Most people know the Millennium Falcon from the Star Wars movies. The Star Wars films have grossed billions of dollars since 1977 when the first movie debuted. Similarly, various aspects of the films, such as the Millennium Falcon, are licensed and depicted on a number of goods which themselves gross millions of dollars for the company. Lucasfilm Entertainment Company Ltd. (“Lucasfilm”) owns a registered trademark for MILLENNIUM FALCON for “toy vehicle” in class 28. Below is an example of the toy Millennium Falcon:
Ilan Moskowicz, AKA Captain Contingency, (“Moskowicz”), filed an intent to use application for the trademark MILLENNIAL FALCON for entertainment services in the nature of live visual and audio performances by a live musical performance group in class 41. Lucasfilm filed an opposition proceeding citing a likelihood of confusion.
Likelihood of Confusion Between MILLENNIUM FALCON and MILLENNIAL FALCON
Moskowicz, as a pro se Applicant, argues that his mark is a parody on the MILLENIUM FALCON mark. He asserts that a “millennial” is a person born in the 1980s or 1990s. This person possesses a presumed set of attitudes and behaviors. He states that he created a trademark that is in critical and obvious opposition to the MILLENIUM FALCON mark. Specifically, Moskowicz asserts he “chose to parody the corporate culture represented by Millennium Falcon to lampoon the glut of marketing and production of elements of the franchise aimed at the Millennial generation by Disney/[Opposer] in their attempt to control the market for entertainment on all levels.” Accordingly, Moskowicz alleges that there are differences between the marks.
The Trademark Trial and Appeal Board (“TTAB”) rejected this argument. They noted that Moskowicz admitted that MILLENNIAL FALCON conjures up the phrase Millennium Falcon. The TTAB also stated no evidence showed that the relevant public perceives the mark in this way. Accordingly, they found no parody in the wording. The TTAB noted parody is a viable defense only when the involved marks are not otherwise found confusingly similar. However, this is not the case here. The two marks are highly similar in both sound and appearance.
Similarity of goods and services
Moskowicz uses his mark for live visual and audio performances by a live musical performance group. In contrast, Lucasfilm registered its mark for toy vehicles. Lucasfilm also presented evidence of marketing and sales of a wide range of consumer products and merchandise relating to the Star Wars films, including the Millennium Falcon. Such sales occurred through itself, parent company Disney, or various licensees. Such consumer products range from books, games, and toys to an online soundboard, loudspeaker, and simulator ride at Disney Theme Parks.
The TTAB found this evidence compelling. They noted that MILLENNIUM FALCON is a merchandising mark. It is “part and parcel of the STAR WARS mythos in promoting Opposer’s films and music, and has been the subject of licenses for numerous collateral products.” The TTAB acknowledged that while Lucasfilm does not specifically provide concerts and musical recordings under the MILLENNIUM FALCON mark, the well-known mark is associated with STAR WARS films, television series, musical recordings and concerts. Accordingly, the TTAB found that consumers encountering the MILLENNIAL FALCON mark in connection with musical performances are likely to believe that the mark has been licensed by Lucasfilm for such services.
Strength of MILLENNIUM FALCON mark
The TTAB also found that the MILLENNIUM FALCON mark is a fanciful term that is an inherently strong mark. The commercial strength of the mark is also strong. Sales figures, advertising expenditures, and length of time of use of the mark support the mark’s strength. The TTAB stated that the MILLENNIUM FALCON mark falls short of being a famous mark. However, it is commercially very strong and enjoys a high level of recognition. In light of the foregoing, the TTAB found a likelihood of confusion between the marks and refused registration of MILLENNIAL FALCON.
It is of the utmost importance to hire an experienced trademark attorney for your brand. Here, Moskowicz elected to represent himself pro se, which likely hurt him in the long run. Moskowicz tried to use parody as a defense to likelihood of confusion. Unfortunately, Moskowicz could not show parody in the mark itself. He applied for the mark knowing that it would call to mind the MILLENNIUM FALCON mark. He also continually used Star Wars references in the use of his mark, such as on posters and backdrops for his band that prominently feature Star Wars characters or themes. The evidence pointed to his trading off the MILLENNIUM FALCON mark as opposed to parody. As noted by the TTAB, parody can be used successfully against a likelihood of confusion when the marks are not otherwise found confusingly similar. Here, the evidence weighed heavily in favor of a likelihood of confusion.
Compare this case with the previously blogged Jack Daniels case. In that case, the Court of Appeals found a whiskey-shaped dog toy labeled “Bad Spaniels” a parody of the JACK DANIELS trademark. The Appeals Court found that the dog toy communicates a humorous message and was a parody protectable under the First Amendment. Jack Daniels appealed the case to the Supreme Court.
A trademark is a word, symbol, or name used in commerce to distinguish one’s goods from another’s goods.
A likelihood of confusion occurs between two marks when a consumer is likely to believe that the goods offered under the marks emanate from the same source.
Each Circuit has a slight variation on the factors considered for a likelihood of confusion. For example, the 11th Circuit, which includes Florida, evaluates the following factors: (1) strength of the mark; (2) similarity of the marks; (3) similarity of the goods or services; (4) similarity of customers and trade channels; (5) advertising similarities; (6) infringing party’s intent in using the mark; and (7) evidence of actual confusion.