Intellectual Property Attorney


Episode I: The Force is Strong with Registration Segmentation:

By way of example, a quick search of the U.S. PTO’s Trademark Electronic Search Database reveals 97 live trademark registrations or pending applications containing the phrase “STAR WARS”. Moreover, the brand has further protected itself and diversified its licensing catalogue by securing trademark rights over many of the character names from throughout the STAR WARS® universe such as LUKE SKYWALKER® (Reg. No. 2454916), QUI-GON JINN® (Reg. No. 2550226) and CHEWBACCA® (Reg. No. 3090303).

But the STAR WARS® intellectual property team did not stop there. Instead, they made creative use of trademark law to extend protection to include various “non-traditional” source indicators. For example, in 2009, the brand obtained a trademark registration over “the sound of rhythmic mechanical human breathing created by breathing through a scuba tank regulator”. In other words, the iconic DARTH VADER® “breathing sound” is a registered trademark.

An illustration of just how well the brand has segmented and separately registered various “key” features of the STAR WARS® universe surrounds the iconic weapon of choice for the JEDI® – the LIGHTSABER®

The word “LIGHTSABER” itself is protected by at least two trademark registrations (Reg. Nos. 1126220 and 2772052) while various designs for the “hilt” as shown below are also protected by trademark registrations (Reg. Nos. 4356848 and 4330969):

Finally—and creatively—U.S. Registration No. 3618321 somewhat cryptically consists of “the sound of an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound” while U.S. Registration No. 3618320 consists of “the sound of a crescendo beginning with a snapping sound followed by a hiss sound.” A quick review of the [1] and [2] digital movie files submitted to the U.S. PTO as specimens for these respective trademarks reveals that these registrations cover various LIGHTESABER® sound effects – which sound effects will be easily recognizable to any fan of the franchise.

In yet a further diversification of their rights, the STAR WARS® brand has gone so far as to individually register as trademarks the design of various costume components for key characters. By way of illustration, U.S. Registration No. 3646330 covers a “full body” depiction of the DARTH VADER® character’s costume as shown below:

At the same time, U.S. Registration No. 3646331 separately covers only the “mask portion” of the DARTH VADER® character’s costume as shown below:

Such a segmentation of trademark rights helps avoid arguments from potential infringers. For example, suppose that the STAR WARS® brand only owned a registration for the “full body” depiction of the DARTH VADER® costume. Further suppose that a crafty infringer began selling DATH VADER® costume Halloween masks—but not full body costumes. In a trademark infringement lawsuit against such a person, the infringer would almost certainly argue (albeit with a dubious likelihood of success) that by merely copying the facemask alone (as opposed to the full costume) he or she should prevail, i.e., that copying the mask alone was not an infringement of the trademark registration. By separately registering the “important” elements of their character costumes, the STAR WARS® brand has ensured that such arguments die on the vine.

Click here to explore Episode II in this series: “Overlapping Intellectual Property Protection – It’s a Trap for Infringers”.

Click here to go back to the Introduction.

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