Princess Leia looks at the Millennium Falcon in the movie "Star Wars: A New Hope (1977)" and says to Han Solo: "You came in that thing? You're braver than I thought ".
It will not take long for the Millennium Falcon to display her superior features which will negate this underestimation later on in the movie.
We don't think there is anyone who does not know about the Star Wars series. In addition to the fiction, characters, music and story of the series, several objects in the series (such as X-Wing Starfighters, Lightsaber, Imperial TIE Starfighters, Death Star, etc.) have become iconic as well. Another one of these icons is the spaceship "Millennium Falcon".
The Millennium Falcon, piloted by Han Solo and Chewbacca, is the fastest ship in the Republic Navy, going beyond the speed of light and she would successfully survive countless battles and chases throughout the series.
Han Solo says the following about the Millennium Falcon in "Star Wars: A New Hope (1977)": "Fast ship? You've never heard of the Millennium Falcon?...I've outrun Imperial starships. Not the local bulk cruisers mind you, I'm talking about the big Corellian ships now...She may not look like much, but she's got it where it counts, kid. I've made a lot of special modifications myself."
We have mentioned that not only the name or the story of the Star Wars series, but also its characters, the races created, the clothing and accessories used, the soundtrack and the objects in the series have become iconic. Fans of the series around the world show great interest in all kinds of products of the series, and the rights holders of the film series, of course, ensure that licensed products are produced and commercialized in different sectors using almost every character and object. After the entertainment giant Disney bought the production, marketing, distribution and sales rights of the series in 2012, commercialization became much more intense.
The protection of the trademarks related to the series against their counterparts constitutes one aspect of the legal struggle regarding the series. The dispute that we will address in this article is about the aforementioned aspect.
"Ilan Moskowitz" (the applicant), also known as "Captain Contingency", applied to the U.S. Patent and Trademark Office (USPTO) in order to register the word mark "MILLENNIAL FALCON". The application covered services that can be summarized as "entertainment services in nature of live musical performance by musical bands, production services of sound and music recordings" included in Class 41.
"Lucasfilm Entertainment Company Ltd. LLC" (the Opposer) opposed the application, alleging prior use and registration of the mark MILLENNIUM FALCON for "Toy vehicles" belonging to Class 28 on the grounds that the application is likely to cause confusion and dilution by blurring of Opposer's famous mark.
The opposition was examined by the Trademark Appeal Board of USPTO and concluded on October 16, 2020. The decision of the Appeal Board can be viewed through this link.
The Applicant and the Opposer presented various evidence and documents regarding the opposition. Among the evidence presented by the Opposer, the elemental ones are documents showing the use of the MILLENNIUM FALCON mark by itself or by licensees, website printouts, news, product images and statements. The Applicant presented promotional flyers, advertisements, web site printouts and statements relating to Applicant's use of the mark MILLENNIAL FALCON.
Although the parties objected to each other's evidence, these arguments will not be discussed in the article.
Brief information about the Applicant and the Opposer was given in the continuation of the Appeal Board's decision.
According to this, the Applicant is a performer who decided to use the Millennial Falcon trademark for his musical performances in May 2016. The musical performances of the applicant are a parody of, and satirical comment on, corporate culture, and in particular the culture of the entertainment behemoth, Disney, which he claims "swallowed the entire Star Wars privileges in the preceding years". The application envisioned his band as a kind of privateering ship, where he played the role of captain (Captain Contingency) and like-minded musicians form the crew. The captain and the crew are members of the Millennial Generation, and they wanted their band name to make a statement of millennial generation toward Disney and Star Wars corporate culture. Applicant began using the mark MILLENNIAL FALCON in connection with his musical performances on August 5, 2016, after he filed his application.
Opposer, "Lucasfilm Entertainment Company Ltd. LLC", was founded in 1971 and is the owner of the Star Wars film franchise. The Star Wars series, the first one of which was shot in 1977, continued till today with ten Star Wars films. Star Wars series, set in a fictional universe, are based on main characters such as Luke Skywalker, Darth Vader, Yoda, Obi-Wan Kenobi, Princess Leia, Han Solo, Chewbacca, R2-D2, Rey, Lando Calrissian, and elements or concepts such as the Millennium Falcon, Death Star, Lightsaber, The Force, Jedi, and Sith.
The film series generated hundreds of millions of dollars in revenues and earned many awards, including Academy Awards. The musical scores of the film series have also gained great success, and in 2005 the soundtrack album of the film was recorded in the Library of Congress for its cultural, historical, and aesthetically significance. Star Wars concerts, promoted with various elements of the film, including the Millennium Falcon, were also held.
Opposer itself or its licensees have marketed toys of Millennium Falcon spaceship, models, tens of different products or services comprising the name or appearance of this spaceship. Among these products and services, there are entertainment services, theater productions, television programs, motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-care products, linens, towels, apparel, food, online games, computer games, video games, music, and mobile applications.
In addition to these elements, the term Millennium Falcon is used in the title of two songs in the soundtrack albums of the film series: "The Millennium Falcon / Imperial Cruiser Pursuit" (1997, Star Wars: A New Hope soundtrack album; "L3 & Millennium Falcon" (2018, Solo: A Star Wars Story soundtrack album).
The Opposer included images showing the usage by itself and its licensees, and several of these are also included in the Appeal Board's decision.
The Appeal Board examined the opposition in the light of the information, claims, evidence and documents summarized above.
In order to accept the likelihood of confusion between trademarks, DuPont factors, which are considered by the Office and which we will examine one by one in terms of concrete case, play an important role in determining the likelihood of confusion. This examination is made by considering the evidence presented by the parties. The office first examined the priority right of the Opposer and even though the prior trademark is registered for "toy vehicles", it accepted the use of the phrase "MILLENNIUM FALCON" on many different products in accordance with the presented evidence, since the prior trademark of the Opposer was intensely used since its registration date.
As a result, examination was carried out in terms of DuPont factors, respectively.
- Similarity of the Marks
The first DuPont factor is the evaluation to be made in terms of the similarities and dissimilarities of the marks as appearance, sound, connotation and commercial impression. In the concrete case, this evaluation was made between the earlier MILLENNIUM FALCON and the new trademark application MILLENNIAL FALCON. It was concluded that both marks were identical in appearance, sound, connotation and commercial impression. Because:
- It was stated that the only difference between the two expressions was in the last two letters of the words.
- While the name MILLENNIUM means "a time period of 1000 years", it was stated that the term MILLENNIAL is an adjective form of the phrase MILLENNIUM and means "relating to MILLENNIUM" and therefore they convey the same connotation and commercial impression.
By considering these findings, the Office stated that "what is important is the perception of the possible consumer perception, rather than applicant's intended connotation" against the parody claims of the applicant. It was decided that the parody defense was rejected because the marks did not have any difference in the eyes of the possible consumer and did not carry the necessary conditions for the parody claim to be valid. In conclusion, the first DuPont factor decided that the similarity between the marks would cause a likelihood of confusion.
- Similarity of the Goods and Services
The second DuPont factor examination was carried out on the similarity or dissimilarity of the goods or services as described in the applications.
At this point, the Office states that it is not necessary that the goods and services be identical or even related to support a finding of a likelihood of confusion between the goods and services.
As a result of the examination;
- Even though the goods and services are not identical with each other, it was observed that the prior registrant had its trademark used through license on other products being different from the registered products in order to promote its films and music.
- It was proved by evidence that the aforementioned uses extend to many characters and elements belonging to the Star Wars universe, including the phrase MILLENNIUM FALCON, to a wide range of products such as entertainment services, theater productions, apparel, food, online games, and computer games.
- Although the phrase MILLENNIUM FALCON is not directly used for musical recordings and concerts, it was decided from the evidence that the MILLENNIUM FALCON, a well-known Star Wars element, can easily be associated with the application "by creating the perception to be coming from the same source".
Therefore, the second DuPont factor also supported the possibility of the likelihood of confusion.
- Similarity of Trade Channels and Classes of Purchasers
In the examination of the third factor, it is emphasized whether the products bearing similar expressions appeal to the same or similar classes of purchasers and whether the trade channels are similar.
Applicant argued that trade channels are widely separated from each other because the Millennial Falcon would reach the clientele in venues appealing to the adults such as bars, nightclubs, and the like, he would not reach the consumers where goods are presented by Disney such as toy stores unlike the goods with the phrase MILLENNIUM FALCON of the Opposer. However in the examinations;
- It has been observed that the MILLENNIUM FALCON mark should not be evaluated only in terms of the toys within its scope, because as it can be seen from the evidence, it is used on a wide range of licensed products as part of the Star Wars universe. Moreover, it should be accepted that the restriction made by the applicant cannot be accepted and that the mark can reach potential purchasers through all appropriate trade channels.
- At the same time, the venues where the musical performance services specified by the applicant are provided are similar to the venues where the Opposer performs its Star Wars musicals and it has been determined that they reach potential consumers through the same channels.
As a result of these findings, the third DuPont factor was also concluded in favor of the Opposer.
- Purchasing Conditions and Sophistication of Customers
In this factor, whether there is a likelihood of confusion in terms of the purchasing conditions of the consumers and the characteristics of the customer groups to whom the product/service will be offered is examined.
In terms of the fourth factor, the applicant describes audience of the band MILLENNIAL FALCON to be sophisticated, and expresses that the audience has enough awareness to not confuse the phrases MILLENNIUM FALCON and MILLENNIAL FALCON, and that they can understand the parody. However he did not submit evidence to prove this argument.
- As a result of this, the Appeal Board stated that it could not be known if the consumers are knowledgeable or immune from conceptual confusion, and they could confuse the source of the mentioned service. Moreover, it was expressed that in some cases even the sophisticated consumer groups might tend to confuse as a result of the similarity between the trademarks. For this reason, it was emphasized that "the least sophisticated purchasers" should be considered in the examination to be performed.
- As it is discussed in third factor, by limiting the goods and services of the Opposer's trademark to toy vehicles, the claim that there is a difference between the purchasers to whom these products are appealing and the adult clientele to whom the services offered by the applicant are appealing was rejected once again, because the MILLENNIAL FALCON mark appealing to adult purchasers does not mean that they are unaware of the prevalence of MILLENNIUM FALCON. MILLENNIUM FALCON spaceship is such a well-known part of the Star Wars, adult purchasers benefiting from Applicant's services would likely be aware of such term.
As a result of this, the existence of likelihood of confusion in terms of purchasing conditions and customer group was considered neutral.
- Strength of Opposer's Mark
In accordance with the fifth DuPont factor, the recognition of a mark, evidence relating to its distinctiveness (sales/marketing, advertising, and length of use, etc.) reveal the strength of that mark and enable to expand the scope of the protection provided by the trademark. However, it is clearly Opposer's duty to prove this claim. In order to measure commercial strength of a mark, evidence such as sales volume, advertising expenditures associated with the products sold and the length of use of the trademark are required.
- The Office first determined that the phrase MILLENNIUM FALCON was created as a fanciful term by the Opposer, and therefore it is inherently a distinctive and strong phrase.
- The success of Star Wars films is an important evidence for the recognition of the said phrase. It was stated that MILLENNIUM FALCON is an expression that has been used in the Star Wars universe since 1977 and has become well-known, leaving no room for discussion. At the same time, these claims are proved by being supported with the presented sales figures, newspaper news, and digital data.
In conclusion, the fifth DuPont factor also resulted in favor of the opposer.
- Actual Confusion
In the sixth factor, actual confusion between the marks is examined. We can interpret the actual confusion as a case of more serious confusion than the concept of "likelihood". Actual confusion provides serious evidence in terms of "likelihood of confusion". In the event of the said actual confusion, the state of confusion is obvious without needing any discussion.
While making its evaluation of this factor, the Appeal Board stated that the applicant must have used the MILLENNIAL FALCON phrase for a significant period of time, in the same market as the Opposer's mark MILLENNIUM FALCON in a way to be considered as a serious use in order to assess the situation in question.
- Based on the fact that the applicant performed in a small number of shows, rendered in one city and data such as attendance numbers, box office receipts and sales figures, it was decided that these data were not enough to allow assessing the presence of actual confusion.
When this situation is considered, the Appeal Board remained neutral in terms of the sixth DuPont factor.
- Bad Faith
Under the thirteenth DuPont factor, claims of bad faith are examined. Bad faith is strong evidence proving the existence of confusion; as such an inference is drawn from the imitator's expectation of confusion.
The Opposer argued that the applicant acted in bad faith, thinking that the timing of the date of application is telling. It was stated that MILLENIUM FALCON was predominantly featured in the new film of Star Wars series Force Awakens which was released around the same time with the application.
- It was also seen from the Facebook page of the application that he used X-WING which is another spaceship belonging to Star Wars universe during his stage performance. Applicant answered these allegations by stating that that the props were positioned by the owner of the venue and they were not his.
- The Opposer submitted the concert poster posted on the applicant's Facebook page as evidence of bad faith. On this poster, it was seen that the picture of two characters that were identified with the Star Wars universe and the phrase MILLENNIAL FALCON were used together. The applicant stated that the said phrase was used that way because of the parody.
However the Appeal Board considered the said evidence merely as proof that the applicant failed in the attempt of parody.
Therefore, the analysis was neutral in terms of bad faith claim.
Within the framework of the grounds mentioned throughout the article, the Appeal Board decided that Opposer's claims of likelihood of confusion were valid, and the applicant did not fulfil his obligation to select a mark that would avoid confusion. Since the Appeal Board accepted the claim of likelihood of conclusion, they did not further examine the claim for dilution of the well-known mark.
As it can be seen from the decision, MILLENNIUM FALCON, one of the important elements of the Star Wars universe, has added a new one to its victories. Although there is no clear similarity between the goods covered by the application and those covered by the trademark which is the grounds for the opposition, the use of MILLENNIUM FALCON by the trademark owner or licensees for many different goods and services, its recognition, identification with the Opposer, high degree of similarity between the application and the trademark which is the grounds for opposition have been the main reasons for victory.
Let's finish with a final quote: "If there is one space ship above all space ships in the history of film space ships, it's the Millennium Falcon.1"
We, authors, also agree!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.