By Ben Langlotz | September 7, 2016 | Firearms | 0 Comments
One of the things I love best about my work is filing creative trademarks for inventors and firearms business owners. One of the things I love least is dealing with some of the “other” lawyers out there.
The saga begins when one of my oldest and favorite clients, MGM Targets had me file a trademark application to secure the trademark DEATH STAR for their star-shaped Whirly-Gig® targets. I have to say that Mike Gibson is one of my favorite industry figures, and maybe that’s because he’s the kind of guy who gives his employees copies of my book as Christmas presents. He insists on paying for them, I refuse to accept payment and we compromise by having him donate the payment to his favorite charity. Of course, I’m not sure whether the recipients feel like they got a lump of coal in their Christmas stocking!
About that trademark pick: Every time a client suggests a trademark that makes people think of another business, the caution flag goes up. We’ve heard the stories about Sam Buck opening a coffee shop called “Sam Buck’s” and ending up shut down by Starbuck’s lawyers. I don’t like to see my clients get tied up in disputes so I nudge them away from borderline cases.
But at first I wasn’t sure whether DEATH STAR was even a trademark. After all, trademark rights exist only if goods or services are sold under the brand, and I don’t think George Lucas had ever sold any planet-sized battle stations – at least not in the US market. So I did a trademark search and found that there was no DEATH STAR trademark registration out there, and only one registration for TINY DEATH STAR for a smartphone game, by Lucasfilm Ltd. Clearly, the Hollywood giant didn’t think of DEATH STAR as a trademark or they would have taken the simple and inexpensive step of registering DEATH STAR as a trademark for toys, and whatever else they were using the term on, like hats and shirts.
So we filed the application. The trademark examiner liked what he saw and agreed that MGM was entitled to the trademark for their steel target device. Then, the application was published for opposition, which is a normal step to ferret out any objections from other trademark owners.
When Darth Vader Attacked
It started out pleasantly:
From: **********, C******
Sent: Friday, July 8, 2016 2:02 PM
To: Trademark <Trademark@langlotz.com>
Subject: DEATH STAR, Ser. No. 87006928
Dear Mr. Langlotz,
You will see that we filed an extension of time to oppose the above-captioned application. Please call me to discuss.
I recalled that Disney bought the Star Wars franchise. The extension just adds a month to the process so we have a chance to work things out and resolve any disputes before they go full bore against our application. I prefer email to open this kind of discussion because it’s hard to find people at their desks and phone tag is a waste of time and money. I also think having some words I can forward to a client ensures that my client is in the loop and nothing gets lost in translation. It’s also a waste for my client to pay me to type up a transcript of a phone call. But I did it his way and placed a call. Phone tag. He then tried and missed me. I tried again and missed him. I didn’t hear back, so I tried a quick email:
From: Bennet Langlotz
Sent: Friday, July 08, 2016 2:05 PM
To: *******, C******
Subject: RE: DEATH STAR, Ser. No. 87006928
As I am having trouble reaching you by phone, we might communicate by email.
I’m interested to know if your client has any trademark registration pertinent to the matter, or other common law trademark use evidence we might consider.
If this might be resolved by a clarification or limitation of our description of goods, we are open to hear your interests.
In this email, I simply wanted him to let me know the legal foundation for his potential challenge. If they have a strong case, we want to know it so we can break off the fight. I suspected they had no real evidence and were trying to bully my client without any legal rights to back it up.
As anyone who has read my book knows, trademark rights are limited only to “related goods.” That means that we have United Airlines and United Van Lines coexisting without confusion. Related goods might include things that are bought by the same customers, at the same types of stores, for the same purposes. For instance, pistols and holsters are related. Rifles and scopes are related. Binoculars and riflescopes are related. Pistols and rifles are related. Binoculars and pistols are probably NOT related. And in each of these cases there are probably exceptions based on the specifics.
Clearly, there is no relation between kids’ toys or games, and steel targets for firearms training. So I wasn’t worried about any of this, except that we were up against a company with a billion-dollar budget, and teams of full time attorneys who need to keep busy to make their Hollywood Hills house payments.
The responding email I got was a classic. The equivalent of a “Do You Know Who I Am?” traffic stop encounter with an arrogant Hollywood celebrity:
From: ******, C******
Sent: Friday, July 8, 2016 7:38 PM
To: Bennet Langlotz
Subject: RE: DEATH STAR, Ser. No. 87006928
Really? Have you ever seen Star Wars? Or been to a toy store? Or noticed that the only other DEATH STAR –formative mark on the USPTO register is owned by Lucasfilm? I was hoping that we could have a constructive conversation on the phone without the lawyer posturing that comes from written communication. But the bottom line is that we don’t want our kids franchise associated with real-life firearms and we don’t want the dilution on the register that would come from even a more limited description of goods.
So, the truth is revealed. Disney is anti-gun. And this lawyer is a real piece of work, at least in writing. Frankly, when a company doesn’t demonstrate that they value a trademark by registering it (not even for toys) then their high dudgeon at not being recognized is a lot like a washed up Hollywood star who no longer gets recognized by fans in public.
There’s one important legal point in the letter. The word “dilution” refers to a narrow exception to the rule that trademarks cover only related goods. For “famous” trademarks, there is a special right that fits with common sense, to protect unusually recognizable trademarks that have great value because of immense long term investment. No one would expect to be able to sell Rolex™ mufflers. Or Chanel™ computer software. Or Smith & Wesson™ lawn fertilizer. If you saw Benelli™ (or even Ruger) plumbing valves at Home Depot you’d think nothing if it. But if you saw Smith & Wesson™ valves, you immediately wonder what was going on, and know something was amiss. (PS: Ruger might disagree, but I think that S&W is the only “famous” brand you’ll see at the SHOT Show – except maybe the Tommy gun-shaped trade dress, but that’s another article – email me if you can think of another truly famous gun brand.)
So, Darth Vader thinks that DEATH STAR is in that elite category of trademarks that are famous. I’d grant that DISNEY might well be, but not this one. Here’s why: I agree that “the Death Star” is a famous “movie star.” A famous plot device. But that’s not about trademarks. Imagine that no one had ever authorized a few death star toys or games. Imagine that it’s only existence was in the movie, and had never been commercialized. Ask yourself, would it still be famous? Of course it would. It would be just as famous because the reason we all recognize the icon is entirely because of the movies, and the use as a trademark has contributed nothing to the fame. Therefore, this is a famous “character” but not a famous trademark.
How to Fight the Evil Empire?
I realized that against Disney, they would be able to fight (and almost certainly lose) an expensive battle that no sensible company like MGM could justify fighting. So I figured maybe we could fight the battle in social media, and I had a sneaky idea that Han Solo might love. Create a “lawyer letter” that could go viral, and cause Disney to back off to avoid being made to look ridiculous (and anti-gun). Here’s what I came up with:
Long, long ago, in a law school far away, a Jedi™ master taught me an important principle of trademark law: trademark rights cover only related goods. Ever since I’ve been bagging Womp Rats™ back in Beggars Canyon™, I’ve never seen a trademark considered famous when its owner didn’t even bother to apply to register it for the only current use.
The rebel alliance was given A New Hope™ by your message that the Empire values a “constructive conversation on the phone without the lawyer posturing that comes from written communication.” However, since my multiple attempts to hail you on sub-space frequencies failed to reach you, I risked a quick email, which is actually a normal and friendly mode of communication in this arm of the galaxy. I’m pleased that you responded with the information I sought: a registration for a video game that has apparently been off the market for nearly two years, and some common law trademark uses on children’s toys.
We recognize that the Empire doesn’t want its death-ridden kids movies associated with a veteran family-owned American company that sells made-in-USA steel targets for law enforcement, US armed forces, and to train safer shooters (as opposed to the Imperial Stormtroopers who are famed for their inability to hit a target at short range).
Because an unbiased Imperial trademark examiner has seen no conflict between your registration and our application, we would seem to have the law and facts on our side. But we recognize that even when we are poised to defeat a fearsome opponent, it can sometimes be wiser to “let the Wookie win” because otherwise he might “pull our arms out of their sockets.”
Yet somehow that might not work well for the Empire in the end, because legally bullying an American company might lead to public embarrassment and even viral ridicule. Not to mention the consequences of publicly revealing an anti-gun political subtext that would gain the attention of millions of rebel forces, as well as that of the Imperial shareholders (consider Target’s bathroom policy).
My client prefers not to engage in Imperial Entanglements and is willing to agree in writing not to expand its use of the DEATH STAR trademark for its star-shaped training target with its suggestion of training for lethal effectiveness.
May the Force be with you,
My staff and I had fun with it, but I let this one sit for a few days. I never sent the letter, and called up Darth. It turns out that he was much more pleasant on the phone. We resolved a solution that let MGM keep using their trademark, but also let Disney’s lawyers save face and pretend that they controlled their whole corner of the trademark galaxy. Win-win. I even shared the best of my letter’s humor with the attorney, and I learned why the apparent misuse of the technical term “parsec” was actually proper in the context of time warp travel.
In the end, I’m pleased that by putting common sense above righteous combativeness, my client got what they needed. They can move forward with productive aspects of the business instead of an unproductive legal battle. Sometimes, it’s better to “Let the Wookie win.”