This morning, as the PUSH scandal was reaching new heights, Jason Garcia, reporter for the Orlando Sentinel, tweeted that “Inventor and co-owner of PUSH says contract with Disney lapsed over concerns about intellectual property rights to the character.” This got me (Jason Diffendal) thinking, I wonder if Disney’s lawyers figured out a way to do their own version of PUSH and not have to deal with contract negotiations with the current owner of PUSH. Well, it appears that this just may be the reason that the contract with PUSH was not renewed.

PUSH the Talking Trash Can was registered for trademark protection with the US Patent and Trademark Office on February 11, 2000, and the trademark was officially registered on March 19, 2002 as Trademark # 2548953.

However, the laws and requirements pertaining to trademarks are not trivial, and one important requirement is that, in order to maintain ownership of a trademark, the trademark must be in common usage on a regular basis, and the owner must file paperwork attesting to this fact. The particular law is Section 8 of the Trademark Act, 15 U.S.C. §1058. Owners must file what is called a “Section 8 Declaration of Continued Use” between the 5th and 6th years after the registration date. For PUSH, that would have been sometime between 2007 and 2008. The USPTO will cancel any registration on either the Principal Register or the Supplemental Register if a timely §8 Declaration is not filed by the current owner of the registration during the prescribed time periods. (Full details here.)

Searching the USPTO’s Trademark Database for the current status of this trademark, I found this ominous statement: “Registration cancelled because registrant did not file an acceptable declaration under Section 8.” So it appears that PUSH’s owner failed to file the proper paperwork in 2008 to maintain ownership of the trademark, and so the registration was cancelled on December 27, 2008. This unfortunate turn of events means that PUSH is no longer owned by “Robot Productions, Inc.” (Note that the company has apparently changed their name since then.)

As I mentioned at the beginning of this article, it is entirely possible that Disney’s lawyers discovered this information and thus determined that Disney could create their own version of PUSH without infringing any intellectual property belonging to Robot Productions, Inc. Whether this is actually the case, I do not know, but certainly Disney’s highly intelligent lawyers have done things like this in the past, so it would not be a surprise at all if this turns out to be true. Stay tuned for more information as it becomes available.