A recent case before the U.S. Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) pits the owner of rights in J.R.R. Tolkien’s Middle-earth fantasy book series against craft brewer American Beerworks, which filed a trademark application based on intent to sell a beer under the name RADEGAST.
For those non-Tolkien geeks (yours truly among them), “Radagast the Brown” is a wizard who helps elves and men fight the evil Dark Lord Sauron and appears in The Lord of The Rings and The Hobbit among other Tolkien titles. The Saul Zaentz Company, named after the now-deceased producer, is the plaintiff in the case. Saul Zaentz produced an animated version of The Lord of the Rings and, through his company Middle-earth Enterprises, acquired from United Artists not only the motion picture, but also merchandising, stage, and other rights in Tolkien’s works, including The Lord of the Rings and The Hobbit. The TTAB case is based on eight U.S. trademark registrations for RADAGAST for goods including figurines, electronic games, trading cards, clothing, tote bags, mugs, and toys. The opposition to the RADEGAST application is based not only on alleged “likelihood of confusion” with RADAGAST, but also on the alleged likelihood of dilution to the RADAGAST brand.
Plaintiff’s success will depend on whether it can prove that consumers of RADEGAST beer will likely believe that the beer originated with, is sponsored, or is associated with the source of the RADAGAST merchandise (that is, the source of the literary work or motion picture in which Radagast the Brown appears). Plaintiff need not prove confusion with plaintiff (the production company); if consumers are likely to believe there is some association with one of Tolkien’s works, the movies, or Tolkien himself that would suffice.
Alternatively, plaintiff must meet the arguably higher burden of establishing that the use of RADEGAST on beer dilutes by “blurring” the association of RADAGAST with a single source of goods. To make out a claim for dilution, plaintiff will first have to prove that RADAGAST is famous, which it will most likely do by establishing the fame of The Lord of the Rings book series. In its opposition papers, plaintiff claims that “[o]ver 150 million copies of The Lord of the Rings [referred to as “LOTR”] books have been sold and they rank among the most widely sold books of all time.” The notice of opposition also alleges “[i]n a 2008 Harris Poll, the LOTR Books were ranked as the second most popular (behind only the Bible) among men generally, people residing in the Eastern United States, and college graduates; and the books were ranked third among all persons polled over eighteen (18) years of age.” Other allegations cite equally impressive statistics—that “[t]he LOTR Movies are the most nominated trilogy in the history of the Academy of Motion Picture Arts and Sciences;” the six movies in the LOTR and Hobbit series have each generated about 1 billion dollars in box office sales globally; and they are widely disseminated and viewed via, inter alia, DVDs, streaming, and television.
The plaintiff’s likelihood of success pivots on whether likelihood of confusion will result from the character’s appearance in the Tolkien books, or whether the TTAB will conclude from the fame of the Lord of the Rings books that RADAGAST is also famous. It is the sort of case in which plaintiff’s commissioning of a consumer poll, known as a likelihood of confusion or dilution survey, would most likely aid the TTAB in its determination. Certainly, whatever the outcome, in an age where merchandising is rampant, this opposition is a reminder that literary characters are not free for the taking for brewers or those offering other goods and services. As with every branding decision, clearance matters.
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