Choosing a trademark may be more difficult than you think. You might be focusing on the catchiness of the name, but there are legal considerations that should be considered as well, such as the possibility of infringing some other trademark.
People often think that if they aren’t aware of anyone else using the same trademark, it’s okay. They may rely on a quick search of the US Patent and Trademark Office (USPTO) database for the exact mark.
One problem with relying on a search like this is that a mark is protected by trademark law whether or not it is registered. In addition, a trademark doesn’t have to be identical to another mark in order to be found infringing.
The test for infringement is whether the marks are confusingly similar. This is determined not just by comparing the marks themselves, but by reviewing various other factors, including the types of goods or services and the channels of sale.
Sometimes a trademark user knows the mark is very similar to someone else’s but thinks it’s okay because they’re using it in a humorous way.
While there is a parody defense to trademark dilution claims, parody isn’t a defense to an infringement claim. The only way a parodic use of a trademark won’t be infringing is if there is no likelihood of confusion between the two marks.
The Trademark Trial and Appeal Board (TTAB) recently found that the mark MILLENNIAL FALCON for entertainment services is confusingly similar to the mark MILLENNIUM FALCON, registered by Lucasfilm for toy vehicles.
Millennium Falcon is the name of the spaceship piloted by Han Solo and Chewbacca in STAR WARS films and the MILLENNIUM FALCON mark has been used in connection with a variety of products in addition to toy vehicles, including films, concerts, TV programs, games, music, comic books, amusement park rides, and clothing.
In 2016, Ilan Moskowitz (aka Captain Contingency) began using the MILLENNIAL FALCON mark for his musical performances.
According to Moskowitz, he “envisioned his band as a kind of privateering ship, where he played the role of captain (Captain Contingency) with a crew of like-minded musicians, all of whom identified as members of the Millennial generation” and “wanted his band name to make a statement about millennial-age attitudes toward Disney and Star Wars corporate culture.”
Lucasfilm filed an opposition to the application Moskowitz filed with the USPTO for registration of MILLENNIAL FALCON for use in connection with live and recorded performances by a musical performance group.
The TTAB pointed out that Lucasfilm is the prior user, and then addressed the similarity of the marks.
Noting that the marks are nearly identical in appearance, sound, connotation, and commercial impression and that they are both arbitrary with respect to the parties’ goods and services, the TTAB addressed Moskowitz’s parody claim.
He argued that his mark is a parody because the MILLENNIAL FALCON is his vehicle for rebelling against the overreaching corporate empire, just as the MILLENNIUM FALCON used by rebel forces to fight a totalitarian empire.
Moskowitz also said that the name MILLENNIAL FALCON pokes fun at a pop culture nostalgia experienced by the Millennial generation when using Lucasfilm’s products and services.
Despite Moskowitz’s intention that MILLENNIAL FALCON be seen as a parody, the TTAB found that there was no evidence that “the relevant public perceives the mark in that way.”
As a result, the TTAB refused registration of Moskowitz’s mark MILLENNIAL FALCON. It went on to say that Moskowitz, “as the newcomer, had the obligation to select a mark that would avoid confusion” but failed to do so.
To help avoid problems like this when you choose a trademark for your product or service, obtain the opinion of an experienced trademark lawyer before concluding that you can rely on a parody defense.
Further, anyone choosing a new trademark should have a thorough trademark search conducted, covering not only the US Patent & Trademark Office’s registrations, but other databases and the Internet.
It would also be prudent to check the Canadian and Mexican registrations, as well as those of other pertinent foreign jurisdictions, particularly if you use your mark online.
Please feel free to contact us if you have any questions about or need assistance with conducting a trademark search or protecting your trademarks.
Photo by Carol Kennedy on Unsplash
