Lucasfilm Ltd. and Lucas Licensing, Inc.v.Mark Rose

Trademark Trial and Appeal Board

Aug 29, 2002

No. 91112743 (T.T.A.B. Aug. 29, 2002)

Mailed: August 29, 2002
Paper No. 19
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Lucasfilm Ltd. and Lucas
Licensing, Inc.
v.
Mark Rose, dba Merope Games
_____
Opposition No. 112,743
to application Serial No. 75/330,318
filed on June 26, 1997
_____
Carole F. Barrett and Tuan T. Le of Coudert Brothers LLP for
Lucasfilm Ltd. and Lucas Licensing, Inc.
Mark Rose, pro se.
______
Before Simms, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Mark Rose dba Merope Games has filed an application to
register THE FORCE as a trademark for “equipment used to
play a card game.”1
Registration has been opposed by Lucasfilm Ltd. and
Lucas Licensing, Inc. under Trademark Act Section 2(d).
1 Serial No. 75/330,318 filed June 26, 1997 alleging first use on
May 23, 1997 and first use in commerce on June 4, 1997.
Opposition No. 112,743
2
Opposers allege that they are the creators and producers of
the Star Wars motion pictures; that these motion pictures
are familiar to hundreds of millions of people in the United
States and throughout the world; that the first of the Star
Wars motion pictures, namely, The Empire Strikes Back, was
released for theatre viewing in May 1977; that a central
theme in the Star Wars motion pictures is the manipulation
of extrasensory powers, referred to as The Force, on the
side of either good or evil; that the Star Wars mythology is
premised on the power of the Force as “the generative or
creative impulse, a spiritual energy that courses through
the Star Wars universe and that promises victory in the
struggle between the noble Rebel forces and the evil Empire
to whomever most effectively marshals that power on its
side”; that as a result, the public closely associates the
well known slogans May The Force Be With You and The Force
with opposers; that opposers continue to use May The Force
Be With You and The Force as trademarks and service marks in
connection with the Star Wars motion pictures; that opposers
first used the mark MAY THE FORCE BE WITH YOU on posters at
least as early as July 1, 1977 and the mark THE FORCE on
toys at least as early as July 27, 1977; that opposers own
several registrations for the mark STAR WARS, including
registrations which cover equipment sold as a unit for
playing a board game, puzzles, equipment sold as a unit for
Opposition No. 112,743
3
playing a video game, and videogame cartridges; that for
many years opposers have operated a substantial marketing
and licensing program to promote products based on the Star
Wars motion pictures; that opposers have aggressively
promoted the marks STAR WARS, THE FORCE and MAY THE FORCE BE
WITH YOU; that the marks THE FORCE and MAY THE FORCE BE WITH
YOU have been used at least as early as 1977 in association
with the first Star Wars motion picture; that as a result of
opposers’ extensive advertising and use of these marks in
connection with the Star Wars motion pictures, these marks
are closely associated with opposers in the minds of the
general public; and that applicant’s use of the mark THE
FORCE for equipment used to play a card game is likely to
cause confusion as to the origin, source or sponsorship of
applicant’s goods.
Applicant, in his answer, admits that opposers are the
creators and producers of the Star Wars motion pictures, and
that these motion pictures are familiar to hundreds of
millions of people in the United States and throughout the
world. Applicant denies the remaining salient allegations
of the likelihood of confusion claim and affirmatively
alleges that “Opposer does not use THE FORCE as a trademark
and service mark in connection with goods or services so as
to cause a likelihood of confusion with the proposed mark of
Applicant.”
Opposition No. 112,743
4
The record consists of the pleadings; the file of the
involved application; and opposers' notice of reliance on
a photocopy of Registration No. 1,126,381 for the mark STAR
WARS which covers, inter alia, “equipment sold as a unit for
playing a board game;”2 copies of office correspondence
indicating that the registration has been renewed; printouts
from the Office’s TESS database of opposers’ application
Serial Nos. 75/495,647 and 75/496,228 for the mark THE FORCE
for a variety of toys and games, including “card games”;
excerpts from the book A Guide To The Star Wars Universe;
and a printout of information downloaded on July 19, 2000
from the “Star Wars” web site. Accompanying the notice of
reliance is the declaration of one of opposers’ officers,
Tonik Barber, who states that Registration No. 1,126,381 is
owned by opposers and is valid and subsisting; and that
opposers filed application Serial Nos. 75/495,647 and
75/496,228.3
2 The photocopy does not show status and title.
3 While a party may not generally establish ownership of a
registration or application by way of notice of reliance and a
declaration, in this case, applicant has not objected to the
materials. Thus, we consider applicant to have stipulated to the
entry of these materials for purposes of establishing opposers’
ownership of the registration and applications. Similarly, while
a printout retrieved from the Internet does not qualify as a
printed publication under Trademark Rule 2.122(e) and generally
may not be introduced in an opposition by means of a notice of
reliance, in this case, applicant has not objected to the
printout. Thus, we consider applicant to have stipulated to the
entry of the printout into the record.
Opposition No. 112,743
5
Applicant took no testimony and offered no other evidence.
Both parties filed briefs on the case.
It is essentially opposers’ position that they have
rights in the slogans THE FORCE and MAY THE FORCE BE WITH
YOU “that are superior to the alleged rights applicant has
in THE FORCE.” (Brief, p. 4). Opposers contend that the
slogans THE FORCE and MAY THE FORCE BE WITH YOU have been
associated with opposers and the Star Wars motion pictures
since the first film was released in 1977, and that because
of the fame of the motion pictures, the public
associates these slogans with opposers. Further, opposers
argue that these slogans are identical/similar to
applicant’s applied-for mark THE FORCE; and that opposers’
Star Wars motion pictures and applicant’s card game are
sufficiently related that confusion is likely to result from
contemporaneous use of the phrases and applicant’s mark.
Applicant, on the other hand, argues that opposers have
“failed to produce evidence where THE FORCE mark was used on
goods in class 28 prior to applicant’s approval”; that
opposers continually refer to their use of Star Wars, but
that “Star Wars or anything similar appears nowhere on
applicant’s mark;” and that opposers have submitted no proof
of damage or actual confusion. (Brief, pages 1-2).
Opposition No. 112,743
6
Considering first the issue of priority, our primary
reviewing court in T.A.B. Systems v. PacTel Teletrac, 77
F3d. 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996), noted:
In an opposition founded on section 2(d), the opposer
must establish its own proprietary rights in the same
or a confusingly similar designation in order to
defeat the application. It is well settled that one
may ground one’s opposition to an application on the
prior use of a term in a manner analogous to service
mark or trademark use. Such an “analogous use”
opposition can succeed, however, only where the
analogous use is of such a nature and extent as to
create public identification of the target term
with the opposer’s product or service. (citations
omitted).
At the outset, we wish to make clear that opposers have
failed, on this record, to establish technical trademark or
service mark use of THE FORCE or MAY THE FORCE BE WITH YOU
in connection with any goods or services prior to
applicant’s alleged date of first use. Opposers submitted
no testimony and/or documentary evidence during their
testimony period that would establish such prior technical
trademark or service mark use. Although opposers pleaded
prior use of THE FORCE and MAY THE FORCE BE WITH YOU as
“marks”, mere allegations in a notice of opposition (unless
admitted) are not proof of the matter pleaded. In this
case, applicant did not admit these allegations. Thus, we
turn to the question of whether opposers have used THE FORCE
and MAY THE FORCE BE WITH YOU in a manner analogous to
trademark or service mark use prior to applicant’s alleged
Opposition No. 112,743
7
date of first use. In this regard, we note that A Guide to
the Star Wars Universe (1994) contains the following entry:
Force, the
The force is an energy field generated by all
living things. It surrounds and penetrates
everything, binding the galaxy together. Like
any energy field, the Force can be manipulated.
Knowledge of these manipulation techniques
gives the Jedi Knights their powers. There are
two sides to the Force: the peace, knowledge,
and serenity of the light side, and the anger,
fear, and aggression of the dark side. Both
sides of the Force are a part of the natural
order, life-affirming and destructive. Through
the Force, a Jedi Knight can see far-off places,
perform amazing feats, and accomplish what
would otherwise be impossible.
There are three known Force skills: control,
sense, and alter. Only Force-sensitive beings
can master Jedi skills and the techniques they
control. The control skill is the ability of
the Jedi to control his or her own inner Force.
With this skill the Jedi learns to master the
functions of his or her own body. The sense
skill helps a Jedi sense the Force in things
beyond and outside themselves. A Jedi learns
to feel the bonds that connect all things.
The alter skill allows a Jedi to change the
distribution and nature of the Force to create
illusions, move objects, and change the
perceptions of others.
In addition, we judicially notice the following two entries
from A Dictionary of Catch Phrases (American and British,
from the Sixteenth Century to the Present Day) (1992)4:
force: See: brute force; don’t force; may
the Force.
4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Opposition No. 112,743
8
may the Force be (or go) with you!: Picked up from
Star Wars – now jocular for “God bless you”
(Ashley, 1983, from US). The Star Wars series
of films burst upon the world from Hollywood in
the late 1970’s; in UK the phrase may have
enjoyed much quot’n, but never really became a
c.p., except perhaps as a punning ref. to the
Police Force.
Also, applicant has admitted in his answer that opposers are
the creators and producers of the Star Wars motion pictures;
that the first Star Wars motion picture was released for
theatrical exhibition in May 1977, followed by The Empire
Strikes Back in 1980 and The Return of the Jedi in 1983; and
that the Star Wars motion pictures are familiar to hundreds
of millions of people in the United States and throughout
the world.
Because the Star Wars motion pictures are familiar to
millions of people in the United States, there is simply no
question that THE FORCE and MAY THE FORCE BE WITH YOU are
well known slogans that the public associates with these
motion pictures and opposers. The fame of the slogans THE
FORCE and MAY THE FORCE BE WITH YOU is evidenced by their
inclusion in a dictionary. See e.g., The B.V.D. Licensing
Corp. v. Body Action Design Inc., 846 F2d. 727, 6 USPQ2d
1719, 1720 (Fed. Cir. 1988) [In finding that “B.V.D.” is a
famous trademark for underwear, the court noted “[w]hen a
trademark attains dictionary recognition as a part of the
language, we take it to be reasonably famous.”]. Thus, we
find that opposers have proprietary rights in THE FORCE and
Opposition No. 112,743
9
MAY THE FORCE BE WITH YOU dating from the release of the
first Star Wars motion picture in May 1977, which is prior
to applicant’s alleged date of first use.
We turn then to the issue of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant
to the likelihood of confusion factors set forth in In re
E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).
Considering first opposers’ slogans THE FORCE and MAY
THE FORCE BE WITH YOU and applicant’s applied-for mark THE
FORCE, it is obvious that opposer’s THE FORCE and
applicant’s mark THE FORCE are identical. Moreover, we find
that opposers’ MAY THE FORCE BE WITH YOU, the dominant
portion of which is THE FORCE, and applicant’s mark THE
FORCE are substantially similar. The parties’
slogans/marks, in short, are so similar/identical that, if
used in connection with the same or closely related
products, confusion as to the origin or affiliation of such
products would be likely.
Turning, therefore, to consideration of the respective
goods, it is well settled that goods need not be identical
or even competitive in nature in order to support a finding
of likelihood of confusion. Instead, it is sufficient that
the goods are related in some manner and/or that the
Opposition No. 112,743
10
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks
employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with
the same producer or provider. See e.g., Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In the circumstances of this case, we concur with
opposers that its Star Wars motion pictures, on the one
hand, and applicant’s card game, on the other hand, are
related products. It is common knowledge that motion
picture companies license their marks for use on a variety
of products. Indeed, opposers are the owners of a
registration for the mark STAR WARS for a board game and an
application for the mark THE FORCE for a card game.
Moreover, the potential for confusion as to the origin or
sponsorship of applicant’s card game is heightened by the
fact that card games are relatively inexpensive items and
are sold to ordinary consumers. Thus, a great deal of care
would not be exercised in their purchase.
Further, a review of the specimens (shown below)
submitted with applicant’s application reveals that the card
game is identified as “A Space Age Card Game” and THE FORCE
Opposition No. 112,743
11
mark (in increasing size) is displayed on a background
depicting a galaxy along with laser lights.
This certainly evokes the theme and imagery of opposers’
Star Wars motion pictures.
Finally, with respect to applicant’s argument that
there is no proof of actual confusion or damage to opposers,
Opposition No. 112,743
12
in the absence of any evidence concerning the extent of
applicant’s sales of his card game, we are unable to
determine whether there has been an opportunity for
confusion to occur. In any event, the test is not actual
confusion, but likelihood of confusion.
In sum, based on the identity/substantial similarity in
the slogans/marks, and the relatedness of the goods, we find
that there is a likelihood that the purchasing public would
be confused as a result of applicant’s use of the mark THE
FORCE for equipment for playing a card game in view of
opposers’prior use of the slogans THE FORCE and MAY THE
FORCE BE WITH YOU in their Star Wars motion pictures. In
particular, purchasers are likely to believe that
applicant’s equipment for playing a card game originates
with or is sponsored by or licensed by opposers.
Decision: The opposition is sustained.