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A trademark battle began last week over the rights to the name “Tinker Bell,” the tiny animated fairy from “Peter Pan” whose golden, glowing pixie dust enabled the children in the story to fly. In a suit filed in U.S. District Court for the Middle District of Pennsylvania, four affiliated companies claim that Disney Stores Inc. is violating their exclusive rights by manufacturing and selling a line of toys and other children’s products that use the Tinkerbell name and image. Attorneys Robert W. Hayes, Michael B. Fein, James H. Heller and Michele A. Ledo of Philadelphia’s Cozen & O’Connor filed the suit on behalf of the New Dana Perfumes Corp. of Mountain Top, Pa.; New Tinkerbell Inc. of New York; St. Honore Holding Inc. of Wilmington, Del.; and Finanz St. Honore B.V., a Dutch company based in Amsterdam. The suit says the four companies design, advertise, sell and distribute children’s products and apparel, including a product line bearing the trademark Tinkerbell and a female fairy character. From 1986 to 1999, the suit says, New Tinkerbell and its predecessors sold Tinkerbell products to Disney for re-sale by Disney. But sometime after February 1999, the suit says, Disney began designing, advertising, selling and distributing its own competing line of Tinkerbell children’s products and apparel, using the Tinkerbell trademark as well as two derivations – “Tink” and “Tinker Bell.” Originally, “Tinker Bell” was a character in a 1911 novel titled “Peter and Wendy,” a 1921 novel titled “Peter and Wendy” and in a 1950 novel titled “Peter Pan,” all authored by Sir James Matthew Barrie and copyrighted by Barrie. The Barrie copyright to his Peter Pan works was left to the Hospital for Sick Children of London, England, but is presently expired, and Barrie’s works are in the public domain. In 1952, the suit says, Tom Fields Ltd., a British company, obtained verification from the Hospital for Sick Children that the trademark rights to “Tinker Bell” were available. After paying an honorarium to the hospital, it began to use Tinkerbell as a trademark for cosmetics and personal care products. Fields filed its first application for registration of the Tinkerbell mark with the United States Patent and Trademark Office in March 1952, prior to Disney’s release of the movie “Peter Pan” in 1953. In 1967, the suit says, MEM Company Inc. acquired Fields’ rights in the Tinkerbell trademark and assigned certain of the rights it acquired to two of its wholly-owned subsidiaries — Marton Freres Inc. and English Leather Inc. In June 1997, MEM’s Marton Freres changed its name to Tinkerbell Inc. In 1996, Renaissance Cosmetics Inc. and its wholly-owned subsidiary Dana Perfume Corp., acquired MEM, including its intellectual property rights. Last year, Renaissance and its then-corporate affiliates, MEM and Tinkerbell, filed petitions in Bankruptcy Court in Delaware for relief under Chapter 11. The Bankruptcy Court later approved the auction of assets of Renaissance. In June 1999, DPC Acquisition Corp. entered into an asset-purchase agreement with Renaissance in which it purchased certain assets, including trademarks and other intellectual property. The agreement specifically provided that Renaissance would convey all of its property, title and interest in the trademark Tinkerbell to DPC or any of its designees. DPC then formed new corporations to receive the assets of the former Renaissance entities. It named each new entity by using the Renaissance entity name in existence immediately prior to the bankruptcy filing preceded by the word “new,” such as New Tinkerbell Inc. The suit says New Tinkerbell was assigned the rights to the Tinkerbell name “forever.” When New Tinkerbell learned that Disney was using the Tinkerbell trademark, the Pennsylvania company “demanded that Disney cease doing so, which demand Disney has ignored,” the suit says. The suit also includes claims that Disney is violating the trademarks for “Heaven Sent” and “Heaven Scent” owned by New Dana. Disney has recently begun advertising and selling a jewelry-type box with a mirror under the cover, containing four different children’s bath and body products, one of which is named “Heaven Scent,” the suit says.

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