http://www.wickedthemusicalstore.com/

Page -11- portrayals of wicked witches throughout literature, film and culture.

Simply stated, Opposer’s mark is extremely weak at best and, as a factor in our analysis, does not weigh in favor of denying the Application.

(2) Similarity of the Marks. While there is admittedly some similarity between the marks

“wicked witch” and “wicked witch mojo”, “wicked witch,” as a mark, is a generic or descriptive trademark entitled to little weight whereas the mark “wicked witch mojo” is arbitrary and fanciful. The word “mojo” is a word of likely African origin originally identified with the practice of Voo Doo and other African animist religions, specifically charms and amulets. The word “mojo” is never used in The Wizard of Oz (1939), or even the Baum books. It does not associate itself naturally with the character of the Wicked Witch of the West found in the film and books. As such, the combination of the terms directs the consumer away from children’s entertainment and towards the field of practice of ritualistic magic. This disassociation from

Baum’s novel and the film makes the mark more specific and unique.

As the marks are sufficiently different enough that this factor does not weigh in favor of denying the Application.

(3) Proximity of the Products and Their Competitiveness with One Another. The term

“wicked witch” has never been used by Opposer TEC in the marketplace with candles, incense or scented oils, especially those used in religious practice. While it is conceded that toys and printed materials associated with the film are marketed globally, they are not marketed in the same manner or place as Applicant’s products. There is no proximity or competitiveness by virtue of the failure of Opposer to make the specific products Applicant makes nor in the place

Page -12- where they marketed.12 Competition between the two trademarks does not come into play with these limited areas where the Applicant has been producing these products (specifically candles and scented oils) since 2010 and Opposer has not.13

This factor does not weigh in favor of denying the Application.

(4) Evidence That the Senior User May "Bridge the Gap" by Developing a Product for

Sale in the Market of the Alleged Infringer's Product. There is no evidence that Opposer intends

to enter the field of candles, oils or incense, particularly for use in ritualistic magic or religious

practice. If anything, Opposer’s entrance into the market of legitimate ritualistic magic

accessories would be considered an insult to those who have a genuine sincere belief in their

religious tenets, both practitioners of witchcraft and Christians. It is very unlikely Applicant and

Opposer would ever share any products in common.

This factor does not weigh in favor of denying the Application.

(5) Evidence of Actual Consumer Confusion. Opposer has presented no evidence of

actual consumer confusion. More importantly, as shown in the Opposition, see ¶ 25, confusion

between the Opposer’s depiction and brand of the “Wicked Witch” is even more so lessened by

the product description on the label as “Dorothy Morrison’s Wicked Witch Mojo”. It is clear

from the label that Applicant is not attempting to associate her product with Opposer TEC but is

using a different permutation of the archetype of the “wicked witch” made famous by Baum’s

12Applicant’s products are marketed online and primarily in stores and shops catering the needs of legitimate practitioners of witchcraft and ritual magic. Opposer does not market any of its goods towards these particular types of consumers.

13The one candle made or licensed by Opposer referenced in their Opposition does not even bear the likeness, name or title of any of the “wicked witches”. See ¶ 9 of the Opposition.

Page -13- novels.

Opposer TEC attempts to show intentional confusion with their protected interest in the portrayals found in The Wizard of Oz (1939) by Applicant’s reference in her product’s labeling and literature to flying monkeys, striped stockings, and red shoes. Opposer has not cited a trademark in any of these items or depictions as the basis for their Opposition. However, more importantly the flying monkeys are found in Baum’s novels as well as the numerous subsequent adaptations cited above (see discussion (1) Strength of Trademark, supra) and the use of the name alone unassociated to the portrayal in the actual film does not infringe on Opposer’s rights to those portrayals in The Wizard of Oz (1939). Similarly, the stockings and red shoes, while similar to the ones worn by the Wicked Witch of the East (when the house fell on her), are too generic and uncreative to form the basis of a trade mark or copyright,14 and none has been alleged. They are merely striped stockings and colored shoes, like any other stockings and red shoes, manufactured the world over.

Opposer cannot show that the reiteration and use of the term “wicked witch,” particularly when coupled with “mojo”, reference to flying monkeys or use of red shoes, is intended to create confusion with Opposer’s trademark “wicked witch.” The term “wicked witch” can and does associate itself with numerous different products arising from folklore as well as the fictional world of Baum’s books and the many and diverse adaptations cited above. Applicant’s mark

14Opposer may have rights in the “ruby slippers” which were portrayed in the film differently from the “silver slippers” found in Baum’s books. Yet, even in the film, the ruby slippers are associated most commonly in the public’s mind with the character of Dorothy, and only tangentially with either of the wicked witches. It defies reason that any interest Opposer may have in “ruby slippers” automatically removes the use of all red shoes from the public domain.

Page -14- “Wicked Witch Mojo” would no more cause confusion with Opposer’s products than Wicked and Oz the Great and Powerful15 and their related marketed products have caused confusion with

Opposer’s movie The Wizard of Oz, specifically because Applicant’s use of the trade mark

“Wicked Witch Mojo” is in such a limited and narrow field (candles and scented oils) unlike the merchandizing done by Wicked and Oz the Great and Powerful which are in direct competition with Opposer in the areas of printed materials, toys and clothing.

The lack of confusion between Opposer’s specific protected interest in the portrayal of the Wicked Witch of the West found in the film The Wizard of Oz (1939) and the Applicant’s use in candles and oils designed for use in ritualistic magic does not weigh in favor of denying the Application.

(6) Evidence That the Imitative Mark Was Adopted in Bad Faith. Opposer TEC alleges over and over that Applicant’s trademark was adopted in bad faith. Mere allegations are insufficient to bear their burden of proof. There is simply no evidence that the adoption of

Applicant’s mark was done in bad faith. Applicant’s products, as discussed above in “Evidence of Actual Consumer Confusion, specifically disassociate themselves from Opposer’s products by describing them as “Dorothy Morrison’s”. The Applicant’s trademark references her own interpretation of the many permutations of the characters and themes found in folklore and

Baum’s original works now in the public domain.

This factor does not weigh in favor of denying the Application.

15The direct conflict between Disney’s Oz the Great and Powerful and Opposer’s The Wizard of Oz has been noted in numerous articles, with specific reference to merchandising rights in similar products, though not in candles and oils. See, e.g. http://articles.latimes.com/2013/mar/11/entertainment/la-et-mn-disney-oz-20130311

Page -15- (7) Respective Quality of the Products. Since Opposer TEC does not manufacture or license the manufacture of candles, oils or incense, particularly for use in ritualistic magic or religious practice, this factor does not weigh in favor of denying the Application.

(8) Sophistication of Consumers in the Relevant Market. The consumers of Applicant’s products are, for the most part, practitioners in the area of ritual magic and the practice of their religion. No serious practitioner would think that a product associated with the film The Wizard of Oz (1939) would have any role in their sincere practice and expression of their religious views. This is buttressed by the fact that Applicant has written numerous books on the practice of witchcraft and the use of oils and candles in that practice.16 While the occasional consumer may see Applicant’s products as a novelty item, the products are sold specifically in stores catering to practitioners of witchcraft and ritualistic magic. It is highly unlikely that even these people would assume that the products manufactured by Applicant were meant to be merchandise associated with the film or any other fictional depiction of The Wizard of Oz

(1939). This factor does not weigh in favor of denying the Application.

Because the Opposer TEC cannot show that there is likelihood of confusion under any of the eight Polaroid factors, the Opposition based upon priority and likelihood of confusion should be overruled.

16The Craft: A Witch's Book of Shadows (2001); The Craft Companion: A Witch's Journal (2001); Dancing the Goddess Incarnate: Living the Magic of Maiden, Mother & Crone with Kristin Madden (2006); Enchantments of the Heart: A Magical Guide to Finding the Love of Your Life (2002) ; Everyday Magic: Spells & Rituals for Modern Living (2002); Everyday Moon Magic: Spells & Rituals for Abundant Living (2004); Everyday Sun Magic: Spells & Rituals for Radiant Living (2005); Everyday Tarot Magic: Meditation & Spells (2003) In Praise of the Crone (1999); and Magical Needlework (2002), to name some of her most popular books and guides.

Page -16- DILUTION BY TARNISHMENT

Opposer TEC next claims that the Applicant’s mark should not be registered because it

would dilute their mark by tarnishment. There are two forms of dilution recognized in the

Lanham Act, 15 U.S.C. § 1125: dilution by blurring and dilution by tarnishment. Opposer has

only asserted dilution by tarnishment as an opposition to the Applicant’s trademark.

The first hurdle that Opposer TEC must overcome is to show that their trademark,

“wicked witch” is “famous”. 15 U.S.C. § 1125 (c)(2) defines “famous as:

“[A] mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner.”

The finding of a mark as famous is “a rigorous standard, as it extends protection only to highly

distinctive marks that are well-known throughout the country.” Caiz v. Roberts, 224 F.Supp.3d

944, 954 (C.D. Cal. 2016).

As discussed above in detail, the phrase “wicked witch”, even the “Wicked Witch of the

West,” is not associated solely with Opposer’s products, i.e., it has not acquired a secondary

meaning unique to Opposer. It is associated also with Baum’s books, the book and play

Wicked17 and the Disney movie Oz the Great and Powerful.18 Images and portrayal of the

“wicked witch” arise from many different sources, Opposer’s use being merely one of them,

17The Broadway play adaptation of Wicked with its witch-centric retelling of the Oz stories had earned over a billion dollars by 2016. https://www.forbes.com/sites/hughmcintyre/2016/03/16/wicked-has-now-made-over-1-billion-on -broadway/#565aad6b134c. Prior to Opposer’s registration of “wicked witch” as a trademark, Idina Menzel even won a Tony Award in 2004 for her portrayal of Elphaba, the Wicked Witch of the West.

18Mila Kunis won the MTV Movie Award for Best Villain in 2014 for her portrayal of Theodora, the Wicked Witch of the West.

Page -17- albeit a substantial one. Their trademark simply does not meet the definition of “famous” under

the statute to allow them to oppose Applicant’s mark on the basis of dilution. Compare Caiz v.

Roberts, supra, (“Plaintiff's “Mastermind” mark is not famous because . . . .it is merely descriptive without secondary meaning. Plaintiff has failed to show that “Mastermind” is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services” of the mark Plaintiff owns.”)

Second, Opposer must show that Applicant’s use of her mark would “tarnish” the mark of

Opposer. “Dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 15 U.S.C. § 1125

(c)(2)(C). However, Opposer fails to articulate how Applicant’s use of her trademark will tarnish or harm the reputation of Opposer.19 It is difficult to defend against a claim of dilution by

tarnishment on the vague and bare assertions contained in the Opposition. However, luckily, this

is not Applicant’s burden. It is Opposer’s burden to prove both that their mark is “famous” and

that there is a strong likelihood of “tarnishment.” Their bare assertions without more are simply

legally insufficient to sustain their Opposition.

Nonetheless, Applicant shows that dilution by tarnishment is unlikely to occur if her

trademark is approved. First, Applicant’s mark is unique (“Wicked Witch Mojo”) while

Opposer’s mark (“wicked witch”) is merely generic or descriptive. One does not naturally

associate with the other, including specifically with Opposer’s products solely. Second, Opposer

19Surely, Opposer is not suggesting that association of the mark “wicked witch” with ritualistic magic alone is enough to “tarnish” their image. This would violate the principles of freedom of religion found in our Constitution and in federal law. The Religious Freedom Restoration Act of 1993, 42 U.S.C. § 2000bb, et seq.

Page -18- alleges that defects in the quality of Applicant’s goods or services would be attributed to them.

This is highly unlikely especially in light of the clear statement on product labels that it is

“Dorothy Morrison’s Wicked Witch Mojo” along with advertisements for her products by

Applicant linking her products to her personally.20 Finally, subsequent registry of “Wicked

Witch Mojo” in the trademark registry puts the public on notice of the owner of the mark and the subsequent products sold under the mark. Any shortcomings in Applicant’s products would clearly be ascribed to her, and only her.

CONCLUSION

For the above and foregoing reasons, Applicant Dorothy Dunigan prays that the

Opposition of Turner Entertainment Co. be denied and her Application for the trademark

“Wicked Witch Mojo” be approved.

New Orleans, Louisiana, this __20___ day of April, 2018.

RESPECTFULLY SUBMITTED:

BULLOCK & HAM, A PLC 619 Barracks Street New Orleans, LA 70116 (504) 267-3191

By: _/s/ Richard P. Bullock______Richard P. Bullock, Esq. La. Bar Roll No. 20,733 [email protected]

20http://www.wickedwitchstudios.com/WickedWitchMojo.html