By Robert B. Barnett Jr. J.D.
Given the similarity of the MILLENNIAL FALCON and MILLENNIUM FALCON marks, consumers were likely to mistakenly believe that both were from the same source.
Lucasfilm has successfully stopped a musician from registering the mark MILLENNIAL FALCON in connection with a live musical show intended as a parody of Disney’s corporate culture. There was a strong likelihood that consumers would confuse the source of MILLENNIAL FALCON with Lucasfilm’s original MILLENNIUM FALCON mark from the Star Wars films, the Trademark Trial and Appeal Board has determined. Parody cannot be used as a justification for similar marks where the parody is not inherently obvious in the differences between the two marks. Furthermore, the likelihood that patrons of the musical show would confuse the two marks was enhanced by the fact that the MILLENNIAL FALCON mark was chosen precisely to conjure up images of the MILLENNIUM FALCON mark (Lucasfilm Entertainment Co. Ltd. LLC v. Moskowitz, October 16, 2020, Lebow, M.).
Background. Ilan Moskowitz is a musician who performs under the name Captain Contingency. He filed a registration for the mark MILLENNIAL FALCON to identify a musical stage show that he described as a parody and satire of corporate culture, particularly of Disney, which has owned the Star Wars brand since 2012. Lucasfilm Entertainment Company Ltd. LLC, the owner of the mark MILLENNIUM FALCON from the Star Wars films, filed an objection.
Likelihood of confusion. In determining whether the MILLENNIAL FALCON mark would be likely to cause confusion with the MILLENNIUM FALCON mark in violation of Section 2(d) of the Trademark Act, the Board weighed the factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Similarity of the marks. The two marks were deemed to be "almost identical in appearance, sound, connotation, and commercial impression," differing only in the last two letters of the first word. In fact, the similarity was the whole point, with the musician acknowledging that the similarity was necessary for the parody to work. The Board rejected the musician’s argument that the similarity should be permitted because it was offered in parody. While similarity is permitted in parody, the rule only applies where the parody is obvious from the similarities. In this case, a consumer would not be likely to intuit that MILLENNIAL FALCON was a parody of MILLENNIUM FALCON. The similarity of marks, therefore, weighed in favor of a finding of a likelihood of confusion.
Similarity of goods and services. The musician argued that the goods were not similar because he was offering a live musical performance, while the MILLENNIUM FALCON mark applied to movies, toys, and games. The MILLENNIUM FALCON mark was so well known, however, and had been used for so long, including in musical performances of the Star Wars soundtrack, that it had become a merchandising mark that had seeped into every corner of our culture. As a result, consumers in any venue hosting the MILLENNIAL FALCON were likely to know the MILLENNIUM FALCON mark and to believe that the two marks came from the same source. As a result, the Board concluded that this factor weighed in favor of a finding of likelihood of confusion.
Similarity of channels. The musician argued that the goods were not offered in similar channels because he was offering his product to adults in bars and music venues while Lucasfilm offered its mark to children in toy stores. The comparison was generally valid but, once again, the MILLENNIUM FALCON mark was a merchandising mark with enormously wide recognition. As a result, this factor weighed "slightly" in favor of a finding of likelihood of confusion.
Customer sophistication. Once again, the musician argued that his customers were different because his product was being offered to adults rather than to children. Those adults, however, were likely to know very well the MILLENNIUM FALCON mark. As a result, the Board concluded that this factor was neutral.
Strength of mark. In terms of strength of the mark, it would be difficult to imagine too many marks stronger than the Star Wars marks, which have existed in popular culture since 1973. They are wildly popular, and they have generated significant revenue for the mark owners. The MILLENNIUM FALCON mark also has strength because it was invented by Lucasfilm and has no other meaning beyond Han Solo’s spaceship in the Star Wars films. Because the MILLENNIUM FALCON mark "enjoys the highest level of renown as a trademark," the Board concluded that the strength of mark factor weighed in favor of a finding of likelihood of confusion.
Actual confusion. Actual confusion was neutral because the musician’s mark was largely prospective, so little or no actual confusion could be documented yet. The absence of actual confusion does not weigh in favor of the applicant unless the applicant has a long history of using the mark.
Bad faith. Plenty of evidence existed that the musician sought the MILLENNIAL FALCON mark to trade off on the popularity of the MILLENNIUM FALCON mark. But was that evidence of bad faith, as Lucasfilm had argued? Ultimately, the Board concluded that the musician’s failed attempt to parody the original mark did not necessarily constitute bad faith. As a result, this factor was deemed neutral.
The Board, therefore, weighing the various factors, concluded that Lucasfilm had sufficiently established a likelihood of confusion and, thus, the opposition was sustained and the registration was denied.
This case is Opposition No. 91244449.
Attorneys: Linda K. Mcleod (Kelly IP, LLP) for Lucasfilm Entertainment Co. Ltd. LLC. Ilan Moskowitz a/k/a Captain Contingency, pro se.
Companies: Lucasfilm Entertainment Co Ltd. LLC
MainStory: TopStory Trademark GCNNews USPTO
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