In a Galaxy Not So Far, Far Away: Millennial Falcon v. Millennium FalconNovember 12, 2020

In October the U.S. Trademark Trial and Appeal Board issued a decision regarding the opposition proceedings against the trademark application “Millennial Falcon.” The trademark application “Millennial Falcon,” filed by Applicant Ilan Moskowitz aka Captain Contingency was directed to “entertainment services in the nature of live visual and audio performances by a live musical performance group, namely musical band, rock group, gymnastic, dance, and ballet performances; Entertainment services in the nature of live vocal performances . . . by a musical band; Multimedia entertainment services in the nature of recording, production, and post-production [of] music, video, and films; Production of musical sound . . . and music video recordings.”

Opposer Lucasfilm Entertainment Company opposed registration of the “Millennial Falcon” mark on grounds of likelihood of confusion, supported by the prior use and registration of their mark “Millennium Falcon” for “toy vehicles” and also for prior use at common law for entertainment services, sound recordings, live musical concerts, and others.

Applicant Ilan Moskowitz aka Captain Contingency is a performer who “decided to use the Millennial Falcon trademark for his musical performances in May 2016 as a parody of, and satirical comment on, corporate culture, and in particular the culture of the entertainment behemoth, Disney,” which he claims “swallowed the entire Star Wars franchise in the preceding years.” According to Moskowitz, he “envisioned his band as a kind of privateering ship, where he played the role of captain (Captain Contingency) with a crew of like-minded musicians, all of whom identified as members of the Millennial generation” and “wanted his band name to make a statement about millennial-age attitudes toward Disney and Star Wars corporate culture.” Moskowitz further describes his band as a “spaceship powered by music [which] [b]attl[es] the Federation of Job Creators and stick[s] it to real life corporate money-grubbers like Disney/Lucas to set better Trademark precedent in America.”

Lucasfilm provided extensive evidence of their prior use of the “Millennium Falcon” name as part of the Star Wars franchise dating back to the 1970s, so the primary question before the court was the likelihood of confusion analysis, and whether the mark “Millennial Falcon” was appropriately considered a parody of “Millennium Falcon.” Given the similarity in the words—wherein only the last two letters of the first word differ—the board found there was no “significant difference between the marks.” In the Board’s opinion, “[t]o suggest otherwise [would be] to inflate the importance of the subtle differences beyond reason. Simply put, the two marks are not only highly similar in appearance and sound, but the differences are nearly imperceptible apart from a side-by-side comparison.” (TTAB 30-31). With respect to the other relevant factors in considering a likelihood of confusion, the Board determined that the types of goods/services, trade channels, and strength of Lucasfilm’s mark all weighed in favor of a finding of likelihood of confusion. On the basis of these factors, the Board found that Lucasfilm established its claim of likelihood of confusion, and registration of Moskowitz’s mark was refused.

This isn’t the first time Lucasfilm/Disney has used legal means to protect its Star Wars franchise trademarks. Consider, for example, Lucasfilm’s 2014 opposition against Empire Brewing Company’s “Empire Strikes Bock” beer (TTAB Opposition No. 91218848), and its 2016 suit against “Lightsaber Academy,” a business offering classes and certifications in the way of the Jedi, including martial arts, lightsaber swordplay, and stage combat. Lucasfilm Ltd. LLC and Lucasfilm Entertainment Company Ltd. LLC vs. Michael Brown, Case 3:16-cv-05968 (N.D. Cal.). If Lucasfilm’s litigation history is any indication, even though the Millennium Falcon is just a “bucket of bolts,” it’s ostensibly a bucket of bolts worth protecting.

Sarah M.D. Luth is an Intellectual Property Attorney in the MVS  Biotechnology & Chemical Practice Groups. To learn more, visit our MVS website , or contact Sarah directly via email .

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