I’ll be honest: when I first saw there was a case involving a trademark for “LORD OF THE WINGS,” I thought it’d be worthy of a silly tweet at best. Then I saw that the Trademark Trial and Appeal Board (the TTAB) issued a 37-page opinion cancelling the mark. There was no way I wasn't going to give it a look, and it actually had some interesting discussion. So let’s dive into a case about swords, sorcery, and spicy chicken wings.
In late September, the TTAB decided The Saul Zaentz Company v. Al Moudabber Food Concepts SAL, Cancellation No. 92056828 (Sept. 30, 2016) (non-precedential). The respondent, Al Moudabber Food Concepts SAL, secured registration for the below composite mark (a mark featuring both text and design elements) for “LORD OF THE WINGS” in 2009 for the “Providing of food and drink; Restaurant services; Snack bars.”
The petitioner, the Saul Zaentz Company, owns the film, stage, and merchandising rights to – you guessed it – The Hobbit and the Lord of the Rings trilogy. As you might expect, the petitioner wasn’t particularly amused with the respondent's mark, and consequently petitioned the U.S. Patent and Trademark Office to cancel the registration. The petitioner raised four bases for cancellation: (1) likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); (2) dilution by blurring under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c); (3) false suggestion of a connection under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a); and (4) abandonment. The TTAB ultimately concluded that the LORD OF THE WINGS mark would indeed cause confusion under section 2(d), and saw it unnecessary to address the three remaining arguments.
Trademark Act Section 2(d) Likelihood of Confusion
More than anything else, trademarks are consumer protection tools. They indicate the source of goods or services, allowing us to make (somewhat) informed purchasing decisions. To that end, when registering a trademark, the last thing an applicant wants is for its mark to be deemed “confusing.” A confusing mark is a mark that may cause a consumer to misattribute the source of the goods or services. In the case here, the petitioner was concerned that patrons of the Lord of the Wings restaurants might inaccurately assume that the restaurants are associated with official Lord of the Rings brands.
In determining whether a mark is likely to cause confusion under section 2(d) of the Trademark Act, courts and the USPTO consider a set of factors called “the du Pont factors,” named for case, In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362 (C.C.P.A. 1973). There are thirteen du Pont factors in total, but in this particular case, the TTAB only saw need to analyze six: (1) the fame of the LORD OF THE RINGS marks; (2) the similarity or dissimilarity of the opposing marks; (3) the number and nature of similar marks in use on similar goods; (3) the variety of goods and services on which a mark is or is not used; (4) the relatedness of the goods and services; (5) the similarity of trade channels and classes of purchasers; and (6) the nature and extent of any actual confusion.
The Fame of the LORD OF THE RINGS Marks
Relying on the sales and advertising figures, as well as critical acclaim received by the Lord of the Rings books, films, and video games, the TTAB determined that the LORD OF THE RINGS mark is famous. This isn’t simply an accolade -– here, “fame” extends the scope of trademark protection to “a vast array of collateral or merchandising goods and services that are purchased because they bear the LORD OF THE RINGS trademark . . .” That seemingly unrelated merchandise? You know, the board games, costumes, action figures, coffee mugs, etc.? Fame allows the petitioner here to extend trademark protection to those "collateral" goods bearing the mark.
The Similarity of Dissimilarity of the Marks
The TTAB also found the standard character (non stylized) LORD OF THE RINGS mark to be substantially similar to the LORD OF THE WINGS mark. They look and sound virtually the same, and consumers may overlook the one letter difference. Moreover, the stylized element in THE LORD OF THE WINGS mark, the two wings, fails to distinguish it. The TTAB held that the words are more likely to make an impression upon purchasers, be remembered by them, and be used by them. Additionally, because the LORD OF THE RINGS mark is a standard character mark, it can be displayed in any font or style, including the style of the respondent's mark.
The Number and Nature of Similar Marks in use on Similar Goods
The respondent tried to argue that cancellation of its mark would foreclose registration of similar marks, such as “Lord of the Swings” or “Lord of the Stings.” The TTAB found the argument lacking, as it was based on purely hypothetical marks.
The respondent's argument that other third-party marks bear the phrase “Lord of the . . .” was similarly rejected. The marks – “Lord of the Flies,” “Lord of the Dance,” “Lord of the World,” and “Lord of the Fries” – are not as similar to the LORD OF THE RINGS mark, and four marks don't exactly suggest widespread and significant use of the “Lord of the . . .” construction.
The Variety of Goods and Services on which a mark is or is not used
The TTAB found that this factor weighed heavily in favor of the petitioner, because THE LORD OF THE RINGS marks had been licensed on a wide variety of products and services.
The Relatedness of the Goods and Services
This is the factor in which the respondent must have believed its mark would shine. The LORD OF THE WINGS mark was only registered for use in connection with food and food service, and the LORD OF THE RINGS marks had, allegedly, never been registered for such use. The petitioner, however, argued that it owns several Lord of the Rings-related marks used in connection with food and restaurant services and has licensed many more.
The TTAB found that the goods and services are in fact sufficiently related. The petitioner had already licensed a number of other marks from the Lord of the Rings universe for food and restaurant services. More importantly, at the end of the day, customers dining at Lord of the Wings locations would probably assume that the restaurant was officially licensed.
The Similarity of Trade Channels and Classes of Purchasers
Here, the TTAB found that both the petitioner’s and the respondent’s goods and services move in some of the same channels and are marketed to the same consumers, particularly because they use the same advertising channels: the internet, including sites like Facebook,, Twitter, YouTube, and Instagram.
The Nature and Extent of any Actual Confusion
The respondent also asserted that it has used its LORD OF THE WINGS mark internationally since 2006 without encountering any confusion. This could have weighed in its favor, but the TTAB found that there wasn’t ever any significant opportunity for actual confusion. The respondent's mark was originally issued in Lebanon, and it had been used in a number of middle-eastern countries. The mark "arguably" had not yet been used in the U.S. To that end, the TTAB found that the lack of any reported actual confusion favors neither side.
Bonus: Bad Faith Adoption of the Mark
The petitioner also attempted to argue that the respondent acted in bad faith, intentionally hoping to create an association with the famous LORD OF THE RINGS marks. The TTAB, perhaps surprisingly, rejected this argument. In deposition, Marc Moudabber testified that he chose the name “Lord of the Wings” from a shortlist of names. His criteria were only that “wings” had to be in the name and the name had to indicate quality such that the restaurant would be distinct from fast food establishments. “King of the Wings” and “Prince of the Wings” were too similar to Burger King, which already had a strong middle-eastern presence, and “House of the Wings” failed to convey excellent quality. Mr. Moudabber further testified that, though he was aware of the Lord of the Rings films, he hadn’t considered them when he chose with the name.
It probably isn’t much of a surprise that the TTAB granted the cancellation petition. Between the fame and the expansive licensing network, the LORD OF THE RINGS marks have very broad coverage. The decision, though non-precedential, contains some pretty helpful takeaways:
- Use caution when leaning close to famous marks, even distinct goods and services might not help you.
- Don’t rely solely on stylization to distinguish your mark. Here, the TTAB essentially ignored the design elements.
If you have any questions, feel free to leave a comment below or contact me!