The Disney-owned production company, Lucasfilm Ltd., filed an opposition to Walton Street Brewing Corp.’s application to register the trademark for its beer aptly named “Empire Strikes Bock.”
Walton Street Brewery describes its “Empire Strikes Bock” lager as a “spring lager…brewed with German malt & hops and then lagered for six weeks. Extremely clean and refreshing.”
Lucasfilm claims that there would be a likelihood of confusion of the two marks because it is a famous mark and has sold a vast array of products with “Empire Strikes Back” on them including toys, games, apparel, personal care products, and even wine. It does not appear that Lucasfilm owns a registered trademark for “Empire Strikes Back.” However, it is likely that the mark has been used enough in commerce to establish common law trademark protection. Businesses automatically receive common law trademark rights when they use a brand name or logo in the normal course of commerce. It is worth noting, however, that common law trademarks do not offer as much protection as registered trademarks with the United States Patent and Trademark Office.
Lucasfilm highlighted in its opposition that it also has its own brand of wine called “Skywalker Vineyards” and argued that there could be a likelihood of confusion between consumers that Walton Street’s brew is also a part of Lucasfilm’s venture into alcoholic beverages. Skywalker Vineyards produces three pinot noirs (traditional, rosè, and a del cielo) in Marin County, California.
Likelihood of Confusion
To determine if a likelihood of confusion exists between two marks, a court weighs the following factors:
(1) the strength of the mark;
(2) the proximity of the goods;
(3) the similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) the type of goods and the degree of care likely to be exercised by the purchaser;
(7) defendant’s intent in selecting the mark; and
(8) likelihood of expansion of the product lines.
In addition to claiming a likelihood of confusion between the two marks, Lucasfilms also claims that “Empire Strikes Bock” will also “dilute” its famous mark. The Lanham Act defines “dilution” as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.”
Courts look to the following factors when deciding whether a famous mark has been diluted:
(1) The degree of inherent or acquired distinctiveness;
(2) The duration extent of use;
(3) The amount of advertising and publicity;
(4) The geographic extent of the market;
(5) The channels of trade;
(6) The degree of recognition in trading area;
(7) Any use of similar marks by third parties; and
(8) Whether the market is registered.
Dilution can occur two ways, by blurring and by tarnishment. Blurring occurs when a mark loses its unique and distinctive ability to act as a source identifier due to the use of the mark on several different goods and services. Tarnishment occurs when the accused mark’s use creates negative associations with the mark.
It remains to be seen what the conclusion will be between Lucasfilms and Walton Street Brewing.