The Chronicles of Narnia was one of my favorite books as a child. One of my favorite characters in the books was Aslan the lion. For many familiar with the book, the word “Aslan” conjures up an image of the lion from the book. As such, one equates the term “Aslan” with a lion. A registrant made this very argument in a recent opposition proceeding at the Trademark Trial and Appeal Board.

A Virginia law firm, Aslan Law PC (“Aslan”), recently filed an opposition proceeding against a law firm in Texas, Thompson Law, LLP (“Thompson”), for trying to register LION LAW as a trademark.  Aslan cited a likelihood of confusion with their ASLAN LAW® marks.

Background

Aslan owns two registered trademarks for ASLAN LAW®. The first mark registered in class 45 for “Legal services, namely, intellectual property law services in the areas of patents, trademarks, and copyrights”. The mark for legal services registered December 26, 2017. The date of first use was August 22, 2016.

The second ASLAN LAW® mark is in class 41 for “Organization and staging of seminars, lectures, symposia, workshops, non-downloadable webinars, and podcasts in the field of the law; providing online publications, namely, newsletters, periodicals, and pamphlets in the field of the law; Educational services, namely, conducting seminars, lectures, classes, workshops, and conferences in the field of the law and distribution of educational materials in connection therewith”. This mark registered January 9, 2018. The date of first use was September 26, 2016.

Thompson filed for LION LAW on February 26, 2020 with a first use in commerce of September 5, 2017. Thompson previously registered other marks related to the LION LAW name, such as 1-800-LION-LAW and 1800LIONLAW.COM. Both of these marks registered in November of 2018. Both claim a first use in commerce of September 5, 2017.

Aslan argues that that there is likelihood of confusion between ASLAN LAW® and LION LAW. Aslan notes that their registration for both marks enumerates that the English translation of the word “Aslan” is “lion”. Further support provided that “Aslan” means “lion” in at least modern Turkish, Kazakh, Azerbaijani, Chechen, Ossetian, and Circassian languages. All of these languages are current languages spoken by thousands of people in the United States. A search of “Lion Law” also returns search results for “Aslan Law” in the Trademark Electronic Search System (TESS). In light of this, Aslan argues that had Thompson conducted a trademark search, they would have found Aslan’s marks.

Takeaways

This case illustrates the importance of having an attorney conduct a trademark search prior to filing for a mark. The case also highlights the fact that one must consider foreign language equivalents when choosing a mark. Here, while the words “Aslan” and “lion” do not sound similar, the fact that “Aslan” means “lion” in several modern languages is one factor leaning towards Aslan prevailing in this case. The ordinary American purchaser is defined as one who is familiar with the foreign language. The ordinary American purchaser is not limited to only speaking English. The fact that Aslan has both prior use as well as a prior registration also points towards Aslan prevailing in this case. It will be interesting to see if/how Thompson responds to the Notice of Opposition.

Michele Lawson

Michele Lawson is a U.S. Registered Patent Attorney.