What recourse does a company have if their trademark is used in the name of a secret government project?

Question

Suppose that the United States government legally commissioned a massive Top Secret weapons project. The project picks up the pet name "Mickey Mouse" for reasons that would make sense if you were working close to it, and that name starts seeping into the documentation, code, presentations, and future naming schemes.

During the project, a small information leak reveals the existence of the name "Mickey Mouse" and corroborating evidence indicating that it's a military program that Disney absolutely doesn't want to be associated with.

Is Disney obligated/allowed to protect their trademark from US government or the contractor hired for the project, despite the fact that the details or existence of project Mickey Mouse can't be divulged?

As a side note, I'm choosing Mickey Mouse/Disney to abstract away the question of whether the trademark holder has the money or desire to pursue legal actions. I'm also taking it for granted that dumb pop culture references are constantly cropping up in R&D projects that would be incredibly stupid if a company lawyer happened to notice.

Answer 1

In most cases the state secrets privilege would prevent the person whose intellectual property was used from suing.

In the same vein, the state secrets privilege denies a remedy to covert operatives seeking to compel payment of their compensation. See Totten v. United States, 92 U.S. 105 (1876). (One of my own niche areas of law practice is working with covert operatives in the course of their estate planning to develop strategies to address the fact that their heirs can't sue the government for their unpaid compensation.)

It also prevents people injured in covert operations from suing for personal injuries. See United States v. Reynolds, 345 U.S. 1 (1953).

Despite the fact that the state secrets privilege is formulated as an evidentiary matter, in pratice, it operates as a form of governmental immunity for liability involving contract, tort, and property rights for which the government would ordinarily have liability.

Note, however, that the federal government has specifically waived sovereign immunity for violations under the Lanham act, the federal law that governs trademark rights (15 U.S.C. § 1122). So, all federal trademark laws can be applied to the government, if the state secrets doctrine doesn't apply and it is actually infringing on a private firm's trademark.

Answer 2

Which project?

A top-secret government project does not exist. If you try to sue, your lawyer will get told it does not exist, and if you insist it does, the case is dismissed as moot: You can not sue for something that - as far as the government dictates - does not exist.

Ok, let's assume the operation gets declassified immediately after it happened.

What IP? Copyright or Patents don't apply!

There's clearly no copyright infringement going on, as names are not copyrightable in the first place. That means, nobody can own a copyright in a name. Or a patent, as a name is not a useful invention.

As a result, you can not sue for copyright or patent infringement, as there was none.

Operation Mickey Mouse wouldn't infringe on trademark rights

Now, Trademark is something different. But Trademark Infringement is very narrow. The main goal of trademark law is, that a trademark is to indicate the source of an item. So one of the simplest causes is, that you can not use a trademark you don't own in a fashion that might cause confusion between your product and someone else's product. Like, I could not use Conan for Fantasy Books, as Conan is copyrighted there.

But: A Military operation is not a product that is entering the market at all. It does not infringe on anyone's trademark rights, as it is not a commercial item that could be sold or cause confusion of origin. It's clearly a military operation, nothing else. So you don't have a cause to sue!

Mickey Mouse/Micki Maus was a project already...

The Abduction of Horthy was allegedly codenamed like that. However, it seems Panzerfaust was the more formal codename.

And no military wants to nickname itself poorly run company.