It’s hardly surprising that LucasFilm has had its share of lawsuits over alleged trade mark infringements. Who wouldn’t want a piece of Star Wars’ success?
Similar brands like “Star Team” for action figures or the use of the phrase “Star Wars” for a government initiative were found not to infringe trade marks. The word “Droid” for a line of mobile phones required the company to pay a sum to use the registered trade mark.
It’s been hit and miss for George Lucas, LucasFilm and Twentieth Century Fox in the intellectual property wars. Most Recently, Lucas fought New York brewery Empire over their beer, “Strikes Back”. Below, we step you through Empire’s alleged trade mark infringement and where to from here.
Empire Applies for a Trade Mark
Empire had been selling the Strikes Bock German lager on tap for seven years. They decided to expand the brand and supply to retail stores, so they applied for a trade mark over the name “EMPIRE STRIKES BOCK”.
“Empire Strikes Bock” vs. “The Empire Strikes Back”
The US Patent and Trademark Office approved the application and then published the details of the application for others to oppose. This is similar to the trade mark application process in Australia. LucasFilm saw the application and raised their objection to the trade mark, claiming that it is almost identical to the LucasFilm trade mark ‘THE EMPIRE STRIKES BACK’. The only differences are the word “the” and the last word “Bock”.
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Trade Mark Infringement: Did Empire Mislead or Confuse Consumers?
The main question is whether consumers are likely to associate the Empire Strikes Bock beer with the Star Wars franchise. Empire, whose name is derived from the New York Empire State Building and was not inspired by the Star Wars universe, is only registering the trade mark in relation to beer.
LucasFilm, on the other hand, has trade marks registered in relation to toys, games, apparel, trading cards, films, music, books and so much more. Star Wars is even associated with food and drinks. Interestingly, LucasFilm doesn’t have a trade mark registered in relation to beer, meaning consumers are potentially less likely to conflate Star Wars and beer products. However, LucasFilm does license the trade mark “SKYWALKER” to vineyards as “SKYWALKER VINEYARDS”, so it is not unfeasible that beer could also be part of the LucasFilm trade mark empire.
Furthermore, Empire frequently makes references to the Star Wars in their marketing materials, such as using similar fonts or phrases. Although Empire owners have been doing this out of affection for the films, it may not help them in trying to show that consumers will not be confused.
So even if a trade mark isn’t registered in relation to a type of good or service, another business using the trade mark (or something similar) may give consumers the impression that they are connected.
Empire Brewery Strikes Back
So what did Empire do in the end? They abandoned their trade mark application for ‘EMPIRE STRIKES BOCK’ and instead applied for ‘STRIKES BOCK’. Successfully. The trade mark was registered in the US on 7 April 2015.
Questions about registering your trade mark and protecting your intellectual property? Get in touch with our intellectual property lawyers – the force is strong in them.
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