Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 PARAMOUNT PICTURES CORPORATION
March 31, 1988
Hearing: January 20, 1988
Opposition No. 70,144, to application Serial No. 440,845, filed August 25, 1983.
Susan L. Cohen for Paramount Pictures Corporation.
Romulan Invasions, pro se.
Before Rooney, Simms and Seeherman
Romulan Invasions filed an application to register THE ROMULANS and design for entertainment services, namely, live and recorded performances by a vocal and instrumental group claiming use as of May 1, 1982.
Registration has been opposed by Paramount Pictures Corporation on the following enumerated grounds. Opposer is the owner of all right, title and interest to the STAR TREK television series and movies. A race of space creatures called The Romulans was created by opposer during the 1966-67 season and was featured or appeared in numerous STAR TREK episodes, still in syndication. The Romulans have also been mentioned in the movies based on the STAR TREK series. Opposer has done significant licensing using The Romulans and they have appeared as major characters in several books based on the STAR TREK series. Opposer was the owner of a registration for THE ROMULAN for dolls, doll clothing and play sets. [FN1] By such use and promotion, opposer has developed recognition in the consuming public such that anything bearing the name Romulans would be presumed to have originated with opposer. The mark sought to be registered by applicant, as used for entertainment services, is so similar to The Romulans as used by opposer as to be likely to lead to confusion, mistake or deception. Applicant denied the allegations set forth by opposer.
The record consists of the discovery deposition of applicant of August 25, 1986, opposer's interrogatories and applicant's answers thereto; [FN2] opposer's and applicant's testimony depositions and the exhibits introduced in connection with all of the foregoing. Both parties filed briefs but only opposer appeared at the oral hearing.
Opposer is the owner of the STAR TREK television show which first appeared in September 1966, was cancelled after two seasons and renewed for a third season in 1969. The syndicated television series has been continuously shown since then on 145 television stations. During the past ten years, there have been four STAR TREK feature movies with a fifth planned.
A new series, "STAR TREK-The Next Generation," was scheduled to begin in the Fall 1987. [FN3] The STAR TREK television series and movies have been very popular and have created a demand for STAR TREK-related items. Opposer has engaged in extensive licensing as a result. There is testimony as to licensing activities of opposer in connection with its STAR TREK series and movies in the field of publications, including novelization of screenplays, comic books, posters, magazines, calendars and publication of photographs and technical material; toys, including games, spaceship and character models, jigsaw puzzles; and plastic cups. Several publishers are licensed to produce novels based on the STAR TREK series.
*2 The Romulans are a fictional alien race introduced in an early episode of the STAR TREK television show. They are related to the Vulcans, another fictional race and, with the Klingons, comprise two alien enemy races. The Romulans were featured in episodes called "The Balance of Terror" and "The Enterprise Incident" and have appeared or were mentioned in other episodes. A STAR TREK novel is published bi-monthly by the Pocket Books arm of Simon & Schuster. One such novel, The Web of the Romulans, has had more than one printing and there are more than 420,000 copies in print. Another, My Enemy, My Ally, which is about The Romulans, has more than 300,000 copies in print. A third book, "The Romulan Way" was scheduled for publication when opposer's depositions were taken. The Romulans have appeared in comic books as well. Games and plastic models of the Romulan spaceships have been available to the public. Mego Corporation, identified as a licensee, applied for a registration for THE ROMULAN for dolls, doll clothing and playsets. The application was assigned to opposer on June 3, 1977 shortly before it registered on June 28, 1977. The registration was cancelled for failure to file a Section 8 affidavit.
The STAR TREK series has gained a large following and there are frequent STAR TREK conventions at which one or more of the series' actors appear and at which STAR TREK collectible articles are sold or traded.
Applicant, who began using the name The Romulans and a triple triangle design for entertainment services of live and recorded performances of a vocal and instrumental group in 1982, testified that its name ROMULANS results from a combination of the name "Romulus" and the word "Roman". The triple triangle, according to applicant, represents the pyramids of Egypt. Applicant styles its band as a "socially aware" group whose message conveys how the political climate of today compares with Roman days. There is evidence of continuous use of the mark in live performances and there has been some recording activity under the mark. Applicant stated that its advertising expenses are from $150- $300 yearly. No income figures were given. According to applicant, the bank plays "death rock" as well as "rock & roll".
There is no question that the marks are quite similar. The design feature of applicant's mark does not alter the essential identity of the two marks.
Opposer does not own a registration covering the name "Romulans." Therefore it must prove its priority of use. In connection therewith, there is ample evidence that opposer used the term "Romulan" as of a time long prior to applicant's first use. But, there are serious questions with regard to the nature of opposer's use.
In connection with opposer's use, Section 2 of the Trademark Act states that
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (d) consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of applicant, to cause confusion, or to cause mistake, or to deceive ... [FN4]
*3 The term "trademark" is defined as "any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." A service mark is "a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others. Titles, character names [FN5] and other distinctive features of radio or television programs may be registered as service marks ..." (Section 45, Trademark Act of 1946).
As far as we can tell from this record, opposer has not used the term "Romulan" (or "Romulans") as a mark to identify and distinguish any services of opposer. The entertainment services performed by opposer are identified by the name STAR TREK. The term "Romulan" has been used only as the name of a fictional race of people which appears from time to time in the STAR TREK television series and has apparently been mentioned in the movies. Appearance of the Romulans as characters in the storyline of the STAR TREK television series or movies does not make Romulans a trademark or service mark for either. See In re D.C. Comics, infra.
As to opposer's claim to have used "Romulan", through licensees or on its own, on comic books and various other books, we note that Judge Nies, in commenting on a similar usage, summed it up in her concurring opinion in In re D.C. Comics, Inc., 689 F.2d 1042, 215 USPQ 394 at fn. 1 (CCPA 1982), where she said that
Appellant's exhibits show only various action poses of the JOKER character on the cover of a notebook and in or on comic books. Contrary to appellant's argument, not every display of these designs on goods is trademark usage. For example, the appearance of the JOKER in a story in a BATMAN comic book does not make the JOKER a trademark for the book.
By the same token, the appearance of the Romulans as characters in various novels or comic books based on STAR TREK cannot afford trademark protection for the name Romulan in connection with those goods. To the extent that the name, The Romulans, appears as part of the title of any such books, it is well established that titles of single works are not registrable as trademarks. See In re Cooper, 45 CCPA 923, 254 F.2d 611, 117 USPQ 396 (CCPA 1958).
With regard to a license with Mego Corporation, other than the testimony of Mr. Rosenbaum, opposer's vice-president for legal affairs, there is no evidence pertaining thereto and the testimony itself is not at all explicit. The following exchange occurred during Mr. Rosenbaum's testimony.
A. Yes, it has.
Q.9 Could you tell us some of the types of merchandising that have gone on with the Star Trek property?
A. Well, to the best of my recollection, we have licensed various publications based on Star Trek, including novelization of screenplays of the theatrical motion pictures, original novels based on Star Trek, games--
A. (Continuing) Games records, comic books, various Fotonovels, [FN6] and publications full of photographs and technical material relating to Star Trek, models of the various spaceships, models of the characters, games featuring the characters, calendars, glow-in-the-dark plastic cups, jigsaw puzzles, posters, magazines ...
Q.10 At one time, did Paramount Pictures have a licensee which created a full line of Star Trek toys?
A. Yes, we did.
Q.11 Would you tell me, was that licensee the Mego Corporation?
A. Yes, it was. Among others.
The only evidence offered to establish use of "Romulan" by Mego is the aforementioned trademark registration and a listing in the 1983 "Price Guide to STAR TREK and STAR WARS Collectibles" which is a catalog of collectible items available for sale or trade among fans of the named films and television series. On page 144 is listed "Alien Action Figure, Mego Corporation, The Romulan, poseable with costume, 1975, 8"'. The highest and lowest selling prices set by various dealers for each article is given. The selling price for the Romulan figure is between $50 and $100. It appears from this listing that the particular "action figure" available (which presumably is a Mego doll) is of a 1975 vintage. [FN7] Other than this, there is no evidence as to the manufacture, sale or advertising of any "Romulan" dolls by either Mego or opposer and opposer's cancelled registration adds nothing to opposer's claim of trademark rights in the mark.
One last claim of opposer to trademark protection for the name Romulan in connection with printed matter involves the listing in the aforementioned price guide of scripts of episodes of STAR TREK and blueprints of Romulan spaceships. Apart from the fact that the price guide is probative only to show that these items are listed therein, the identification of the blueprints as being of Romulan spaceships does not establish trademark usage of the mark in connection with such spaceships nor does mention of the name Romulan in STAR TREK scripts have trademark value.
Finally, opposer has provided photocopies of a number of manuals for use with "STAR TREK--The Role Playing Game". Several of the manuals involve plots in which the Romulans are featured or otherwise take part. None appears to be marketed as a Romulan game but rather as a STAR TREK game involving Romulans. The claim of trademark rights with respect to games is subject to the same infirmity as was noted as to books about Romulans or comics involving Romulan characters.
Only the use on space ship models appears to have any valid claim to trademark rights. On the photocopy of what appears to be a box, the words STAR TREK Space Ship Set appear, followed by
Scale Models With Display Stand:
* Starship U.S.S. Enterprise
* Klingon Battle Cruiser
* Romulan Bird of Prey
This is the closest opposer has come to a showing of trademark use on goods. However, there is nothing in the record to indicate the extent, if any, of sales or advertising of these goods.
*5 Based on this record, we find that, although opposer developed a story-line concerning a fictional race called Romulans and has used these characters in connection with its well known STAR TREK episodes, the only usage thereof which approaches the requirement that a mark identify and distinguish the goods or services of one party from similar goods or services of another is that in connection with space ship models. But, lacking any information with regard thereto, the impact of that use of Romulan on the relevant public, if there has been any, cannot be determined.
Considering the question of likelihood of confusion in light of the foregoing, we note that although applicant and opposer are both involved in entertainment services, opposer has failed to establish any use of the term Romulan (or Romulans) as a mark to distinguish its services from similar services of others. As to the effect opposer's use of Romulan in relation to model space ships is likely to have on this question, even if we assume that there has been moderate sales and advertising activity, we do not believe that applicant's use of THE ROMULANS to identify its entertainment services would be perceived as related thereto.
Accordingly, the opposition is dismissed.
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,068,608 issued June 28, 1977, cancelled Section 8.
FN2. Opposer filed a paper on January 6, 1987 (by certificate of mailing) in which it listed, in addition to its testimony depositions, Mr. White's discovery deposition and his answers to interrogatories. In its brief, opposer referred to this paper as a "Notice of Reliance." Said paper is ambiguous insofar as it was entitled a "Notice of Filing Testimony" and listed the testimony depositions taken by opposer as well as its discovery. The former are not required to be filed with a notice of reliance. The latter must be introduced by a notice of reliance (although they may also be introduced through the testimony of a witness). Nonetheless, in the absence of an objection by applicant, said paper has been considered a notice of reliance and the discovery material submitted thereunder as part of the record.
FN3. Whether or not it has been aired is not clear.
FN4. The provisions of the Act refer to service marks as well as trademarks. See Section 3.
FN5. While the statute provides for registration of character names, it does not mean that the name of any character is registrable. It is essential that the character name have been used as a service mark (or a trademark) in order to be eligible for registration. See TMEP § 1301.10.
FN7. Introductory material in the publication indicates that "(T)horough descriptions are given when possible ... Manufacturer (where known) is given with color, size, date, and any other pertinent information available."