Lucasfilm Entertainment Company Ltd. LLCv.Ilan Moskowitz aka Captain Contingency

Trademark Trial and Appeal Board

Oct 16, 2020

91244449 (T.T.A.B. Oct. 16, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lucasfilm Entertainment Company Ltd. LLC

v.

Ilan Moskowitz aka Captain Contingency
_____

Opposition No. 91244449
_____

David M. Kelly, Linda K. McLeod, Jason M. Joyal, and Clint A. Taylor,
of Kelly IP LLP, for Lucasfilm Entertainment Company Ltd. LLC.

Ilan Moskowitz aka Captain Contingency, pro se.
_____

Before Kuczma, Heasley, and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, Ilan Moskowitz aka Captain Contingency, filed an application to
register the mark MILLENNIAL FALCON, in standard characters, for
“Entertainment services in the nature of live visual and audio performances by a live
musical performance group; Entertainment services in the nature of live visual and
audio performances, namely, musical band, rock group, gymnastic, dance, and ballet
performances; Entertainment services in the nature of live vocal performances by a
Opposition No. 91244449
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live musical performance group; Entertainment, namely, live performances by
musical bands; Entertainment, namely, live performances by a musical band;
Multimedia entertainment services in the nature of recording, production and post-
production services in the fields of music, video, and films; Production of musical
sound recording; Production of sound and music video recordings,” in International
Class 41.1
Opposer, Lucasfilm Entertainment Company Ltd. LLC, has opposed registration
of Applicant’s mark MILLENNIAL FALCON, alleging prior use and registration of
the mark MILLENNIUM FALCON for “toy vehicle[s],”2 and prior use at common law
for entertainment services; sound recordings; live musical concerts; films; television
programs; computer and video games; comic books; books; amusement parks; toys;
games; clothing. As grounds for opposition, Opposer alleges that registration of
Applicant’s mark for the recited services (1) would be likely to cause confusion with
Opposer’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and (2)
would be likely to cause dilution by blurring of Opposer’s famous mark under
Trademark Act Section 43(c), 15 U.S.C. § 1125(c).3
Applicant denied the salient allegations in the notice of opposition.4

1 Application Serial No. 87066540 was filed on June 9, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging use in commerce since May 26, 2016. During
prosecution, the application was amended to seek registration under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s alleged bona fide intention to use
the mark in commerce. October 6, 2016 Response to Office Action, TSDR 2.
2 Registration No. 2450785, registered May 15, 2001; renewed.
3 1 TTABVUE (Notice of Opposition).
4 7 TTABVUE (Amended Answer). Applicant also asserted a number of affirmative defenses
—including failure to state a claim; laches, waiver, estoppel, and/or acquiescence; and
Opposition No. 91244449
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I. ACR Procedure
The parties agreed to try this case via the Board ’s Accelerated Case Resolution
(“ACR”) procedure.5 See generally Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601,
1602 (TTAB 2018) (describing summary judgment ACR model); TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 702.04(b) (June 2020) (“ACR
summary judgment briefs may be presented either as cross motions for summary
judgment or as a single motion for summary judgment.”). The parties agreed, in
relevant part, that:
1. The Board, in lieu of a full trial, may use the [ACR] procedure to
resolve [this] proceeding based on the Parties’ cross-motions for
summary judgment, responses, and reply briefs filed in support thereof,
and evidence and witness declaration testimony submitted therewith,
the subject Application No. 87066540, and the pleaded registration
attached to Opposer’s Notice of Opposition … under TBMP § 702.04(b).

5. The Parties agree that documents and things maintained in the
ordinary course of business or obtained from verifiable, publicly-
available sources (e.g., from an Internet website accompanied by valid
URL and date downloaded) and produced in response to written
discovery requests served in this proceeding are genuine and authentic
for purposes of admission into evidence, but the Parties reserve their
respective objections as allowed under the rules, including but not
limited to hearsay, competency, accuracy, relevance, materiality, and/or
weight to be afforded.

6. The Parties each reserve the right to submit materials admissible
under Notice of Reliance, as set forth under TBMP § 704, and each Party
reserves their respective right to object to such materials as permitted
under the Federal Rules of Evidence and the Board’s rules.

7. The Parties’ ACR Briefs, witness declarations or affidavits, and
accompanying exhibits shall be deemed the final record and briefs for

abandonment— which were stricken by the Board following Opposer’s motion to strike. 11
TTABVUE.
5 16 TTABVUE (Stipulation).
Opposition No. 91244449
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this case on which the Bard may decide any issue of material fact in
dispute and make a final determination.6

As in a traditional Board proceeding, the burden of proof remains with Opposer,
which must establish its case by a preponderance of the evidence. TBMP § 702.04(a).
The case is fully briefed. For the reasons set forth below, we sustain the opposition.
II. The Record
The record consists of the pleadings, the file of the opposed application pursuant
to Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the parties’ ACR stipulation;7
and the following submissions by the parties:
A. Opposer’s Testimony and Evidence
 Testimony Declaration of Chris Gollaher (“Gollaher Decl.”), Opposer’s
Director of Global Product Development, with 13 exhibits consisting of
printouts of web pages from Opposer’s websites and third-party websites;
images of Opposer’s publications; images of products sold under Opposer’s
MILLENNIUM FALCON mark and other marks, including those provided
by Opposer’s licensees;8

 Notices of Reliance (“NOR”) on media attention in the nature of news,
magazine, trade publication, and Internet articles and web pages of
Opposer, Opposer’s parent company - The Walt Disney Company
(“Disney”), and third parties regarding Opposer and its use of
MILLENNIUM FALCON as a mark or otherwise, as well as other marks
owned by Opposer;9 and

 NOR on Applicant’s responses to certain requests for admission and

6 Id. at 2-5. In accordance with the stipulation, the Board may resolve any and all issues of
material fact in the course of issuing a final ruling. See TPI Holdings, Inc. v.
TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d
1049, 1051 (TTAB 2016) (“In order to take advantage of any form of ACR, the parties must
stipulate that the Board may resolve any genuine disputes of material fact in the context of
something less than a full trial.”). See generally TBMP §§ 528.05(a)(2), 702.04, and 705.
7 16 TTABVUE.
8 30-31 TTABVUE.
9 18-22, 25 TTABVUE (NOR 1-5, 8).
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interrogatories;10 UPSTO database printouts including trademark
registration certificates and status printouts for 14 third-party
registrations, and 14 registrations owned by Opposer for other marks;11 and
certain documents in the nature of Internet web page printouts produced
by Applicant during discovery.12

B. Applicant’s Testimony and Evidence
 Testimony declaration of Applicant, Ilan Moskowitz (“Applicant’s Decl.”) with
exhibits, including Opposer’s responses to Applicant’s interrogatories;
documents consisting of Internet web page printouts and articles, copies of
digital or printed advertisements and promotional flyers, and a receipt,
relating to Applicant’s use of the mark MILLENNIAL FALCON.13

III. Evidentiary Issues
Before turning to the merits, we discuss the parties’ evidentiary objections
A. Opposer’s Objections

Opposer objects to Applicant’s reliance on two third-party registrations and two
Wikipedia links that were identified for the first time and relied on by Applicant in
his responsive brief.14 Opposer correctly notes that merely listing third-party
registration numbers in a brief does not make them of record, see e.g., Edom Labs.
Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012), TBMP § 704.03(b)(1), and that
providing web addresses or hyperlinks without the material attached is insufficient
to introduce them into the record.15 TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d

10 23-24 TTABVUE (NOR 6-7).
11 26-27 TTABVUE (NOR 9-10).
12 28 TTABVUE (NOR 11).
13 12 TTABVUE 12-34 (Applicant’s Motion for Summary Judgment, Exhibits A-C).
14 40 TTABVUE 5 (Opposer’s Reply Brief).
15 Id.
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1786, 1789 n.15 (TTAB 2018); TBMP § 704.08(b). Moreover, nothing in the parties’
ACR stipulation purports to allow the parties to introduce evidence in this fashion.
Accordingly, the Board sustains Opposer’s objection to the third-party registrations
and website links provided by Applicant and will not consider them or the arguments
based thereon.
Opposer also objects to certain statements by Applicant in paragraphs 6-7, 9, and
11, of his declaration for lack of personal knowledge, lack of foundation, and
speculation, and to all of the printed matter attached to Exhibit B of Applicant’s
declaration on the basis that the statements and materials are hearsay but offered
for the truth of the matter asserted.16 We decline to exclude this evidence, which is
not outcome determinative, and will consider it for what it is worth. See Grote Indus.,
Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1200 (TTAB 2018); U.S. Playing Card
Co. v. Harbro LLC, 81 USPQ2d 1537, 1540 (TTAB 2006) (“[B]ecause an opposition is
akin to a bench trial, the Board is capable of assessing the proper evidentiary weight
to be accorded the testimony and evidence, taking into account the imperfections
surrounding the admissibility of such testimony and evidence.”).
B. Applicant’s Objections

Applicant objects to and moves to strike from the record what he characterizes as
“Opposer’s secret, undisclosed evidence” relied on by Opposer but redacted from the
public version of its main brief:17
Opposer’s brief hides what appears to be its most important evidence

16 29 TTABVUE (Opposer’s Statement of Objections).
17 35 TTABVUE 6.
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and argument regarding the MILLENNIAL FALCON mark and
whether it has acquired distinctiveness or fame. … Opposer has not, to
[Applicant’s] knowledge, presented any argument to the Board as to why
its secret evidence and secret argument should be allowed. If it has
presented such argument, then this is just another layer of unfairness
visited on [Applicant] by one of the biggest corporations in the world.
The Board should not countenance such secret evidence and secret
argument, whether or not that might appear to be allowed by the
Board’s rules, because this conduct violates fundamental principles of
due process.

Opposer could have offered a confidentiality agreement to [Applicant]
but never did. Instead it took advantage of rules that, as applied in this
proceeding, are deeply unfair and un-American.

In response, Opposer explains that its April 2019 responses to Applicant’s
discovery requests included general and specific objections to requests seeking
information or evidence designated by Opposer as being “Confidential – For
Attorneys’ Eyes Only (trade secret/commercially sensitive)” (“AEO”), and informed
Applicant that Opposer “intended to rely on those materials at trial but would not
produce them to pro se Applicant pursuant to TBMP § 412.02(b).”18 Correspondence
between the parties then followed, wherein Applicant alleged various purported
deficiencies, while Opposer maintained that its objections and responses were
proper.19 Opposer argues that Applicant, as a party, and as an individual appearing
pro se, is not entitled to view materials designated as AEO material as set forth in
the Board’s Standard Protective Order, and that Applicant waived its objections by
not challenging the sufficiency of Opposer’s responses through a motion to compel.20

18 40 TTABVUE 16 (Opposer’s Reply Brief); 38 TTABVUE 2-51 (Taylor Decl., Exhibit 1).
19 Id. at 52-62 (Exhibits 2-3).
20 40 TTABVUE 15-16 (Opposer’s Reply Brief).
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We agree.
Applicant was notified at the start of this proceeding that the Board’s Standard
Protective Order is automatically imposed in all inter partes proceedings and was
provided a link to that order.21 The Standard Protective Order governs the exchange
of information unless the Board approves a modified agreement, either by stipulation
or upon motion. 37 C.F.R. § 2.116(g); Kairos Inst. of Sound Healing LLC v. Doolittle
Gardens LLC, 88 USPQ2d 1541, 1544 (TTAB 2009); TBMP § 412.01. It provides for
two tiers of protected information: (1) Confidential and (2) Confidential – For
Attorneys’ Eyes Only (trade secret/ commercially sensitive).22 “Parties and those
parties or individuals appearing pro se will not have access to information designated
as [AEO].” Id.; see also U.S. Polo Ass’n v. David McLane Enters., Inc., 2019 USPQ2d
108442, at *2 (TTAB 2019) (“Parties, including in-house counsel, do not have access
to information designated ‘AEO’”). Accordingly, under the terms of the Standard
Protective Order, Applicant, as a party and individual appearing in this matter pro
se, is not entitled to gain access to AEO materials.
Paragraph 14 of the Standard Protective Order provides a remedy to a party who
believes that materials have been improperly designated as confidential: “the party
challenging the designation may make a motion before the Board seeking a
determination of the status of the information. A challenge to the designation of
information as protected must be made substantially contemporaneous with the

21 2 TTABVUE 4. (Link: https://www.uspto.gov/trademarks-application-process/appealing-
trademark-decisions/standard-documents-and-guidelines-0).
22 38 TTABVUE 68 (Taylor Decl., Exhibit A – Board’s Standard Protective Order, ¶ 14).
Opposition No. 91244449
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designation, or as soon as practicable after the basis for challenge is known.”23 See
also TBMP § 412.01(b). Thus, Applicant could have challenged Opposer’s designation
of AEO materials at the time of designation if he believed the designation was
improper, but he did not do so. He therefore waived his right to object to Opposer’s
AEO designations.
Applicant represents himself in this proceeding, which the applicable rules permit
him to do, notwithstanding the Board’s recommendations against it. However, Board
proceedings often involve complicated issues of substantive law and procedure , which
can prove difficult for a layperson. While we have kept in mind that Applicant is
representing himself, we are limited in our ability to excuse the consequences of his
unfamiliarity with the law. Strict compliance with the Trademark Rules of Practice
is expected of all parties before the Board. See McDermott v. San Francisco Women’s
Motorcycle Contingent, 81 USPQ2d 1212 n.2 (TTAB 2006), aff’d, 240 Fed. App’x 865
(Fed. Cir. 2007).24

23 Id.
24 Applicant’s suggestion that Opposer was required to first present argument to the Board
before designating evidence as AEO material reflects a misunderstanding of the applicable
trademark rules and procedures. 11 TTABVUE 10-11. The Board’s Institution Order warned
Applicant that this proceeding “is similar to a civil action in a federal district court and can
be complex. The Board strongly advises all parties to secure the services of an attorney who
is familiar with trademark law and Board procedure.” 2 TTABVUE 6. The Board cautioned
Applicant again when it granted Opposer’s motion to strike Applicant’s insufficiently pled
affirmative defenses earlier in this proceeding that “while Patent and Trademark Rule 10.14
permits any person to represent him or herself, it is generally advisable for a person who is
not acquainted with the technicalities of the procedural and substantive law involved in an
opposition or cancellation proceeding to secure the services of an attorney who is familiar
with such matters.”
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IV. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action is a threshold issue in every inter partes
case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d
1942, 1945. A party in the position of plaintiff may oppose a mark “where it has “both
a ‘real interest’ in the proceedings as well as a ‘reasonable’ basis for its belief of
damage.” Empresa Cubana, 111 USPQ2d at 1062 (citing ShutEmDown Sports, Inc.
v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (quoting Ritchie v. Simpson, 170 F.3d
1092 (Fed. Cir. 1999)).
Opposer, with its notice of opposition, provided a current copy of information from
the USPTO’s Trademark Status & Document Retrieval (TSDR) system database
showing the current status and title of its pleaded Registration No. 2450785 for the
mark MILLENNIUM FALCON, which is valid and subsisting.25 Opposer’s
entitlement to a cause of action in this proceeding is therefore established. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Primrose Ret. Communities, LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030, 1032 (TTAB 2016) (entitlement to a statutory cause of action
established based on pleaded registration made of record).

25 1 TTABVUE 17 (Notice of Opposition).
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V. The Parties and Their Marks
A. Applicant
Applicant “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.”26 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”27 and “wanted his band
name to make a statement about millennial-age attitudes toward Disney and Star
Wars corporate culture.”28 Applicant began using the mark MILLENNIAL FALCON
in connection with his musical performances “as early as August 5, 2016,” after he
filed his application.29
B. Opposer
Opposer was founded in 1971 and is the owner of the highly successful Star Wars
film franchise, which started with the original 1977 film STAR WARS, and continued
over the next four decades with ten subsequent Star Wars films, including30
STAR WARS: Episode V - The Empire Strikes Back (1980)
STAR WARS: Episode - VI Return of the Jedi (1983)

26 12 TTABVUE 2 (Applicant’s Main Brief).
27 Id.
28 Id.
29 12 TTABVUE 13 (Applicant Decl. ¶ 7). Applicant does not claim use of the mark in
connection with the other services identified in the application.
30 31 TTABVUE 3-4 (Gollaher Decl. ¶¶ 6, 8, and 10).
Opposition No. 91244449
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STAR WARS: Episode I - The Phantom Menace (1999)
STAR WARS: Episode II - Attack of the Clones (2002)
STAR WARS: Episode III - Revenge of the Sith (2005)
STAR WARS: The Force Awakens (2015)
Rogue One: A STAR WARS Story (2016)
STAR WARS: The Last Jedi (2017)
Solo: A STAR WARS Story (2018)
STAR WARS: The Rise of Skywalker (2019)

Opposer’s Star Wars films have a variety of characters and canon elements that
are part and parcel of Opposer’s Star Wars “fictional universe,” and which are
featured throughout the film series, including characters such as Luke Skywalker,
Darth Vader, Yoda, Obi-Wan Kenobi, Princess Leia, Han Solo, Chewbacca, R2-D2,
Rey, Lando Calrissian, and elements such as the Millennium Falcon, Death Star,
Lightsaber, The Force, Jedi, and Sith.31
The original Star Wars movie generated hundreds of millions of dollars in
domestic box office revenues and earned six Academy Awards; the others have either
received an Academy Award or have been nominated for one.32 Collectively, the films
include “6 of the top 20 all-time grossing movies by domestic box office,” generating
more than $3.5 billion in earnings.33 A number of them have been re-released over
the years, some with special editions, and they continue to be available through a
wide range of media, including on DVD and Blu Ray, through streaming services, and
cable TV providers.34

31 Id. at 6, 12 (¶¶ 15, 35).
32 Id. at 4 (¶ 9 and 11).
33 Id. at 5. (¶ 12).
34 Id. (¶ 14).
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The Star Wars films are also well-known for their musical scores. The original
Star Wars film was selected by the American Film Institute as the greatest American
film of all time, and in 2005 the Library of Congress entered its soundtrack into the
National Recording Registry for being “culturally, historically, or aesthetically
significant,” the first entry of its kind.35 Two of the soundtrack albums for the Star
Wars films have been certified Platinum, two were certified Gold, and more than 1.5
million units have sold collectively.36
Since 2009, Opposer, itself or through its licensees, has offered a STAR WARS
concert tour around the United States that features a band playing live music from
the STAR WARS Films while the films are displayed.”37 Opposer’s advertisements
and promotions for these concerts display various Star Wars characters and canon
elements, including the Millennium Falcon spaceship.38
Since 1977, Opposer has, itself or through licensees, produced, marketed,
distributed, and sold a wide range of consumer products and merchandise tied to
Opposer’s STAR WARS films, its characters and elements, including the Millennium
Falcon spaceship element that comprises Opposer’s MILLENNIUM FALCON mark
in this proceeding.39 Opposer’s parent company, The Walt Disney Company
(“Disney”), took over Opposer’s production, marketing, distribution and sales when it

35 Id. at 6 (¶ 18).
36 Id. at 7 (¶ 19).
37 Id. (¶ 20).
38 Id. at 26-28 (¶ 52).
39 Id. at 7-8 (¶ 22).
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acquired Opposer in 2012.40 Recognized as one of the top licensors in the United
States, Disney “engages in a vast licensing program under which it licenses the use
of [Opposer’s] brands, characters, and elements in connection with a wide variety of
products and services, including …but not limited to, entertainment services, theater
productions, television programs, motion picture films, comic books, books, toys, dolls,
sporting goods, bags, personal-care products, linens, towels, apparel, food, online
games, computer games, video games, music, and mobile applications, among other
things.”41
Millennium Falcon is the name of the fictional spaceship piloted by Han Solo
(played by actor Harrison Ford), a smuggler, and his co-pilot, Chewbacca.42 In the
1977 STAR WARS film, Hans Solo’s spaceship is chartered by Luke Skywalker, Obi -
Wan Kenobi, and droids R2-D2 and C-3PO, “to safely transport stolen plans of the
Death Star space station and superweapon operated by the Galactic Empire and its
leader the evil Darth Vader.”43 The ship and its passengers are captured, but after
saving the Princess Leia, they escape on the Millennium Falcon and in the final
battle, the Death Star is destroyed.44 An image of the Millennium Falcon from the
film is shown below:45

40 Id. at 8 (¶ 23).
41 Id. at 9 (¶ 24).
42 Id. at 4, 9 (¶¶ 8, 28).
43 Id. at 9-10 (¶ 28).
44 Id. at 10 (¶¶ 28-29).
45 Id. at 11 (¶ 30))
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Opposer’s Millennium Falcon spaceship has been featured in a number of
television series and documentaries since 1997, including46
The Making of STAR WARS (ABC, 1977)
SPFX: The Making of THE EMPIRE STRIKES BACK (CBS, 1980)
Classic Creatures: RETURN OF THE JEDI (CBS, 1983)
From STAR WARS to JEDI: The Making of a Saga (PBS, 1983)
LEGO STAR WARS: The Empire Strikes Out (Cartoon Network, 2012)
LEGO STAR WARS: The Hunt for Luke Skywalker (YouTube, 2014),
LEGO STAR WARS Microfighters (Lego.com and YouTube, 2014, 2016)
LEGO STAR WARS: Droid Tales (Disney XD, 2015, available on
Disney+)
LEGO STAR WARS: The Resistance Rises (Disney XD, 2016)
STAR WARS Blips (YouTube, 2017)
LEGO STAR WARS: All-Stars (Disney XD, 2018, now DISNEY+)
LEGO STAR WARS: The Freemaker Adventures (Disney XD, 2016-
2017, now DISNEY+ streaming service
STAR WARS: Forces of Destiny (YouTube, 2017-2018, now on The
Disney Channel)
STAR WARS Galaxy of Adventures (2018-present, starwarskids.com,
YouTube)

46 Id. at 12-14 (¶¶ 36-38).
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The consuming public has had continued access to the Star Wars film franchise up to
the present time: The Disney Channel had 86 million subscribers, and Disney XD
channel had 68 million subscribers, as of September 2019; the Disney+ subscription
services had 50+ million subscribers as of April 8, 2020.47 Sales and revenues from
DVDs, Blue Rays, and digital versions of Opposer’s STAR WARS films, which feature
the Millennium Falcon spaceship, have been substantial.48
MILLENNIUM FALCON-branded toy vehicles is an early example of Opposer’s
merchandising of consumer products, which was first offered in 1977 and continued
to be offered to the present time.49 These goods, covered by Opposer’s Registration
No. 2450785, include various toy vehicles in the nature of MILLENNIUM FALCON-
branded LEGO toy construction (which have had substantial commercial success as
determined by unit sales revenues), toy vehicle models and kits, toy vehicle dolls and
plush toys, toy vehicle pool floatation devices, and other toys, some examples of which
are shown below:50

47 Id. at 14 (¶ 39).
48 Opposer has designated its sales units and revenues for these goods as confidential so we
only refer to them in general terms.
49 Id. at 39 (¶ 68).
50 Id. at 41 (¶ 59).
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I

Opposition No. 91244449
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Opposer has used MILLENNIUM FALCON on or in connection with a series of
printed publications over the years, including with 2008 New York Times bestseller
book titled STAR WARS – MILLENNIUM FALCON, and has been “featured in the
title and on the cover of at least 10 other books” including: STAR WARS THE
MILLENNIUM FALCON pop-up book, (1977); STAR WARS MILLENNIUM
FALCON – A 3-D Owner’s Guide (2010, revised 2018); STAR WARS MILLENNIUM
FALCON – Owner’s Workshop Manual (2011); STAR WARS MILLENNIUM
FALCON deluxe model and book Set (2016); STAR WARS - BUILDERS –
MILLENNIUM FALCON (2016) book and model; and IncrediBuilds STAR WARS –
MILLENNIUM FALCON book and model, which continue to be available from
nationwide retailers. The mentioned publications are shown below:51

51 Id. at 15-18 (¶¶ 41-43).
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Opposition No. 91244449
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These publications generated substantial revenues for Opposer during 2015-2018.52
Opposer has also used the mark MILLENNIUM FALCON and MILLENNIUM
FALCON CHALLENGE on or in connection with games, including computer and
video games over the years, including “the 1994 computer game STAR WARS
MILLENNIUM FALCON, the 1997 handheld video game STAR WARS
MILLENNIUM FALCON CHALLENGE, and the 1997 video game STAR WARS
MILLENNIUM FALCON CHALLENGE for the “R-Zone” gaming platform, several
of which are shown below:53

52 Id. at 20 (¶ 46).
53 Id. at 20-23 (¶ 47).
Opposition No. 91244449
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The Millennium Falcon spaceship has also “been featured in numerous computer
and video games. In some of these other computer and video games, players could
virtually fly the MILLENNIUM FALCON spaceship,” such as with the 2015 game,
Star Wars Battlefront, which “was the biggest video game release in Star Wars
history, with more than 13 million units sold as of February 2016.”54

54 Id.
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Since 2010, Opposer has used the mark MILLENNIUM FALCON for providing
an online soundboard. The soundboard, “prominently displays the MILLENNIUM
FALCON Mark and spaceship and allows consumers to create musical tracks with
sound effects from the MILLENNIUM FALCON spaceship.”55 Screen shots of the
soundboard are shown below:56

55 Id. at 29-30. (¶ 55).
56 Id. at 232 (Exhibit 6).
Opposition No. 91244449
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In addition, Opposer has licensed use of the name MILLENNIUM FALCON for
various consumer products over the years, since 1977, including for the following
goods: “clothing, sleepwear, underwear, bags, backpacks, wallets, luggage, headwear,
gloves, accessories, jewelry, footwear, clocks, watches, drinkware, lunch boxes, drink
accessories, room décor, bedding, kitchenware, Christmas ornaments, speakers,
consumer electronics, costumes, games, model kits, toys, toy vehicles, plush toys,
outdoor play toys, prop replicas, stationery, trading cards, and wall décor,” some
examples of which are shown below:57

57 Id. at 36-37 (¶ 64).
Opposition No. 91244449
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Since 2016, Opposer has, itself or through licensees, provided a MILLENNIUM
FALCON loudspeaker through nationwide retailers such as Amazon.com, Walmart,
and Kohl’s:58

Opposer uses the Millennium Falcon spaceship element in various other ways over
the years. For example, two songs have used Millennium Falcon in their name: “The
Millennium Falcon / Imperial Cruiser Pursuit” from the 1997 soundtrack of the film
STAR WARS: A New Hope, and “L3 & Millennium Falcon” from the 2018 soundtrack
of the film Solo: A STAR WARS Story.59 Opposer’s Millennium Falcon spaceship has

58 Id. at 38-39 (¶ 67).
59 Id. at 29 (¶ 54).
Opposition No. 91244449
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also been used since 2011 at Disneyland in California, and at Disney World in Florida,
in connection with motion simulator rides that display the spaceship “so that
consumers feel like they are ‘following’ the MILLENNIUM FALCON spaceship into
space.”60 Since 2015, Disney has provided entertainment services related to the
Millennium Falcon spaceship aboard its cruise ships, such as an interactive replica
of the interior of the spaceship with interactive panels in the “Star Wars Millennium
Falcon” game room on its ship, the Disney Dream, an excerpt of which is shown
below:61

VI. Likelihood of Confusion

Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists 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 used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15

60 Id. at 30 (¶ 56).
61 Id. at 32, 239 (¶ 60 and Exhibit 8).
Opposition No. 91244449
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U.S.C. § 1052(d). To prevail on its § 2(d) claim, Opposer must prove, by a
preponderance of the evidence, that it has priority in the use of its mark and that
registration of Applicant’s mark is likely to cause confusion, mistake, or deception as
to the source or sponsorship of the services identified in his application. Cunningham
v. Laser Golf Corp., 55 USPQ2d at 1848.
Our analysis is based on all of the probative evidence of record. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). In
making our determination, we consider each DuPont factor for which there is
evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019). Varying weights may be assigned to each DuPont factor
depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp.
Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors
may play more or less weighty roles in any particular determination”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”).

Opposition No. 91244449
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A. Priority

Because Opposer’s pleaded registration is of record, priority in the opposition
proceeding is not at issue with respect to the mark and “toy vehicle” goods identified
therein. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB
2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974)).
Moreover, as discussed above, the evidence shows that Opposer used
MILLENNIUM FALCON as a mark in connection with books, computer and video
games, online soundboards, and a variety of consumer products (i.e., clothing,
footwear, bags, watches, drinkware, room décor, bedding, kitchenware, speakers,
games, model kits, toys, toy vehicles, plush toys, prop replicas, stationery, trading
cards), all prior to June 9, 2016, the constructive use date of Applicant’s intent-to-use
application, and the earliest date on which Applicant is entitled to rely. Section 7(c)
of the Trademark Act, 15 U.S.C. § 1057(c) (In the absence of evidence establishing
earlier use of its mark, a party may rely for priority purposes on the filing date of its
application); Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140
(TTAB 2013); Syngenta Crop Prot., Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1119
(TTAB 2009).
B. Similarity of the Marks
The first DuPont factor considers the “similarities or dissimilarities of the marks
in their entireties as to appearance, sound, connotation and commercial impression.”
In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018)
Opposition No. 91244449
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(quoting DuPont, 177 USPQ at 177). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d
1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)),
aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019).
The test is not whether the marks can be distinguished in a side -by-side
comparison, but rather whether their overall commercial impressions are so similar
that confusion as to the source of the goods and services offered under the respective
marks is likely to result. See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1801 (Fed. Cir. 2018) (citing Coach Servs. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). Our focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of marks. Spoons Rests., Inc. v. Morrison, Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992); Inter IKEA Sys. B.V.
v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Neutrogena Corp. v. Bristol-
Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1969) (many consumers “may
have but dim recollections from having previously seen or heard one or the other of
the involved marks.”).
Opposer’s mark is MILLENNIUM FALCON and Applicant’s mark is
MILLENNIAL FALCON. Both marks are arbitrary with respect to the parties’ goods
and services, and they are almost identical in appearance, sound, connotation, and
commercial impression (differing only in the last two letters of their respective first
Opposition No. 91244449
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9-letter words). A “millennium” is “a period of 1000 years.”62 “Millennial,” an adjective
of the noun millennium, means “of or relating to a millennium.”63 The terms thus
convey the same connotation and commercial impression.
“Millennial” is also defined as “a person born in the 1980s or 1990s – usually
plural” (noun), and “of or relating to millennials” (in adjective form).64 Based on this
alternate definition, Applicant disputes that the marks are similar, particularly as to
meaning:65
Millennial, in the context in which [Applicant] uses it is not a period of
time at all but rather is an adjective used in reference to a stereotypical
view of a presumed set of attitudes and behaviors exhibited by a
particular set of American’s, i.e., the Millennial generation. [Applicant]
chose to parody the corporate culture represented by Millennium Falcon
to lampoon the glut of marketing and production of elements of the
franchise aimed at the Millennial generation by Disney/[Opposer] in
their attempt to control the market for entertainment on all levels. In
doing so, [Applicant] created a trademark with a meaning that is in
critical and obvious opposition to Opposer’s asserted trademark….

One aspect of this different meaning and the parody it expresses is that,
just as the Millennium Falcon is used by rebel forces to fight a
totalitarian empire, the Millennial Falcon is the vehicle for [Applicant]
to rebel against the overreaching corporate empire. The name
“Millennial Falcon,” also evokes and pokes fun at a certain pop culture
nostalgia experienced by the Millennial generation in consuming
Opposer’s products and services. The parody is a joke aimed at
Disney/[Opposer’s] use of this generational nostalgia to sell products to
Millennials and their families. Members of the Millennial generation
understand this parody and appreciate it.

62 22 TTABVUE 141-148 (Opposer’s NOR 5, Exhibit 7).
63 Id.
64 Id.
65 12 TTABVUE 6-7 (Applicant’s Main Brief) (emphasis added, citations omitted).
Opposition No. 91244449
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“However, we must look to the likely consumer perception of the mark in
connection with the identified goods [and services], rather than applicant’s intended
connotation.” UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1886 (TTAB
2011). Notwithstanding Applicant’s intention to impart the above -described
connotation for his mark, the record is devoid of evidence showing that the relevant
public perceives the mark in that way.
Applicant admits that MILLENNIAL FALCON “conjures up the phrase
“Millennium Falcon,”66 which he argues is necessary in order for there to be a parody
at all, and that “[a]ny perceived similarities between [the marks] are solely for
illustrating the obvious parody.”67 We agree with Applicant that MILLENNIAL
FALCON conjures up Opposer’s mark, but find no parody in the wording, much less
one that is obvious. Moreover, we have long held that parody is a viable defense in a
likelihood of confusion analysis only if the involved marks are otherwise not found
confusingly similar. Here, the marks are virtually identical. See Boston Red Sox
Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008) (“Parody is not a
defense if the marks would otherwise be considered confusingly similar.”).
We therefore reject Applicant’s argument that there is any significant difference
between the marks. To suggest otherwise is 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-

66 7 TTABVUE 8-9 (Applicant’s Answer).
67 12 TTABVUE 9 (Applicant’s Main Brief).
Opposition No. 91244449
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by-side comparison. The first DuPont factor weighs heavily in favor of finding a
likelihood of confusion.
C. Similarity of the Goods and Services
The second DuPont factor considers the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Detroit Athletic,
128 USPQ2d at 1047 (quoting DuPont, 177 USPQ at 567).
It is “not necessary that the goods [and services] be identical or even competitive
to support a finding of a likelihood of confusion.” Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
“[L]ikelihood of confusion can be found ‘if the respective goods [and services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.’” Id. It is “well established that ‘confusion may be likely to occur from the use
of the same or similar marks for goods, on the one hand, and for services involving
those goods, on the other.’” Detroit Athletic, 128 USPQ2d at 1051 (quoting TMEP §
1207.01(a)(ii)).
Applicant’s identification of services includes live visual and audio performances
by a live musical performance group, a musical band, and a rock group; gymnastic,
dance, and ballet performances; multimedia entertainment services in the nature of
recording, production and post-production services in the fields of music, video, and
films; production of musical sound and video recordings.
Opposer’s registration for the mark MILLENNIUM FALCON covers toy vehicles.
Opposition No. 91244449
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However, it is clear from the record that Opposer uses its mark in commerce for many
other goods and services. Indeed, MILLENNIUM FALCON is a merchandising mark,
part and parcel of the STAR WARS mythos in promoting Opposer’s films and music,
and has been the subject of licenses for numerous collateral products.
“It is common knowledge, and a fact of which we can take judicial notice, that the
licensing of commercial trademarks on ‘collateral’ products [and services] has become
a part of everyday life.” DC Comics v. Pan Am. Grain Mfg. Co. Inc., 77 USPQ2d 1220,
1225 (quoting Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1945-1946
(TTAB 1996)). The record shows that Opposer has since 1977, and more aggressively
since Disney took over its producing, marketing, distribution, and sales in 2012, used
its STAR WARS trademarks, characters, elements, and brands, including the
fictional MILLENNIUM FALCON spaceship, with a wide variety of products and
services including entertainment services, theater productions, television programs,
motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-
care products, linens, towels, apparel, food, online games, computer games, video
games, music, and mobile applications.68
Opposer’s “[l]icensees over the years include numerous well-known companies
such as Disney, Marvel, Hasbro, Hallmark, Mattel, LEGO, Revell, Kenner, Bandai,
Tiger Electronics, Topps, Crayola, and NASCAR, just to name a few.”69 “Sales of
STAR WARS merchandise has been tremendous. For example, global retail sales for

68 30-31 TTABVUE 7-8 (Gollaher Decl., ¶ 22-23).
69 Id. at 65 (¶ 65).
Opposition No. 91244449
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STAR WARS merchandise in the first quarter of 2016, which included various items
of MILLENNIUM FALCON merchandise, exceeded $3 billion, a significant portion
of which took place in the United States.”70
Mr. Gollaher testified that that “[s]ales of MILLENNIUM FALCON branded
merchandise have likewise been enormous,” and that it has earned substantial
revenues “for other merchandise sold by licensees bearing the MILLENNIUM
FALCON Mark.”71 Opposer has designated its revenues as confidential, so we only
refer to them in general terms, but we agree that they are substantial.
Although MILLENNIUM FALCON has not been used on as wide a variety of
goods as the STAR WARS mark, it has been used as a mark on or in connection with
many goods, by Opposer or by licensees, with printed publications, games, computer
and video games, loudspeakers, “clothing, sleepwear, underwear, bags, backpacks,
wallets, luggage, headwear, gloves, accessories, jewelry, footwear, clocks, watches,
drinkware, lunch boxes, drink accessories, room décor, bedding, kitchenware,
Christmas ornaments, speakers, consumer electronics, books, games, computer
games and videos, toys, model kits, loudspeakers, online soundboards, clothing,
footwear, bags, wallets, luggage, jewelry, watches, drinkware, lunch boxes, room
décor, bedding, kitchenware, Christmas ornaments, costumes, stationery, trading
cards, and other goods.”72 Further, Opposer has used MILLENNIUM FALCON as the

70 Id. at 63 (¶ 84).
71 Id. at 63-64 (¶ 86).
72 Id. at 15-18, 20-23, 29-30, 36-38 (¶¶ 41-43, 47, 55, 64, 67).
Opposition No. 91244449
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name of its spaceship in conjunction with its STAR WARS films, television series,
musical recordings, and live concerts.
Consumers are therefore likely to view MILLENNIUM FALCON as a
merchandising mark. The “element” to which Opposer gave the name MILLENNIUM
FALCON has been used in the various STAR WARS stories for so many decades, and
is an integral part of the stories, to the point that it is akin to a character in the
stories. In addition, because Opposer coined the word term “MILLENNIUM
FALCON” for the fictional spaceship portrayed in the films (and therefore it has no
other meaning), when consumers see the term they will view it as an indicator of the
STAR WARS mythos.
Although Opposer does not specifically provide its musical recordings and concerts
under the MILLENNIUM FALCON mark, it is clear from the evidence that Opposer
associates its well-known Star Wars element, the MILLENNIUM FALCON
spaceship, with its STAR WARS films, television series, musical recordings and
concerts. Applicant, in addition to identifying musical performances in the opposed
application, identifies entertainment multimedia entertainment services of musical
and sound recording, production and post-production services in the fields of music,
video, and films.
Thus, the question is whether the parties’ respective goods/services are related in
some manner or that the conditions surrounding their marketing are such that they
would be encountered by the same persons under circumstances that could, in light
of the close similarity of the marks, give rise to the mistaken belief that the goods
Opposition No. 91244449
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come from or are associated with the same source. Coach Servs., 101 USPQ2d at 1722;
Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1826 (TTAB
2015). That is, in this marketing environment, including the licensing of commercial
marks, will the purchasing public believe that Applicant’s musical performances,
and/or its musical and sound recording, production and post-production services in
the fields of music, video, and films come from or are sponsored by or associated with
Opposer? On this record, we find that the answer is in the affirmative. Hewlett-
Packard v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002
(“Even if the goods and services in question are not identical, the consuming public
may perceive them as related enough to cause confusion as to source or origin of the
goods and services.”); see also L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1890
(TTAB 2018) (quoting Recot Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1894,
1898 (Fed. Cir. 2000) (“Even if the goods [or services] in question are different from,
and thus not related to, one another in kind, the same [goods or services] can be
related in the mind of the consuming public as to the origin of the goods. It is this
sense of relatedness that matters in the likelihood of confusion analysis.”).
In many ways, Opposer’s use of MILLENNIAL FALCON as a merchandising
mark is similar to the way DC Comics used its KRYPTONITE mark. In DC Comics,
the opposer was primarily a publisher of print media containing stories about various
superhero characters, including Superman, its first superhero character from 1938.
DC Comics, 77 USPQ2d at 1223. “Kryptonite,” composed of mineral fragments from
the doomed planet Krypton, appeared in the story beginning in 1949, and is a key
Opposition No. 91244449
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element in the story “as it is the only thing that can bring Superman down.” Id.
The opposer in DC Comics only owned registrations for t-shirts, toys, games,
action figures and accessories therefor, but it also licensed the use of its
KRYPTONITE mark for goods such as jewelry, gum, and crystals. Id. at 1225. When
opposer licensed its “Superman property,” it permitted the licensee to use any of the
elements of the Superman mythos or universe including the Kryptonite element. Id.
at 1223. In addition, the opposer had used its mark in promotions and tie -ins with
Kraft macaroni and cheese (“It Sure Beats A Bowl of Kryptonite”) and Diet Coke
(“Caffeine Free. Kryptonite Free.”) Id. The Board found opposer’s goods “obviously
different” from the applicant’s identification of goods for prepared alcoholic fruit
cocktails.
The Board found in DC Comics that “[a]lthough KRYPTONITE has not been used
on the wide variety of goods that the Superman mark itself has been used, it has been
used on various items,” and that
[c]onsumers would be “likely to view KRYPTONITE as a merchandising
mark in the same manner that Superman is a merchandising mark”: the
“element” to which opposer gave the name “kryptonite” has been used
in the various Superman stories for so many decades, and is an integral
part of the stories, to the point that it is akin to a character in the stories.
In addition, because opposer coined the word “KRYPTONITE” for the
fictional substance (and therefore it has no other meaning), when
consumers see the term they will view it as an indicia of the Superman
mythos.

Accordingly, the Board found that the parties’ goods were sufficiently related such
that consumers would believe that they come from or are associated with the same
source. Id. at 1226-1227.
Opposition No. 91244449
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We find, similarly, that because Opposer has used MILLENNIUM FALCON as a
merchandising mark with respect to a variety of goods; because consumers recognize
that, in the general marketing environment, merchandising marks are used to
identify a variety of goods and services; and because Opposer has used the term
MILLENNIUM FALCON in connection with the promotion of its STAR WARS films,
television series, musical recordings, and live concerts, we find that, in the sense
discussed in the Recot and Hewlett Packard cases, Applicant’s services and Opposer’s
goods and services are related. Based on the foregoing, and taking into account that
the more similar the marks at issue, the less similar the goods or services need to be
to support a finding of likelihood of confusion, see General Mills, Inc. v. Fage Dairy
Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011), judgment set aside on
other grounds, and General Mills, Inc. v. Fage Luxembourg S.A.R.L., 110 USPQ2d
1679 (TTAB 2014), we find that consumers, encountering MILLENNIAL FALCON in
connection with Applicant’s musical performance and his multimedia musical and
sound recording, production and post-production services in the fields of music, video,
and films, are likely to believe that the mark has been licensed by Opposer for such
services, and that the services are therefore sponsored by Opposer. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); Time
Warner Entm’t. Co. v. Jones, 65 USPQ2d 1650, 1661-62 (TTAB 2002); Harley-
Davidson Motor Co., Inc. v. Pierce Foods Corp., 231 USPQ 857 (TTAB 1986).
The second DuPont factor favors a finding of likelihood of confusion.
Opposition No. 91244449
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D. Similarity of Trade Channels and Classes of Purchasers
The third DuPont factor considers the “similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567.
Opposer argues that “the evidence shows that both Applicant’s and [Opposer’s]
entertainment services in fact travel through the same channels of trade to the same
consumers. For example, both market and offer their respective services online, on
social media, and at live music venues. Applicant even promotes his services in comic
books he offers as part of his record albums.”73
Applicant argues that his trade channels are widely separated from Opposer’s
marketing and sales practices because “[Applicant] provides the Millennial Falcon
services in bars, nightclubs, and the like, and advertises in channels likely to reach
the mostly adult clientele for such venues. … [Applicant’s] services are not provided
or advertised in toy stores or in any venue where consumers are looking for any goods
or services produced by Disney/[Opposer].”74
As discussed, Opposer’s MILLENNIUM FALCON is a merchandising mark, and
it has been used as an indicator of the STAR WARS mythos in promoting Opposer’s
films and music, and has been the subject of licenses for certain collateral products,
so its purview is not limited to the toy vehicles covered by its registration.
Additionally, as Opposer has noted, Applicant’s recitation of services contains no

73 32 TTABVUE 37-38 (Opposer’s Main Brief).
74 12 TTABVUE 7-8 (Applicant’s Main Brief).
Opposition No. 91244449
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restrictions on channels of trade or customer type.75 Therefore, we must deem his
services to travel in all appropriate trade channels to all potential purchasers of such
services. See Royal Appliance Mfg. Co. v. Minuteman Int’l, Inc., 30 Fed. App’x 964,
969 n.1 (Fed. Cir. 2002) (“absent restrictions in the [opposed] application and
[asserted] registration, goods and services are presumed to travel in all appropriate
trade channels to all potential purchasers of such goods [and services]”); Cunningham
v. Laser Golf Corp., 55 USPQ2d at 1846 (affirming Board finding that where the
identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods [and services]”).
Based on the foregoing, Applicant’s musical performance services necessarily
include the same venues in which Opposer provides its STAR WARS concerts.
However, there is insufficient evidence of record that Applicant’s other services are
provided in the same channels as Opposer’s other goods and services.
This third DuPont factor slightly favors a finding of likelihood of confusion.
E. Purchasing Conditions and Sophistication of Customers
The fourth DuPont factor considers “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (quoting DuPont, 177 USPQ at 567).
Applicant argues that “[t]he Millennial Falcon band has a sophisticated audience
that will not mistake the two names, but rather is able to recognize both the

75 32 TTABVUE 38 (Opposer’s Main Brief).
Opposition No. 91244449
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distinction and the parody being employed.”76 However, Applicant has not provided
any evidence to show that consumers of visual and audio musical performance or its
other services are sophisticated. Even if he had, consumers may not be sophisticated
or knowledgeable in the field of trademarks or immune from source confusion. See In
re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)
(indicating that “even sophisticated purchasers can be confused by very similar
marks”); Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB
2011). Moreover, our decision must be based on the “least sophisticated purchasers,”
Stone Lion, 110 USPQ2d at 1163.
Applicant argues that his services are directed to a “predominantly adult
clientele,” unlike those who may purchase Opposer’s toy vehicles.77 As discussed,
Opposer’s goods and services are not limited to toy vehicles. Moreover, adult
purchasers are aware of the prevalence and importance of merchandising marks.
Because the Millennium Falcon spaceship is such a well-known part of the Star Wars
story, adult purchasers of Applicant’s goods would likely be aware of the term
Millennium Falcon as part of the Star Wars mythos from their childhoods, as well as
from their exposure to the word as adults through general entertainment movies and
television programs.
The fourth DuPont factor is neutral in our analysis.

76 12 TTABVUE 7 (Applicant’s Main Brief).
77 12 TTABVUE 4 (Applicant’s Main Brief).
Opposition No. 91244449
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F. Strength of Opposer’s Mark
The fifth DuPont factor considers the “fame” or strength of the prior mark, and
enables an opposer to expand the scope of protection afforded its pleaded mark by
adducing evidence of “[t]he fame of the prior mark (sales, advertising, length of use).”
DuPont, 177 USPQ at 567. Fame, if it exists, plays a dominant role in the likelihood
of confusion analysis because famous marks enjoy a broad scope of protection. A
famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v.
M.C. Becton, 54 USPQ2d at 1897; Kenner Parker Toys, Inc. v. Rose Art Indus., Inc.,
963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Because of the extreme
deference that we accord a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in the likelihood of confusion
analysis, it is the duty of the party asserting that its mark is famous to clearly prove
it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904
(TTAB 2007).
The strength of a mark “varies along a spectrum from very strong to very weak.”
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343
F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). To determine a mark’s place on
that spectrum, we consider its inherent strength, based on the nature of the mark
itself, and its commercial strength, based on its marketplace recognition. See In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A
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mark’s strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength.”); Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d
1340, 1345 (TTAB 2017); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101
USPQ2d at 1171-72 (the strength of a mark is determined by assessing its inherent
strength and its commercial strength).
Turning first to inherent strength, MILLENNIUM FALCON is fanciful term
coined by Opposer and, therefore, it is an inherently strong mark when used in
connection with Opposer’s goods and services. See Palm Bay Imps., 73 USPQ2d at
1692 (arbitrary terms are conceptually strong trademarks); Alberto-Culver Co. v.
Helene Curtis Indus., Inc., 167 USPQ 365, 370 (TTAB 1970) (CANAL HOLDINGS
used in connection with investment, management and consultation services is an
arbitrary term because it does not describe, or suggest, any quality or characteristic
of those services); see also Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d
1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as a
“known word [or term] used in an unexpected or uncommon way” and observing that
such marks are typically strong).
Commercial strength may be measured indirectly by the volume of sales and
advertising expenditures in connection with the goods or services sold under the
mark, and supported by other indicia such as length of time of use of the mark;
widespread critical assessments; notice by independent sources of the goods or
services identified by the marks; and the general reputation of the goods or services.
Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014);
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Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir.
2002) (recognizing indirect evidence as appropriate proof of strength). The proper
legal standard for evaluating the commercial strength of a mark under the fifth
DuPont factor is the class of customers and potential customers of a product or
service, and not the general public. Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
Opposer’s demonstration of commercial strength rests primarily on evidence of
the success of its Star Wars films, discussed at length above. Recapitulating, the
evidence shows that Opposer has used MILLENNIUM FALCON as a mark, and in
many other ways, since 1977 in association with its Star Wars franchise. Opposer’s
witness, Mr. Gollaher, testified that “the films in which [Opposer’s] MILLENNIUM
FALCON Mark and spaceship have appeared have collectively generated billions of
dollars in domestic box office revenues” and that the films “include six of the top
twenty all-time grossing movies by domestic box office.”78 “Collective box office
revenues from films in which the MILLENNIUM FALCON mark and spaceship have
appeared exceeded $4 billion, with more than $2 billion from films in the past five
years.”
As to Opposer’s use of MILLENNIUM FALCON as a mark. Mr. Gollaher testified
that “global retail sales for STAR WARS merchandise in just the first quarter of 2016,
which included various items of MILLENNIUM FALCON-branded merchandise,
exceeded $3 billion, a significant portion of which took place in the United States.”

78 30-31 TTABVUE 4-5, 12 (Gollaher Delc., ¶ 12, 34).
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He further testified regarding revenues generated specifically relating to Opposer’s
use of the MILLENNIUM FALCON mark in connection with the sale of its books, as
well as its toy construction sets sold through its licensee, Lego, made of record
confidentially, which are impressive.79
Separately, Mr. Gollaher testified that for decades, Opposer’s MILLENNIUM
FALCON mark “has received extensive media attention from a variety of nationwide
publications” over the years, listing various newspapers such as The Washington
Post, The Los Angeles Times, The Chicago Tribune, and others.80 Such media
attention to MILLENNIUM FALCON as the famed fictional spaceship from
Opposer’s Star Wars films further supports the public association of MILLENNIUM
FALCON with Opposer.
Overall, the evidence is insufficient to persuade us that the MILLENNIUM
FALCON mark enjoys the highest level of renown as a trademark. However, it is
indeed commercially very strong. Accordingly, we find that the mark enjoys a high
level of public recognition, such that the DuPont factor of fame weighs in favor of a
finding of likelihood of confusion.
G. Actual Confusion
The seventh DuPont factor considers the “nature and extent of any actual
confusion” between the marks. DuPont, 177 USPQ at 567.
Applicant argues that there has been no actual confusion. Evidence of actual

79 Id. at 18, 41 (¶¶ 44, 69).
80 Id. at 60-52 (¶ 81).
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confusion, where it exists, would of course be highly probative of a likeliho od of
confusion. See Edom Labs, Inc. v. Lichter, 102 USPQ2d 1546, 1553 (TTAB 2012) (“The
existence of actual confusion is normally very persuasive evidence of likelihood of
confusion and undercuts any possible claim that the marks are so dissimilar that
there can be no likelihood of confusion.”).
The opposite, however, is not true; an absence of evidence of actual confusion
carries little weight. See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003); Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 52 C.C.P.A. 981,
144 USPQ 435, 438 (CCPA 1965). It is “meaningful only if the record indicates
appreciable and continuous use by applicant of its mark for a significant period of
time in the same markets as those served by opposer under its marks.” Citigroup Inc.
v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d
1344, 98 USPQ2d 1253 (Fed. Cir. 2011).
As Opposer points out, “[n]ot only is the Application based on intent-to-use, but
Applicant at most has shown only a handful of performances under the
MILLENNIAL FALCON Mark since 2016, most of which were rendered in one city,
and Applicant produced no evidence of attendance figures, box office receipts, or other
sales information.” See Regents v. Miners, 110 USPQ2d 1182, 1196 (TTAB 2014)
(applicant had only begun to offer services two years before discovery closed, so little
opportunity for confusion). There is nothing in the record regarding the extent of use
of Applicant’s mark, so we are unable to gauge whether there has been
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any meaningful opportunity for confusion to occur in the marketplace. See Bond v.
Taylor, 119 USPQ2d 1049, 1056 (TTAB 2016).
The seventh DuPont factor is neutral in our analysis.
H. Bad Faith
Under the thirteenth DuPont factor, evidence of an applicant’s bad faith adoption
of its mark is relevant to our likelihood of confusion analysis. L.C. Licensing Inc. v.
Berman, 86 USPQ2d at 1891 (bad faith is strong evidence that confusion is likely,
as such an inference is drawn from the imitator ’s expectation of confusion). See also,
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891
(Fed. Cir. 1991); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434 (TTAB 2012).
Opposer argues that Applicant adopted the MILLENNIAL FALCON mark in bad
faith.81 Specifically, Opposer points to the timing of Applicant’s adoption of
MILLENNIAL FALCON as a mark “just a few months after release of the blockbuster
film STAR WARS: The Force Awakens, which predominantly features the
MILLENNIUM FALCON spaceship and was accompanied by MILLENNIUM
FALCON-branded products” as “telling”; his various admissions that he selected the
mark because of its association to the Millennium Falcon element in Opposer’s Star
Wars films; and his use of the use mark since its adoption to continue that
association:82
Applicant also uses STAR WARS indicia in rendering musical

81 32-33 TTABVUE 37-38 (Opposer’ Main Brief), referencing Applicant’s responses to
Opposer’s Requests for Admissions Nos. 2-6 and 30, 23 TTABVUE 19-22, and his Answer, 7
TTABVUE 8-9).
82 Id.
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performances under the MILLENNIAL FALCON mark by performing
with X-WING spaceship props from the STAR WARS Films, and by
making references to spaceships in connection with his services,
including referring to his band as “spaceship, not bad” and offering comic
books featuring a “Millennial Falcon” spaceship as both free downloads
and with the purchase of his music records.

The photo shown below is an excerpt from Applicant’s Facebook page, which shows
the use of Opposer’s Star Wars X-WING spaceship props as part of the staging of his
performance:83

Applicant asserts the props were owned and positioned by the venue several weeks
before his performance, but in any event, they “do not in any way even suggest
[Applicant’s] bad faith, but instead are further evidence that the relevant consumers’
[sic] have a familiarity with the STAR WARS movies such that they will instantly
recognize the parody inherent in the MILLENNIAL FALCON mark and not be
confused.”84’ As another example, Applicant used the following advertisement on his

83 28 TTABVUE 13 (Opposer’s NOR 11) (red outlining added by Opposer).
84 35 TTABVUE 4 (Opposer’s Reply Brief).
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Facebook page to promote one of his performances:

Applicant believes that his mark “appropriately conjures up the phrase
“Millennium Falcon” in order to “carry out” his parody.85 However, we find no parody
in the mark itself. From this cumulative evidence, particularly, Applicant’s
acknowledgement that he applied for the mark MILLENNIAL FALCON knowing it
would call to mind Opposer’s MILLENNIUM FALCON, the popular and well-known
element of the first STAR WARS film and franchise; and that Applicant’s use since
adoption of the mark continues to make reference to Opposer’s STAR WARS universe,
we find that Applicant’s adopted the mark MILLENNIAL FALCON with the
intention to trade off of Opposer’s MILLENNIUM FALCON mark. Such intent is
strong evidence that confusion is likely as such an inference is drawn from the
imitator’s own expectation that consumers will associate his mark with Opposer’s.

85 7 TTABVUE 9 (Applicant’s Answer).
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See DC Comics, 77 USPQ2d at 1229; Broadway Catering Corp. v. Carla Inc., 215
USPQ 462 (TTAB 1982).
The evidence also shows that Applicant intended to parody Opposer’s mark with
his mark, even though he failed in the attempt. We therefore consider the thirteenth
DuPont factor neutral in our analysis.
I. Conclusion as to Likelihood of Confusion

On the basis of the preceding factors favoring Opposer, we find that Opposer has
established its claim of likelihood of confusion. Applicant, as the newcomer, had the
obligation to select a mark that would avoid confusion, but it did not do so. Because
we find that Opposer has established its likelihood of confusion claim, we do not reach
its claim of dilution under Section 43(c) of the Trademark Act.
Decision: The opposition is sustained and registration to Applicant is refused.