With the upcoming release of the “Star Wars: The Force Awakens,” it seems as if everyone wants to get in on the action use Star Wars fever to their advantage somehow. Just remember… The Force May Not Be With You… So you want to slap on some Star Wars themed art on shirts and other items you sell on your e-commerce site or retail store.  Great! Do you have a license to do that? Didn’t think so. Trademark law exists for exactly this reason.  It protects consumers from confusion over the source of the goods and services.  To take it further, the laws extend to protect consumers from confusion about any affiliation, association, or sponsorship as well.  You need to be very careful to avoid any Star Wars trademark infringement issues here. Remember the post I wrote about Michael Jordan?  The supermarket chain Dominick’s congratulated him in an ad using his #23, while conveniently placing a coupon for steak underneath it.  The court found that this confused consumers into thinking it was some sort of sponsorship and ruled Dominick’s owed Jordan $8.9 million, which Jordan just donated to 23 local Chicago charities . You can be certain that The Walt Disney Company, the world’s largest licensor and rights-holder to everything Star Wars, will not sit back and let you get away with much if you decide to use its trademarks.  If it wants to be associated with you, you’ll have to pay for that right. This doesn’t necessarily mean that you can’t play off of the Star Wars craze with your own advertising; just be careful not to use any of Star Wars marks or imply an association with your product. An ITU Application, File. Intent to use (“ITU”) trademark applications are commonly used by companies to reserve certain marks in anticipation of a new release or product launch.  This is exactly what Disney (LucasFilms) did here, with a number of applications still in the ITU phase. When, and if, actual use in commerce begins, these applications will need to be converted to “in use” and a registration number will issue. Here is a quick guide to some of the newest Star Wars® trademark applications:

• STAR WARS THE FORCE AWAKENS and THE FORCE AWAKENS
  • This is the title of the most recent moving that is being released this week.
  • There are currently 28 trademark applications for both marks working their way through the United States Patent and Trademark Office.
  • Goods and services covered under these applications include: Jewelry, cosmetics, motion pictures/performances, drinking water, energy drinks, juices, sports drinks, non-alcoholic beverages, a variety of food products, toys, apparel, furniture, blankets and other household linens, bakeware, beverage-ware, household items, bags/backpacks, books and other paper products, electronic products, cell phone accessories, wireless communication devices etc.
• STAR WARS ROGUE ONE
  • This is the title of the next movie in the series, planned to be released in December 2016.
  • Here we see the ITU strategy in action as there are 14 pending applications in the USPTO, which is the same amount of applications as the two marks for this year’s movie.

New Characters: One way to tell how important a character is to a movie is to check how many trademark applications have been filed.  Using this Force Awakens Character Guide, I was able to see who is new and look into their respective trademark applications.

• KYLO REN
  • I can tell you that Kylo Ren is a new character who works under a powerful figure on the Dark Side of the Force, and has a pretty cool looking lightsaber®.
  • There are currently 12 pending trademark applications for KYLO REN covering goods and services similar to the other applications.
• POE DAMERON
  • Looks like Poe Dameron is a talented X-wing squadron leader.
  • He must be important, as there are currently 10 trademark applications bearing his name pending with the USPTO.
• BB-8
  • Is the newest droid in the Star Wars series and is looking to reach the level of fame that R2-D2 has.  Regardless of whether or not you are a Star Wars fan, I’m willing to bet you know R2-D2.
  • To reach said fame, one needs to protect its brand.  BB-8 currently has 13 pending applications in the USPTO.
• CAPTAIN PHASMA
  • A leader of the next generation of Stormtroopers and stands out in her silver armor
  • Tthere are currently 12 pending applications.

As you can see, there seems to be a theme here.  Each trademark has 10 to 14 applications on file with the USPTO. Why is that? The USPTO has a numbered classification system when it comes to the goods and services you are looking to protect.  For example, if you were looking to protect your trademark on apparel and toys, it would fall under two separate classes. Is a separate application required for each class? Not exactly.  You can identify as many classes of goods you would like on a single trademark application.  When dealing with ITU applications, however, it makes it easier to file them as separate applications. An ITU application is meant to reserve a name for some good or service you will be offering in the future.  You may end up offering that good/service, but there is the possibility that you might not.  The separate filings make it easier to abandon the application in the event you do not use the mark for a specific good or service. Here, LucasFilms & Disney have identified a strategy they take when applying for trademarks which you may also want to consider if ever applying for trademark protection.  The ITU applications they file do not mean that they will begin selling or offering all of the goods and services they applied for.  Sure, they had the intent to do so at some point, but plans may change.  They would have protection in those markets, however, until they decide to not offer those specific goods.  The applications would then be abandoned for the goods/services they do not use the mark in commerce for, while the remaining applications would move on to registration if they successfully find their way through the trademark process.