MENU Close
Close
  • Home
  • Services
  • Attorneys
  • Resources
  • News & Events
  • About Us
  • Contact Us
  • Join our Team
Search
Back
    Quick Links:
    Join Webinar
    Read News
    Our Location
    A
    Alternative Dispute ResolutionAntitrust & Trade RegulationAppellate Practice
    B
    Banking & Financial ServicesBankruptcy, Creditors’ Rights, and Financial RestructuringBeer LawBusiness Law
    C
    Cannabis LawConstruction LawCriminal Defense
    E
    Economic Development LawElder Care & Special Needs LawElectronic Discovery ("E-Discovery")Environmental LawEstate Planning and Administration & Wealth PreservationExecutive Compensation, Employment, ERISA, and Employee Benefits
    F
    Food, Beverage & HospitalityFranchise Law
    H
    Health Care & Life SciencesHealth Care ProvidersHigher EducationHospitals and Health Networks
    I
    ImmigrationInsurance CoverageIntellectual PropertyIntellectual Property Litigation, Arbitration, and Dispute ResolutionIntellectual Property Portfolio Strategy, Management & LicensingInternational BusinessInternet Law
    L
    Labor & EmploymentLiquor Law, Licensing, Manufacturing, and DistributionLitigation
    M
    Media LawMergers & AcquisitionsMunicipal Law
    N
    Non-Profit Law
    P
    Patent Preparation and ProsecutionPharmaceutical / Medical Devices / Pharma ServicesProducts and Consumer Liability DefenseProfessional LiabilityPublic Utilities
    R
    Real Estate, Finance, and Land Use
    S
    SecuritiesSolar Energy
    T
    TaxationTelecommunicationsTrademark & Copyright Protection & Enforcement
    V
    Venture Tech & Emerging Growth Companies
    W
    White Collar Investigations & DefenseWorkers’ Compensation
    • New Jersey
    • New York
    • Pennsylvania
    • Blogs
    • Articles
    • Podcasts
    • COVID-19 Resources
    • News
    • Events
    • Webinars
    • About Us
    • Delivering Value
    • Diversity & Inclusion
    • Meritas

    New Jersey

    400 Crossing Boulevard
    8th Floor
    Bridgewater, NJ 08807
    Phone:(908) 722-0700
    Fax:(908) 722-0755

    28 Valley Road
    Suite 1
    Montclair, NJ 07042

    New York

    7 Times Square
    21st Floor
    New York City, NY 10036
    Phone:(212) 808-0700
    Fax:(212) 808-0844

    Pennsylvania

    515 West Hamilton Street
    Suite 502
    Allentown, PA 18101
    Phone:(610) 391-1800
    Fax:(610) 391-1805

    • What sets us apart
    • Attorneys
    • Other Professionals
    • Professional Development
    • Non-Discrimination Policy

    Categories

    Copyright Copyright Infringement Copyright Licensing Copyright Office Court Decisions Double Patenting>Same Invention Double Patenting>Terminal Disclaimers Drafting Patents Drafting Patents>Claims Drafting Patents>Claims>Written Description False Advertising Federal Circuit Food & Beverage General In The News Intellectual Property Labeling Lanham Act Legislation Licensing Navigating the Patent Office Navigating the Patent Office>Examiner Interviews Obviousness/Inventive Step>Prima Facie Obviousness Patent Patent Eligibility Privacy Right of Publicity Social Media Supreme Court Trade Dress Trademark Infringement Trademark Infringement|Trademark Registration|Trademarks Trademark Infringement|Trademarks Trademark Office Trademark Registration Trademark Registration|Trademarks Trademarks TTAB Uncategorized Unfair Competition
    Blogs > More Than Your Mark® > A Tale of Beer and...
    Member
    Jeanne Hamburg
    Visit Profile

    A Tale of Beer and The Hobbit

    A Tale of Beer and The Hobbit

    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.

    Should you have any questions about this post or any trademark, unfair competition, or copyright issues, please feel free to contact me at jhamburg@nmmlaw.com.

    Member
    Jeanne Hamburg
    Visit Profile

    Related Posts

    Around the World and Back Again: Tips for Global Brand Protection US Patent and Trademark Office Suspends Action on Trademarks Critical of Public Figures Hermés Wins on Metabirkins Cryptobags

    Share

    Tags

    #food and beverage #trademark #trademark application #trademark law #trademark office #trademark registration #TTAB

    Similar Posts

    November 19, 2021
    A Dispute is Bubbling Over for the Prosecco Name
    A Dispute is Bubbling Over for the Prosecco Name
    November 5, 2021
    Plant-Based Food Labeling Legislative Update
    Plant-Based Food Labeling Legislative Update
    June 18, 2021
    PRETZEL CRISPS Found to Be Generic… Again
    PRETZEL CRISPS Found to Be Generic… Again

    Helpful links

    • About Us
    • News
    • Services
    • Blogs
    • Attorneys
    • Articles
    • (COVID-19)
    • Events
    • Join our Team
    Connect

    Connect with Us

    • LinkedIn
    • Facebook
    • Twitter
    • Instagram
    • Youtube

    Join our growing team

    We are looking for quality attorneys to help us do more for our clients. At Norris McLaughlin, each attorney has the same opportunity to succeed whether you’re at the beginning of a career or pinnacle of the profession.

    Learn More

    Subscribe to our content

    Receive timely legal information delivered to your inbox

    This field is for validation purposes and should be left unchanged.
    © , Norris McLaughlin, P.A., All Rights Reserved. Attorney Advertising.
    VIEW OUR DISCLAIMER,  TERMS OF USE,  AND PRIVACY POLICY

    We use cookies to ensure that we give you the best experience on our website. If you continue to use this site we will assume you consent to our cookie policy. Learn more