`
`
`
`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
`
`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
`
`- 2 -
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`

`

`Opposition No. 91244449
`
`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).
`
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`

`

`Opposition No. 91244449
`
`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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`Opposition No. 91244449
`
`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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`Opposition No. 91244449
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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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`Opposition No. 91244449
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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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`Opposition No. 91244449
`
`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).
`
`- 8 -
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`

`Opposition No. 91244449
`
`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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`

`Opposition No. 91244449
`
`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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`Opposition No. 91244449
`
`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).
`
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`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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`Opposition No. 91244449
`
`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, histori cally, 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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`Opposition No. 91244449
`
`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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`Opposition No. 91244449
`
`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).
`
`- 15 -
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`

`

`Opposition No. 91244449
`
`
`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
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`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
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`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-
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`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 examp les 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).
`
`- 16 -
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`

`

`Opposition No. 91244449
`
`
`
`u Acnm mamas
`NOV \NOUMD
`
`- I MILLENNIUM FALCON'cARSHIP'
`
`
`
`
`
`m: vaucha .
`
`I
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`-17-
`- 17 -
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`

`

`Opposition No. 91244449
`
`Opposer has used MILLENNIUM FALCON on or in connection with a series of
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`printed publications over the years, including with 2008 New York Times bestseller
`
`book titled STAR WARS – MILLENNIUM FALCON, and has been “featured in the
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`title and on the cover of at least 10 other books” including: STAR WARS THE
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`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
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`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
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`nationwide retailers. The mentioned publications are shown below:51
`
`
`
`
`
`
`51 Id. at 15-18 (¶¶ 41-43).
`
`- 18 -
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`

`

`Opposition No. 91244449
`
`MILLENNIUM
`FALCON
`Modified ”-1300 Corolllan Freighter
`
`Owner’s Workshop Manual
`
`
`
`
`
`
`
`
`
`\w—l. "Z
`‘I"? f; n . w
`\___"_r'\.. \L;
`M
`_iUELEMEWS
`“
`>_
`_
`M27 ‘ 1U r—J,‘JL\‘.P.‘1£31,”; '7M: H ER}
`
`
`
`
`
`
`IglflL'Jf '
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`-19-
`- 19 -
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`

`

`Opposition No. 91244449
`
`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).
`
`- 20 -
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`

`

`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,
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`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.
`
`- 21 -
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`

`

`Opposition No. 91244449
`
`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).
`
`- 22 -
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`

`

`Opposition No. 91244449
`
`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,” s ome
`
`examples of which are shown below:57
`
`
`
`
`
`
`
`
`
`
`
`
`57 Id. at 36-37 (¶ 64).
`
`- 23 -
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`

`

`Opposition No. 91244449
`
`
`
`
`
`
`
`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).
`
`- 24 -
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`

`

`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.